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 .
This action is in response to the amendment filed on 11/07/2025. Claims 1-16, 18, 19, 21, and 22 are pending. Claims 1, 16, and 21 are independent. Claims 17 and 20 are canceled.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Currently, none of the claim limitations are interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-6, 8-9, 13-16, and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US Pub. No.: 2005/0090849) in view of Krause (US Pat. No.: 6,053,922).
Regarding claim 1, Adams discloses a surgical cutting tool (140, Fig. 5) for use with a handpiece having a motor (Paras. [0026] and [0004]), the surgical cutting tool comprising: an outer tube (142, Fig. 5) extending longitudinally between proximal (148, Fig. 5) and distal ends (146, Fig. 5) and comprising an inner surface defining a lumen therethrough (lumen of 142, Fig. 5); a flexible driveshaft (144, Fig. 5 or 8) comprising an inner tube (168, Fig. 5 or 8) rotatably disposed in said lumen (Para. [0054]) and extending in a longitudinal direction past said distal end to a cutting end (distal end 154 having a cutting tip 155, Figs. 5 and 7 and Para. [0060]) outside of said lumen (Fig. 5), said driveshaft further comprising: at least two torsion sections (length portions of 144/168 with helical / spiral cuts Fig. 5 or helical / spiral cuts 170a and 170b, Para. [0059] and [0061] and Fig. 8) spaced from one another longitudinally along said inner tube (Para. [0059]) and each a having at least one channel extending through said inner tube (each cut has or forms at least one channel extending through said inner tube, Fig. 5 or 8 and Para. [0059] and [0061]); and a bearing section (uncut length segment of the inner tube 168 separating 170a and 170b, Fig. 5 or 8 and Para. [0061]) disposed longitudinally between said torsion sections (Fig. 8 and Para. [0061]).
Adams does not disclose wherein said channels are configured to collapse under rotational load in response to transmission of torque as said driveshaft rotates such that said torsion sections are spaced apart from said inner surface of said outer tube to a greater extent than said bearing section for reducing friction between said inner tube and said outer tube.
Krause teaches, in the same field of endeavor (surgical cutting tool), a surgical cutting tool ([Abstract] and Fig.12 and Figs. 7A-7C, which is the driveshaft to be used with the tool of Fig. 2) wherein said channels (With points 41 and 42) are configured to collapse under rotational load (110) in response to transmission of torque as said driveshaft rotates (As disclosed in fig. 7A-7C and [Col 10 lines 13-26], a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width) such that said torsion sections are spaced apart from said inner surface of said outer tube (104) to a greater extent than said bearing section for reducing friction between said inner tube (100 of Fig. 7A-7C) and said outer tube (104) (As disclosed in fig. 7A-7C and [Col 10 lines 13-26], a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width and therefore spacing apart from the outer tube).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of Adams to have rotatably collapsible channels at a torsion section, as taught by Krause, for the advantage that it allows for one to manually extend and retract the driveshaft and cutting portion (Krause, Col 10, lines 13-26).
Regarding claim 2, Adams and Krause disclose the tool of claim 1. Adams further discloses wherein each of said torsion (170a and 170b, Fig. 8) and bearing sections (uncut length segment of 168 between the two torsion sections, Fig. 8) has an outer diameter (As seen in Fig. 8 and Paras. [0029] and [0065], the entirety of the driveshaft has a consistent outer diameter, with all discontinuities being cut into the shaft).
Adams does not disclose wherein said outer diameter of said torsion sections configured to reduce at least five percent when said channels collapse.
Krause discloses (Fig. 7A-7C) said outer diameter of said torsion sections configured to reduce at least five percent when said channels (With points 41 and 42) collapse (As disclosed in [Col 10 lines 13-26] and Fig. 7A-7C, a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width. While the operator would encounter greater resistance to opening, the device would be capable of progressively reducing the diameter upon a greater rotational force).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of Adams to have the outer diameter of the torsion section reduce at least five percent when the channels collapse, as taught by Krause, for the advantage that it allows for one to manually extend the driveshaft and cutting portion [Col 10 lines 13-26].
Regarding claim 3, Adams and Krause disclose the tool of claim 2. Adams further discloses wherein said outer diameters of said torsion (170a and 170b, Fig. 8) and bearing sections (uncut length segment of 168 between the two torsion sections, Fig. 8) are substantially equal when said driveshaft is stationary (As seen in Fig. 8 and Paras. [0029] and [0065], the entirety of the driveshaft has a consistent outer diameter, with all discontinuities being cut into the shaft).
