DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The Amendment filed 06/19/25 has been entered. Claims 1-3, 5, and 9 have been amended. Claim 1-10 are addressed in the following office action.
Claim Objections
Claims 2 and 9 objected to because of the following informalities:
In claim 1, line 23: “twice larger than” should read “twice as large as”.
In claim 6, lines 1-4: “at least one or each” should read “at least one”.
In claim 7, line 5: “the hosing” should read “the housing”.
In claim 8, lines 1-3: “at least one or each” should read “at least one”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gauthier et al. (US 2006/0278051).
Regarding claim 1, an invention relating to a hand-driven gear-operated tool, Gauthier discloses (Figs. 1, 4-7, 22-24, 33-34) a device (200) for mounting and demounting a hollow needle [i.e. implement] on and from a phaco instrument handpiece (Par. 0054), comprising - a manually operable housing (244),- a rotary shaft (204) rotatably mounted in the housing, the rotary shaft comprising a plug-on end (208) extending outwards from an opening (245) of the housing for plugging on the hollow needle (Par. 0063), the plug-on end comprising internal engaging projection (216) for engaging with recesses in the outside of the hollow needle for the purpose of rotating the hollow needle when manually rotating the housing (Par. 0053-0054),- a torque limiting and non-return coupling (306) having a contact surface (318) arranged at the rotary shaft as a first coupling surface (Par. 0053, 0062, 0065), and- a driver element (202) arranged coaxially to the rotary shaft in the housing, being coupled to the housing (Par. 0053 & 0063) and having a contact surface (320) as a second coupling surface of the torque limiting and non-return coupling (Par. 0065),- wherein the two coupling surfaces rest against each other by being spring-loaded against each other (Par. 0059, 0062, 0064),- wherein the one coupling surface has at least one coupling release projection (320) and the other coupling surface has at least one coupling recess (328) being complementary to the form of the at least one coupling release projection (Par. 0065-0066),- wherein the one coupling surface has at least one non-return projection (340) and the other coupling surface has at least one non-return recess [i.e. space between teeth 340 on element 320],- wherein the at least one non-return recess viewed in circumferential direction of a circular line concentrically to the axis of the rotary shaft has an extension being larger, in particular more than twice larger than the extension of the at least one non- return projection in circumferential direction of the circular line [i.e. the at least one non-return recess extension comprises 3 spaces between teeth 340 of element 320],- wherein the at least one non-return projection rests against one of two ends of the at least one non-return recess arranged as viewed in the circumferential direction of the circular line when the at least one coupling release projection is immersed in the at least one coupling recess (Par. 0067-0068), - wherein the at least one non-return projection, when viewed in axial extension of the rotary shaft, has a height which is smaller than the height of the at least one coupling release projection (Fig. 28), and - wherein the at least one non-return projection is entirely moved out of the at least one non-return recess when the at least one coupling release projection is moved out of the at least one coupling recess, and moved above or on the coupling surface comprising the at least one non-return recess, until the at least one coupling release projection is again immersed in the at least one coupling recess when the housing continues to rotate (Par. 0066-0068). However, Gauthier fails to disclose the plug-on end comprising internal engaging projections.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus by duplicating the internal engaging projection, such that the plug-on end comprises internal engaging projections for engaging with recesses in the outside of the hollow needle for the purpose of rotating the hollow needle when manually rotating the housing, since it has been held that mere duplication of parts would not produce a new and unobvious result. In re Harza, 274 F.2d 669, 124 USPQ 378.
Regarding claim 2, Gauthier discloses the device according to claim 1. Gauthier further discloses wherein the at least one coupling release projection comprises a plurality of coupling release projections and the at least one coupling recess comprises a plurality of coupling recesses, wherein the number of coupling recesses is equal to the number of coupling release projections or is larger by factor 2 or 3 than the number of coupling release projections, wherein the relative arrangement of the number of coupling recesses equal to the number of coupling release projections is equal to the relative arrangement of the coupling release projections (Par. 0065-0068).
Regarding claim 3, Gauthier discloses the device according to claim 1. Gauthier fails to explicitly disclose wherein the two coupling surfaces have a larger number of non-return recesses of said at least one non-return recesses than non-return projections of said at least one non-return projections.
