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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/9/2025 has been entered.
Response to Amendment
In light of Applicant’s amendment, claim(s) 1, 2 and 21 is/are amended. Claim 8-9 are canceled. Claims 1-7 and 21 are pending examination.
Response to Arguments
Applicant’s arguments, filed 10/9/2025, with respect to the rejection(s) of claim(s) 1 and 21 under U.S.C. 103 have been fully considered and are persuasive. Regarding claim 1, the added limitation of “providing an audio or visual indication that material in the eye surrounding the needle has changed” overcomes the previous rejection as written. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Lo in view of Brennan and Frankhouser. Regarding claims 2 and 21, the added limitation “changing a vibration power level to change a level of vibration of the needle” is not explicitly disclosed in Lo, thus the rejection has been withdrawn. However, a new grounds of rejection is made incorporating teachings from Houser.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lo et al. (US 4954960 A) (previously of record) in view of Brennan et al. (US 20150148615 A1) (previously of record) and Frankhouser et al. (US 20120209303 A1).
Regarding claim 1, Lo discloses a method, comprising:
vibrating a probe (22) of a phacoemulsification handpiece by driving one or more piezoelectric crystals (28, 30) in the handpiece with one or more electrical signal (electrical driving signals) each having a different respective frequency (Col 2, lines 56-60; Col 9, lines 9-10, 25-35);
inserting the probe into an eye of a patient (the probe encounters liquids in the eye, thus had to have been inserted into the eye of the patient) (Col 7, lines 11-15);
tuning the respective frequencies of the one or more electrical signal to respective one target frequency (mechanical resonant frequency) (Col 6, lines 62-65), measuring electrical impedance (load impedance) (Col 2, lines 56-60; Col 12, line 46-51); and
in response to at least one of the measured electrical impedances undergoing a change exceeding a preset impedance change (when phase angle is not 0) (Col 3, lines 66- Col 4, line 4; Col 4, lines 21-28, 42-53; Col 14, lines 11-31) providing a visual indication (display data) that material in the eye surrounding the probe has changed (Col 5, lines 54-57; Col 7, line 40-46; Col 9, lines 43-46; Col 14, lines 38-39).
Lo fails to explicitly disclose vibrating a needle of a phacoemulsification handpiece, inserting the needle into an eye of a patient and providing an audio or visual indication that material in the eye surrounding the needle has changed.
However, Brennan et al is directed to a phacoemulsification system and method and teaches a probe comprises a needle (Paragraph 0070).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Lo such that the probe includes a needle, as taught by Brennan, which would then teach vibrating a needle of a phacoemulsification handpiece, inserting the needle into an eye of a patient and providing an indication that material in the eye surrounding the needle has changed as both references and the claimed invention are directed to phacoemulsification. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lo with the teachings of Brennan by incorporating a probe with a needle in order to penetrate the eye during surgery.
Further, Frankhouser is directed to a surgical system and teaches updating a user display including audible or visual feedback in response to changes in electromechanical properties such as force, impedance magnitude, phase angle (Paragraph 0206). When modified with Lo, the combination would result in providing an audio or visual indication that material in the eye surrounding the needle has changed, as a change in phase angle indicates a change in the material of the eye.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Lo as modified by Brennan by providing an audio or visual indication that material in the eye surrounding the needle has changed, as taught by Frankhouser, as both references and the claimed invention are directed to surgical systems. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lo as modified by Brennan with the teachings of Frankhouser by incorporating providing an audio or visual indication that material in the eye surrounding the needle has changed in order to alert the user of operating conditions, such as the tissue/fluids surrounding the needle (Paragraph 0206).
Regarding claim 3, Lo as modified by Brennan further teaches wherein the step of tuning the one or more frequencies comprises setting the one or more target frequencies to be respective one or more resonance frequencies of the one or more piezoelectric crystals as measured by the drive modules (the resonance frequencies of piezoelectric crystals comprise the resonance frequency of the probe as whole) (Col 3, line 48-51; Col 5, lines 21-35).
Regarding claim 4, Lo as modified by Brennan further teaches wherein the step of tuning the frequencies comprises setting the one or more target frequencies to be respective one or more resonance frequencies of the one or more piezoelectric crystals, so as to differentiate between the needle engaging with the lens, and the needle disengaging from a lens of the eye (change in current happens depending on when the needle engages with the lens, as that affects the impedance and phase angle) (Col 7, lines 11-24).
Regarding claim 5, Lo as modified by Brennan further teaches wherein the change in the electrical impedance is in response to the needle engaging with a lens of the eye (Col 7, lines 11-24).
Regarding claim 6, Lo as modified by Brennan further teaches in response to the change in the respective electrical impedance exceeding the preset impedance change (Col 14, lines 11-31), adjusting the respective frequency of the one or more electrical signals to comprise an electrical resonant frequency thereof (changing drive frequency to a frequency where the phase angle is 0, electrical resonant frequency happens when phase angle is 0, thus the frequency comprises an electrical resonant frequency) (Col 7, lines 11-24; Col 7, line 40-46; Col 29, lines 1-13).