Regarding claim 4, Adams and Krause disclose the tool of claim 1. Adams further discloses wherein said outer tube and said lumen are disposed in a non-linear configuration between said ends (Fig. 5 and Para. [0054]), and said driveshaft is correspondingly disposed in the non-linear configuration within said lumen (Fig. 5 and Para. [0054]).
Regarding claim 5, Adams and Krause disclose the tool of claim 1. Adams further discloses wherein said inner tube comprises a pair of channel walls individually corresponding to and defining each of said at least one channel (the pair of walls on opposite sides of the cut defining each of said at least one channel, Figs. 5, 8, and 9).
Regarding claim 6, Adams and Krause disclose the tool of claim 5. Adams further discloses wherein said pair of channel walls oppose and face toward one another to define a width of said channel therebetween (the pair of walls on opposite sides of the cut are facing toward one another to define a width of said channel therebetween, Figs. 5, 8, and 9).
Regarding claim 8, Adams and Krause disclose the tool of claim 5. Adams further discloses wherein said pair of channel walls extend substantially parallel to one another (Fig. 5 or 8). Furthermore, Krause discloses (Fig. 7A-7C), with said pair of channel walls configured to draw toward one another and collapse said channel when under rotational load (110) in response to transmission of torque as said driveshaft rotates (As disclosed in [Col 10 lines 13-26]).
Regarding claim 9, Adams and Krause disclose the tool of claim 1. Adams further discloses wherein said at least one channel (Fig. 5 or 8) extends in a helical configuration longitudinally along and about said inner tube (Fig. 5 or 8 and Paras. [0059] and [0061]).
Regarding claim 13, Adams and Krause disclose the tool of claim 1. Adams further discloses wherein said at least one channel comprises a plurality of channels evenly spaced from one another (Para. [0062], each helical cut has a uniform pitch).
Regarding claim 14, Adams and Krause disclose the tool of claim 13. Adams further discloses wherein said plurality of channels have a uniform size and shape (Fig. 5 or 8).
Regarding claim 15, Adams and Krause disclose the tool of claim 1. Adams is silent to wherein each of said torsion and bearing sections has a length along said longitudinal direction of said inner tube, with said length of said torsion sections having a ratio of at least 2:1 relative to said length of said bearing section.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of Adams to have a ratio of 2:1 between the length of the torsion sections to the length of the bearing section since this claimed ratio of torsion section length to bearing section length does not change the driveshaft’s ability to transmit torque. Since applicant has not given any criticality to why the dimension disclosed has any importance to the function of the claimed device (See [0031] of the applicant’s specification), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777. Regarding claim 16, Adams discloses a flexible driveshaft (144, Fig. 5 or 8) for use with a surgical cutting tool (140, Fig. 5) and configured to be rotatably disposed in a lumen of an outer tube (142, Fig. 5), the driveshaft comprising: an inner tube (168, Fig. 5) extending in a longitudinal direction to a cutting end (distal end 154 having a cutting tip 155, Figs. 5 and 7 and Para. [0060]); a torsion section (segment with helical cuts, Fig. 5 or 170a, Fig. 8) having an outer diameter and a plurality of channels (the cuts form the segment) extending through said inner tube (Fig. 5 or 8 and Paras. [0059] and [0061]); a bearing section (uncut segment between the spirally cut segments or between 170a and 170b, Fig. 5 or 8) disposed longitudinally adjacent to the torsion section; wherein said plurality of channels extend in a helical configuration longitudinally along and about said inner tube in a first rotational direction (Fig. 5 or 8 and Paras. [0059] and [0061]).
Adams does not disclose wherein said driveshaft is configured to rotate in a second rotational direction, opposite said first rotational direction, and said channels are configured to collapse under rotational load in response to transmission of torque as said driveshaft rotates in said second rotational direction such that said outer diameter of said torsion section is reduced and said torsion section is spaced apart from said inner surface of said outer tube to a greater extent than said bearing section for reducing friction between said inner tube and said outer tube.
Krause teaches, in the same field of endeavor (surgical cutting tool), a surgical cutting tool ([Abstract] and Fig. 12 and Figs. 7A-7C, which is the driveshaft to be used with the tool of Fig. 2) wherein said driveshaft (100) is configured to rotate in a second rotational direction (110), opposite said first rotational direction, and said channels (With points 41 and 42) are configured to collapse under rotational load (110) in response to transmission of torque as said driveshaft rotates in said second rotational direction (110) such that said outer diameter of said torsion section is reduced (As disclosed in fig. 7A-7C and [Col 10 lines 13-26], a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width) and said torsion section is spaced apart from said inner surface of said outer tube (104) to a greater extent than said bearing section for reducing friction between said inner tube (100 of Fig. 7A-7C) and said outer tube (104) (As disclosed in fig. 7A-7C and [Col 10 lines 13-26], a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width and therefore spacing apart from the outer tube).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of Adams to have rotatably collapsible channels at a torsion section, as taught by Krause, for the advantage that it allows for one to manually extend and retract the driveshaft and cutting portion (Krause, Col 10, lines 13-26).