However, the choice of designing the two coupling surfaces having a larger, smaller, or equal number of non-return recesses of said at least one non-return recesses than non-return projections of said at least one non-return projections is a finite number of options. This instant application does not recite any criticality or advantage to having a larger number of non-return recesses then non-return projections over a smaller or equal number. As such, the forming a larger number of non-return recesses than non-return projections is considered a mere design choice and it appears the non-return recesses and non-return projections of Gauthier would work equally well regardless of a larger, smaller, or equal number of non-return recesses than non-return projections. Through experimentation, one of ordinary skill can determine what configuration is most effective based on the intended use of the device. Under KSR reasoning, it would have been obvious for one having ordinary skill in the art before the effective filing date to try different numbers of non-return recesses and non-return projections (particularly when there is a finite number of options) to find the most effective number of non-return recesses and non-return projections. KSR international Co. v. Teleflex inc., 550 US. S98, 82 USPO2d L385 (2007).
Regarding claim 4, Gauthier discloses the device according to claim 2. Gauthier discloses wherein the number of non-return recesses is equal to the number of non-return projections (Par. 0067).
Regarding claim 5, Gauthier discloses the device according to claim 1. Gauthier further discloses wherein the at least one coupling release projection comprises three coupling release projections each arranged offset by 120° relative to one another, and the at least one coupling recess comprises six coupling recesses each arranged offset by 60° relative to one another, and that the one coupling surface has three non-return projections arranged offset by 120° relative to one another, and the other coupling surface has six non-return recesses arranged offset by 60° relative to one another, wherein the non-return recesses are each arranged in alignment with the center between two coupling recesses (Par. 0065-0066).
Regarding claim 6, Gauthier discloses the device according to claim 1. Gauthier further discloses wherein the at least one or each coupling release projection and the at least one or each coupling release recess are arranged on a first circular line (see annotated figure below) being concentric to the rotary shaft, and that the at least one or each non-return projection and the at least one or each non-return recess is arranged on a second circular line (see annotated figure below) being concentric to the rotary shaft and being different from the first circular line (Fig. 4).
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Regarding claim 7, Gauthier discloses the device according to claim 1. Gauthier further discloses that the rotary shaft extends through the driver element (Fig. 3).
Regarding claim 8, Gauthier discloses the device according to claim 1. Gauthier further discloses wherein the at least one or each engaging projection and the at least one or each coupling release projection are spherically formed (Par. 0065), and that the at least one or each non-return projection and the at least one or each non-return recess comprise contact surfaces extending at right angles or substantially at right angles to the coupling surfaces and abutting each other when the at least one coupling release projection is immersed in the at least one coupling recess (Figs. 23, 28, 30; Par. 0063 & 0067).
Regarding claim 9, Gauthier discloses the device according to claim 2. Gauthier fails to explicitly disclose wherein the coupling surface has a larger number of non-return recesses than non-return projections arranged at the other coupling surface. However, the choice of designing the coupling surface with a larger, smaller, or equal number of non-return recesses than non-return projections arranged at the other coupling surface is a finite number of options. This instant application does not recite any criticality or advantage to having a larger number of non-return recesses then non-return projections over a smaller or equal number. As such, the forming a larger number of non-return recesses than non-return projections is considered a mere design choice and it appears the non-return recesses and non-return projections of Gauthier would work equally well regardless of a larger, smaller, or equal number of non-return recesses than non-return projections. Through experimentation, one of ordinary skill can determine what configuration is most effective based on the intended use of the device. Under KSR reasoning, it would have been obvious for one having ordinary skill in the art before the effective filing date to try different numbers of non-return recesses and non-return projections (particularly when there is a finite number of options) to find the most effective number of non-return recesses and non-return projections. KSR international Co. v. Teleflex inc., 550 US. S98, 82 USPO2d L385 (2007).
Regarding claim 10, Gauthier discloses the device according to claim 3. Gauthier further discloses wherein the number of non-return recesses is equal to number of non-return projections (Par. 0067).
Response to Arguments
Applicant’s arguments, see pages 6-7, filed 06/19/25, with respect to claims have been fully considered and are persuasive. The objection and 35 USC § 112 rejection of claims have been withdrawn.
Applicant’s arguments, see pages 7-10, filed 06/19/25, with respect to the rejection of claims 1-10 under 35 USC § 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of newly cited prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Chima Igboko whose telephone number is (571)272-8422. The examiner can normally be reached on Monday-Friday 9:00am-6:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Jackie Ho, at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.U.I/ Examiner, Art Unit 3771 /ASHLEY L FISHBACK/Primary Examiner, Art Unit 3771