Regarding claim 7, Lo as modified by Brennan further teaches wherein tuning the one or more frequencies of the one or more electrical signals to respective one or more target frequencies comprises adjusting one or more of the frequencies off-resonance (tuning away from the original optimal resonance until finding a new optimal resonance) (Col 6, line 36-61), in order to have an inverse change in an electrical impedance magnitude with a decreased versus an increased mechanical load on the needle (such an inverse relationship is known as a result of changing resonance) (Col 7, lines 11-20; Col 26, line 32-37).
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Lo in view of Brennan and Frankhouser, as applied to claim 1 above, and further in view of Houser et al. (US 20190201037 A1).
Regarding claim 2, Lo as modified by Brennan and Frankhouser discloses the method according to claim 1 but fails to explicitly disclose the method further comprising, in response to at least one of the respective electrical impedances undergoing a change, changing a vibration power level to change a level of vibration of the needle.
However, Houser is directed to an ultrasonic surgical instrument and teaches changing a vibration power level to change a level of vibration of an ultrasonic transducer to control an ultrasonic blade (i.e., needle) in response to measured resonant frequencies (Paragraph 0541; 0635-636). Since Lo uses resonant frequencies to coordinate with changing electrical impedances, the combination would result in in response to at least one of the respective electrical impedances undergoing a change, changing a vibration power level to change a level of vibration of the needle.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Lo as modified by Brennan and Frankhouser such that in response to at least one of the respective electrical impedances undergoing a change, changing a vibration power level to change a level of vibration of the needle, as taught by Houser, as the references and the claimed invention are directed to ultrasonic surgical systems. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lo as modified by Brennan and Frankhouser with the teachings of Houser by incorporating in response to at least one of the respective electrical impedances undergoing a change, changing a vibration power level to change a level of vibration of the needle in order to expressly control the actuation of the instrument such that increasing power would apply a stronger level of vibration to more effectively cut the tissue (Houser Paragraph 0636).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lo in view of Brennan and Houser et al.
Regarding claim 21, Lo discloses a method, comprising:
vibrating a probe (22) of a phacoemulsification handpiece by driving one or more piezoelectric crystals (28, 30) in the handpiece with one or more electrical signals (electrical driving signals) each having a different respective frequency (Col 2, lines 56-60; Col 9, lines 9-10, 25-35);
inserting the probe into an eye of a patient (the probe encounters liquids in the eye, thus had to have been inserted into the eye of the patient) (Col 7, lines 11-15);
tuning the respective frequency of the electrical signal to one target frequency (mechanical resonant frequency) (Col 6, lines 62-65), measuring respective electrical impedance (load impedance) (Col 2, lines 56-60; Col 12, line 46-51); and
in response to at least one of the measured respective an electrical impedances undergoing a change exceeding a preset impedance change (when phase angle is not 0) (Col 3, lines 66- Col 4, line 4; Col 4, lines 21-28, 42-53; Col 14, lines 11-31), changing a level of vibration of the probe (Col 5, lines 54-61; Col 9 line 67- Col 10, line 5).
Lo fails to explicitly disclose vibrating a needle of a phacoemulsification handpiece, inserting the needle into an eye of a patient and changing a vibration power level to change a level of vibration of the needle.
However, Brennan et al is directed to a phacoemulsification system and method and teaches a probe comprises a needle (Paragraph 0070).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Lo such that the probe includes a needle, as taught by Brennan, which would then teach vibrating a needle of a phacoemulsification handpiece, inserting the needle into an eye of a patient and changing a level of vibration of the needle as both references and the claimed invention are directed to phacoemulsification. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lo with the teachings of Brennan by incorporating a probe with a needle in order to penetrate the eye during surgery.
However, Houser is directed to an ultrasonic surgical instrument and teaches changing a vibration power level to change a level of vibration of an ultrasonic transducer to control an ultrasonic blade (i.e., needle) in response to measured resonant frequencies (Paragraph 0541; 0635-636). Since Lo uses resonant frequencies to coordinate with changing electrical impedances, the combination would result in in response to at least one of the respective electrical impedances undergoing a change, changing a vibration power level to change a level of vibration of the needle.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Lo as modified by Brennan such that in response to at least one of the respective electrical impedances undergoing a change, changing a vibration power level to change a level of vibration of the needle, as taught by Houser, as the references and the claimed invention are directed to ultrasonic surgical systems. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lo as modified by Brennan with the teachings of Houser by incorporating in response to at least one of the respective electrical impedances undergoing a change, changing a vibration power level to change a level of vibration of the needle in order to expressly control the actuation of the instrument such that increasing power would apply a stronger level of vibration to more effectively cut the tissue (Houser Paragraph 0636).
Conclusion
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/Z.J./Examiner, Art Unit 3771
/DARWIN P EREZO/Supervisory Patent Examiner, Art Unit 3771