Regarding claim 21, Adams discloses a method of operating a surgical cutting tool (140, Fig. 5) for use with a handpiece having a motor (Paras. [0026] and [0004]), with the surgical cutting tool comprising an outer tube (142, Fig. 5) extending longitudinally between proximal (148, Fig. 5) and distal ends (146, Fig. 5) and comprising an inner surface defining a lumen (lumen of 142, Fig. 5) therethrough, a flexible driveshaft (144, Fig. 5 or 8) comprising an inner tube (168, Fig. 5 or 8) rotatably disposed in the lumen (Para. [0054]) and extending in a longitudinal direction past the distal end to a cutting end (distal end 154 having a cutting tip 155, Figs. 5 and 7 and Para. [0060]) outside of said lumen (Fig. 5), the driveshaft further comprising at least two torsion sections (length portions of 144/168 with helical / spiral cuts Fig. 5 or helical / spiral cuts 170a and 170b, Para. [0059] and [0061] and Fig. 8) spaced from one another longitudinally along the inner tube (Fig. 5 or 8) and each a having at least one channel extending through the inner tube (the cuts define the channels), and a bearing section (uncut length segment of the inner tube 168 separating 170a and 170b, Fig. 5 or 8 and Para. [0061]) disposed longitudinally between the torsion sections, the method comprising the steps of: rotating the driveshaft to transmit torque (Para. [0068]); applying a rotational load to the driveshaft (As disclosed in [0068], the driveshaft is rotated, which would apply rotational load onto the driveshaft). Adams does not disclose collapsing the channels; and spacing the torsion sections from the inner surface of the outer tube to a greater extent than the bearing section for reducing friction between the inner tube and the outer tube.
Krause teaches, in the same field of endeavor (surgical cutting tool), a surgical cutting tool ([Abstract] and Fig. 12 and Figs. 7A-7C, which is the driveshaft to be used with the tool of Fig. 2) collapsing the channels (With points 41 and 42) (As disclosed in fig. 7A-7C and [Col 10 lines 13-26], a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width); and spacing the torsion sections from the inner surface of the outer tube (104) to a greater extent than the bearing section for reducing friction between the inner tube (100 of Fig. 7A-7C) and the outer tube (104) (As disclosed in fig. 7A-7C and [Col 10 lines 13-26], a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width and therefore spacing apart from the outer tube).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Adams to have rotatably collapsible channels at a torsion section, as taught by Krause, for the advantage that it allows for one to manually extend and retract the driveshaft and cutting portion (Krause, Col 10, lines 13-26).
Regarding claim 22, Adams and Krause disclose the method of claim 21. Krause further discloses (Fig. 7A-7C, which is the driveshaft to be used with the tool of Fig. 2) wherein said applying a rotational load to the driveshaft is further defined as applying a first rotational load to the driveshaft, and further comprising the steps of: applying a second rotational load to the driveshaft (100 of fig. 7A-7C) that is greater than said first rotational load (As disclosed in [Col 10 lines 13-26] and Fig. 7A-7C, a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width. Furthermore, the device progressively reduces the diameter upon a greater rotational force); further collapsing the channels (With points 41 and 42) [Col 10 lines 13-26]; and further spacing the torsion sections from the inner surface of the outer tube (104) to a greater extent than the bearing section and the torsion sections under the first rotational load (110) for further reducing friction between the inner tube and the outer tube (As disclosed in fig. 7A-7C and [Col 10 lines 13-26], a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width and therefore spacing apart from the outer tube. Furthermore, the device progressively reduces the diameter upon a greater rotational force, further spacing the torsion sections from the inner surface of the outer tube).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US Pub. No.: 2005/0090849) in view of Krause (US Pat. No.: 6,053,922) as applied to claim 6 above, and further in view of Besselink (US Pub. No. 2019/0060612).
Regarding claim 7, Adams and Krause disclose the tool of claim 6. Adams is silent to the width between said pair of channel walls being at least 15 microns.
