DETAILED ACTION
This action is in response to applicant’s amendment received on August 15th, 2025.
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.
Claims 1-3, 5-13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Young (U.S. Publication 2017/0143398) in view of Quearry (U.S. Publication 2014/0265024).
Young discloses a device (for example Figures 1-7) comprising:
(claim 1) an elongate solid shaft means (18, 20, 21, 22, etc.)
(claim 1) wherein the elongate solid shaft means is mountable at a proximal end to a source of ultrasonic vibrations (2, 5, etc.; paragraph 92; see Figure 7) to act as a waveguide for propagation of ultrasonic vibrations (elements 22 is discloses as a waveguide)
(claim 1) including an operative head (for example 52; see Figure 5) at a distal end of the shaft means
(claim 1) wherein the operative head is capable of acting on cement
(claim 17) wherein the operative head comprises an operative head adapted to collect softened cement when ultrasonically vibrated
(claim 12) including an intermediate conversion portion (the portion of the elongate solid shaft means between the tapered portion near element 24 and 30)
(claim 12) a first tapered gain feature (the tapered portion between 24 and 22) positioned adjacent a proximal end of the intermediate conversion portion
(claim 13) wherein the elongate solid shaft includes at least one substantially cylindrical element (elements 22 and 24 are substantially cylindrical)
Young fails to disclose the device wherein the elongate solid shaft means further includes at least one row of dimples extending helically along and around a portion of the elongate solid shaft means. Quearry teaches a device (for example see Figure 1) comprising an elongate solid shaft means further including a portion (21) of the elongate solid shaft means includes at least two rows of identical dimples extending helically along and around the portion of the elongate shaft means (claims 1, 4, 5, 10, and 11), wherein each dimple is circular (claim 6), wherein each recess is part-spherical (claim 7), wherein each row extends less than an overall length of the portion of the elongate shaft means (claim 8) in order to improve the visualization of the device during a surgical procedure. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Young wherein a portion of the elongate shaft means, the intermediate conversion portion between the tapered portion adjacent element 24 and element 30) includes at least two rows of identical dimples extending helically along and round the portion of the elongate shaft means in view of Quearry in order to improve visualization of the device during surgical procedure.
Regarding claim 2, the device of Young as modified by Quearry discloses the invention as claimed (see above) except for the dimples extending to a depth of less than half of a maximum width of the dimples. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Young as modified by Quearry wherein the dimples extending to a depth of less than half of a maximum width of the dimples, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 3, the device of Young as modified by Quearry discloses the invention as claimed (see above) except for the dimples extending into the elongate shaft means to a depth of less than a quarter of the maximum width of the dimple. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Young as modified by Quearry wherein the dimples extending to a depth of less than a quarter of the maximum width of the dimples, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 9, the device of Young as modified by Quearry discloses the invention as claimed (see above) except for the rows of dimples extending for more than half the overall length of the portion of the elongate shaft means. It has been held that where the only different 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 deice was not patentably distinct from the prior art device. In re Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Young as modified by Quearry wherein the at least one row of dimples extends for more than half the overall length of the portion of the elongate shaft means because the device of Young as modified by Quearry having the claimed relative dimensions would not perform differently than the prior art device, i.e. the device would still be visible during a surgical procedure.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Young (U.S. Publication 2017/0143398) in view of Quearry (U.S. Publication 2014/0265024) further in view of Easley (U.S. Publication 2006/0004396).
The device of Young as modified by Quearry discloses the invention of claimed except for the elongate solid shaft means includes second tapered gain feature distally adjacent the distal end of the intermediate conversion portion. Easley teaches a device (for example see Figure 2) comprising an elongate solid shaft means mountable at a proximal end to a source of ultrasonic vibrations including an intermediate conversion portion (the portion with slots) and a first tapered gain feature positioned adjacent a proximal end of the intermediate conversion portion (the tapered section proximally adjacent the intermediate conversion portion), wherein the elongate solid shaft means further includes a second tapered gain feature positioned adjacent a distal end of the intermediate conversion portion (the tapered portion distally adjacent the intermediate conversion portion) in order to control the resonant frequencies and vibrational amplitudes of an ultrasonic tool. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Young as modified by Quearry wherein the elongate solid shaft means further includes a second tapered gain feature positioned adjacent a distal end of the intermediate conversion portion in view of Easley in order to control the resonant frequencies and vibrational amplitudes of an ultrasonic tool.
Response to Arguments
Applicant's arguments filed August 15th, 2025 have been fully considered but they are not persuasive. The applicant’s argument that the device of Young as modified by Quearry does not disclose the invention as claimed is not persuasive. The applicant’s argument that the device of Young does not disclose an elongate solid shaft mountable to a source of ultrasonic vibration is not persuasive.
Allowable Subject Matter
Claims 21 and 22 are allowed.
Claims 18 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Paragraph 92 of the Young reference states waveguides 22 and probes 26 are mountable to the distal end of horn portion 18 of the transducer unit 1. Furthermore, paragraph 120 states the probe 51 is mounted to the distal end of the horn by a threaded connection. The applicant’s argument that the reference of Young only discloses torsional vibrations is moot since the claims do not contain limitations directed to the conversion of longitudinal vibrations to torsional vibrations. Furthermore, the claims do not contain limitations that the dimples perform the function of converting longitudinal vibrations to torsional vibrations. Therefore, using the teachings of the Quearry reference to teach dimples extending helically along the length of the elongated solid shaft in order to visualize the device during a surgical procedure meets the limitations of the claims as presented. The applicant’s argument that there is no motivation to modify the device of Young with the teachings of dimples in view of Quearry is not persuasive. As discussed above, the motivation is to allow the device to be visualized during a surgical procedure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references the examiner felt were relevant to the application.
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 Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
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/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775