Besselink teaches, in the same field of endeavor (a surgical tool), wherein said width between said pair of channel walls is at least 15 microns (As disclosed in [0032], the width may be about 20 microns).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the width between the pair of channel walls of Adams to 15 microns as applicant appears to have placed no criticality on the claimed range (see [0010] of the applicant’s specification) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US Pub. No.: 2005/0090849) in view of Krause (US Pat. No.: 6,053,922) as applied to claim 9 above, and further in view of Kasic (US Pub. No.: 2017/0105715).
Regarding claim 10, Adams and Krause disclose the tool of claim 9. Adams is silent wherein said at least one channel extends about said inner tube less than 360 degrees.
Kasic teaches, in the same field of endeavor (flexible driveshaft), wherein said at least one channel (131, Fig. 10A-10E) extends about said inner tube (50) less than 360 degrees (As disclosed in Fig. 10D and [0065], the tube has a diameter of 4.57 mm, which corresponds to a circumference of about 14.4 mm. Furthermore, as disclosed in fig. 10B, the channel length is 2.75 mm. As such, the channel would extend about 68.7 degrees, less than 360 degrees).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify at least one channel extending about tube of Adams to extend less than 360 degrees as applicant appears to have placed no criticality on the claimed range (see [0045] of the applicant’s specification) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 11, Adams and Krause disclose the tool of claim 9. Adams is silent wherein said at least one channel extends about said inner tube less than 180 degrees.
Kasic discloses (Fig. 10A-10E) wherein said at least one channel (131) extends about said inner tube (50) less than 180 degrees (As disclosed in Fig. 10D and [0065], the tube has a diameter of 4.57 mm, which corresponds to a circumference of about 14.4 mm. Furthermore, as disclosed in fig. 10B, the channel length is 2.75 mm. As such, the channel would extend about 68.7 degrees, less than 180 degrees).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify at least one channel extending about tube of Adams to extend less than 180 degrees as applicant appears to have placed no criticality on the claimed range (see [0045] of the applicant’s specification) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US Pub. No.: 2005/0090849) in view of Krause (US Pat. No.: 6,053,922) as applied to claim 9 above, and further in view of Yan (US Pub. No.: 2022/0339403).
Regarding claim 12, Adams and Krause disclose the tool of claim 9. Adams is silent on wherein said at least one channel in said helical configuration extends at an angle at or between 30 and 60 degrees from an axis orthogonal to the longitudinal direction of the inner tube.
Yan teaches, in the same field of endeavor (surgical tool), wherein said at least one channel (115, Fig. 2C) in said helical configuration extends at an angle at or between 30 and 60 degrees from an axis orthogonal to the longitudinal direction of the inner tube (114) (As disclosed in Fig. 2C and [0038], the angle of the slots, from an axis orthogonal to the longitudinal axis Ax, are from a range greater than 0 degrees to equal to or less than 45 degrees. As such, Yan discloses the helical configurations extends at an angle between 30 and 45 degrees).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the angle of at least one channel in a helical configuration of Adams to between 30 and 60 degrees as applicant appears to have placed no criticality on the claimed range (see [0044] of the applicant’s specification) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US Pub. No.: 2005/0090849) in view of Krause (US Pat. No.: 6,053,922) as applied to claim 16 above, and further in view of Kasic (US Pub. No.: 2017/0105715).
Regarding claim 18, Adams and Krause disclose the driveshaft of claim 16. Adams is silent on wherein each of said plurality of channels extends about said inner tube less than 180 degrees.
Kasic teaches, in the same field of endeavor (flexible driveshaft), wherein each of said plurality of channels (131, Fig. 10A-10E) extends about said inner tube (50) less than 180 degrees (As disclosed in Fig. 10D and [0065], the tube has a diameter of 4.57 mm, which corresponds to a circumference of about 14.4 mm. Furthermore, as disclosed in fig. 10B, the channel length is 2.75 mm. As such, the channel would extend about 68.7 degrees, less than 180 degrees).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify each of said plurality of channels to extend about the tube of Adams to extend less than 180 degrees as applicant appears to have placed no criticality on the claimed range (see [0045] of the applicant’s specification) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams (US Pub. No.: 2005/0090849) in view of Krause (US Pat. No.: 6,053,922) as applied to claim 16 above, and further in view of Yan (US Pub. No.: 2022/0339403).
Regarding claim 19, Adams and Krause disclose the driveshaft of claim 16. Adams is silent on wherein each of said plurality of channels in said helical configuration extends at an angle at or between 30 and 60 degrees from an axis orthogonal to the longitudinal direction of the inner tube.
Yan teaches in the same field of endeavor (flexible driveshaft), wherein each of said plurality of channels (115, Fig. 2C) in said helical configuration extends at an angle at or between 30 and 60 degrees from an axis orthogonal to the longitudinal direction of the inner tube (114) (As disclosed in Fig. 2C and [0038], the angle of the slots, from an axis orthogonal to the longitudinal axis Ax, are from a range greater than 0 degrees to equal to or less than 45 degrees. As such, Yan discloses the helical configurations extends at an angle between 30 and 45 degrees).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the angle of each of said plurality of channels in a helical configuration of Adams to between 30 and 60 degrees as applicant appears to have placed no criticality on the claimed range (see [0044] of the applicant’s specification) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 11/07/2025 have been fully considered but they are not persuasive.
In response to the argument(s) on the 35 USC 112 rejection, the rejection of claims 16, 18, and 19 under 35 USC 112 has been withdrawn in light of the amendment.
In response to the argument(s) on the 35 USC 103 rejections on pages 6-8 of the remarks, Adams discloses a surgical cutting tool (140, Fig. 5) for use with a handpiece having a motor (Paras. [0026] and [0004]), the surgical cutting tool comprising: an outer tube (142, Fig. 5) extending longitudinally between proximal (148, Fig. 5) and distal ends (146, Fig. 5) and comprising an inner surface defining a lumen therethrough (lumen of 142, Fig. 5); a flexible driveshaft (144, Fig. 5 or 8) comprising an inner tube (168, Fig. 5 or 8) rotatably disposed in said lumen (Para. [0054]) and extending in a longitudinal direction past said distal end to a cutting end (distal end 154 having a cutting tip 155, Figs. 5 and 7 and Para. [0060]) outside of said lumen (Fig. 5), said driveshaft further comprising: at least two torsion sections (length portions of 144/168 with helical / spiral cuts Fig. 5 or helical / spiral cuts 170a and 170b, Para. [0059] and [0061] and Fig. 8) spaced from one another longitudinally along said inner tube (Para. [0059]) and each a having at least one channel extending through said inner tube (each cut has or forms at least one channel extending through said inner tube, Fig. 5 or 8 and Para. [0059] and [0061]); and a bearing section (uncut length segment of the inner tube 168 separating 170a and 170b, Fig. 5 or 8 and Para. [0061]) disposed longitudinally between said torsion sections (Fig. 8 and Para. [0061]). However, Adams does not disclose wherein said channels are configured to collapse under rotational load in response to transmission of torque as said driveshaft rotates such that said torsion sections are spaced apart from said inner surface of said outer tube to a greater extent than said bearing section for reducing friction between said inner tube and said outer tube.
Krause discloses a surgical cutting tool ([Abstract] and Fig.12 and Figs. 7A-7C, which is the driveshaft to be used with the tool of Fig. 2) wherein said channels (With points 41 and 42) are configured to collapse under rotational load (110) in response to transmission of torque as said driveshaft rotates (As disclosed in fig. 7A-7C and [Col 10 lines 13-26], a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width) such that said torsion sections are spaced apart from said inner surface of said outer tube (104) to a greater extent than said bearing section for reducing friction between said inner tube (100 of Fig. 7A-7C) and said outer tube (104) (As disclosed in fig. 7A-7C and [Col 10 lines 13-26], a rotation under direction 110 would open the drive shaft, thereby extending the length but collapsing the width and therefore spacing apart from the outer tube).
Krause discloses that driveshaft lengthens as the spirals open at a steeper angle due to rotation (Fig. 7A-7C and Col 10. lines 13-26). It is common knowledge that the diameter of the driveshaft in the spiral sections gets smaller as the driveshaft lengthens because the spirals open at a steeper angle. As described in Col 10. lines 13-26 of Krause, “rotation in the direction of arrow 110 can open the spiral.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device of Adams to have rotatably collapsible channels at a torsion section, as taught by Krause, for the advantage that it allows for one to manually extend and retract the driveshaft and cutting portion (Krause, Col 10, lines 13-26). The modification is for modifying the device of Adams to have rotatably collapsible channels at a torsion section, as taught by Krause with the motivation of obtaining the advantage of allowing for one to manually extend and retract the driveshaft and cutting portion. The modification does not involve modifying the bearing/uncut section of Adams.
Furthermore, the plurality of channels 38 of the instant application are formed by laser cutting (Para. [0035] of the instant application). The continuous helical cuts 170 of Adams are also formed by laser cutting (Adams, Para. [0063]). Therefore, the continuous helical cuts 170 of Adams are reasonably interpreted as a plurality of channels.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/JING RUI OU/ Primary Examiner, Art Unit 3771