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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/11/2026 has been entered.
Claims 1 and 2 have been amended, claims 13-14 and 17 have been cancelled, and claims 18-22 have been newly added. Claims 1-12,15-16, and 18-22 are currently pending in the application with claims 7-12 standing withdrawn from further consideration.
Response to Arguments
Applicant's arguments, see pg. 7-8, filed 05/11/2026, with respect to the rejection of claim 1 under 35 U.S.C. 112(a) have been fully considered but they are not persuasive.
Applicant argues that the Specification provides support for “the holder located proximally” relative to the contact receiver as recited in claim 1 and cites pg. 15 of the Specification which states “The distal end side Ar1 of the holder 53 is inserted into the proximal end side Ar2 of the contact receiver 54 described below” as clearly showing “the holder’s body extends proximally from that interface” (see arguments pg. 8).
The Examiner disagrees. It is first noted that Applicant’s arguments are directed to a feature not recited by the claims (i.e., the holder’s body extends proximally from the interface between the holder and the contact receiver). The claim language requires the holder to be “located proximally relative to the contact receiver” which would ordinarily be understood to mean that the holder is located proximal of the contact receiver or located on the proximal end of the contact receiver. Neither of these configurations are apparent from the Specification or figures as originally filed.
The portion of the Specification cited by Applicant is understood to describe an assembly step in which the distal end of the holder is inserted into the proximal end of the contact receiver as shown in Fig. 7. However, this disclosure does not imply that the holder is on the proximal end of the contact receiver after insertion, especially in light of the figures which show the holder occupying a middle space within the contact receiver and not clearly located proximally relative to it.
The Examiner maintains that “a holder that is inserted into contact receiver and the storage, the holder located proximally relative to the contact receiver” is new matter.
Applicant's arguments, see pg. 8-9, filed 05/11/2026, with respect to the rejection of claim 2 under 35 U.S.C. 112(a) have been fully considered but they are not persuasive.
Applicant argues that “an oscillation damping material” can encompass one or more components and therefore “an oscillation damping material” as recited in claim 1 is understood to refer to a system of damping materials. The Examiner disagrees.
It is the Examiner’s position that Applicant’s argument regarding the use of “a” or “an” in U.S. patent practice is immaterial to the new matter rejection of claim 2. Even if “an oscillation damping material” can encompass one or more materials, every subsequent recitation of “the oscillation damping material” is understood stood to refer to a specific one. There is no support in the application as originally filed for a singular damping material that meets all of the limitations of claims 1 and 2. The oscillation damping materials disclosed by applicant appear to be distinct materials (silicone adhesive or rubber) in discrete locations and the materials and locations are not disclosed as being interchangeable.
If Applicant wishes to make clear that there is more than one oscillation damping material, each having a specific location, it is recommended that Applicant claims “a plurality of oscillation damping materials” or similar and further clarifies which damping material is in which location.
Applicant’s arguments, see pg. 9-13, filed 05/11/2026, with respect to the rejections of the claims under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Specifically, the Examiner agrees that Bales et al. (US 2015/0157354) fails to teach “the contact receiver having a cylindrical shape with an outer diameter that changes in a stepped manner” as recited by amended claim 1.
Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hirai (US 2009/0275864), Bales et al. (US 2015/0157354), and Deng (US 2004/0092991 A1).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “517” has been used to designate both the flange and the storage (see annotated Fig. 6 of the application below).
PNG
media_image1.png
326
446
media_image1.png
Greyscale
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 15-16, and 18-22 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites "a holder that is inserted into the contact receiver and the storage, the holder located proximally relative to the contact receiver." This limitation is not in the Specification as originally filed. The holder 53 is not proximal to the contact receiver 54 (see Fig. 2). Giving the terms their ordinary meaning, the limitation requires the holder to be located proximal of the contact receiver or located at the proximal end of the contact receiver. Neither of these configurations are apparent from the Specification and figures as originally filed. Instead, it appears that the contact receiver extends proximally beyond the holder 53 (see Fig. 2 and 7). Therefore, this limitation is considered new matter.
Claim 1 further recites “the oscillation damping material is located between the proximal end surface of the holder and the distal end surface of the flange,” ‘the oscillation damping material is formed of a material that is softer than the holder” and “wherein the oscillation damping material is provided circumferentially on a distal side of the holder”. This specific combination of limitations were not disclosed as part of a single embodiment of the oscillation damping material in the specification as originally filed, where each recitation of “the oscillation damping material” is understood to refer to the same singular oscillation damping material. Specifically, the oscillation damping material that is located between the proximal end surface of the holder and the distal end surface of the flange is understood to be seal ring 56 (see Fig. 2 and pg. 14 of the specification) and the oscillation damping material that is softer than the holder and provided circumferentially on a distal side of the holder is understood to be adhesive 59 (see Fig. 2 and pg. 18 and 21). Therefore, the oscillation damping material as recited in claim 1 is considered new matter.
Claim 2 recites that the oscillation damping material is made of silicone adhesive. This limitation, in combination with the limitations of amended claim 1 (e.g., "the oscillation damping material is located between the proximal end surface of the holder and the distal end surface of the flange"), were not disclosed as part of a single embodiment of the oscillation damping material in the Specification as originally filed. Specifically, the oscillation damping material that is made of silicone adhesive is under stood to be adhesive 59 (see Fig. 2 and Specification pg. 18) and the oscillation damping material that is located between the proximal end surface of the holder and the distal end surface of the flange is understood to be seal ring 56 (see Fig. 2 and pg. 14). Therefore, the oscillation damping material as recited in claim 2 is considered new matter.
Appropriate action is required.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, 15-16, and 18-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "a holder that is inserted into the contact receiver and the storage, the holder located proximally relative to the contact receiver" in lines 18-19, which renders the scope of the claim indefinite since it is unclear how the holder can both be inserted into and proximal of the contact receiver. It is further unclear how Applicant construes the term “located proximally” in light of the Specification and figures which do not show the holder simultaneously inserted into and located proximally relative to the contact receiver. For examination purposes, the holder “located proximally” relative to the contact receiver has been interpreted as the holder having a portion located near the proximal end of the contact receiver.
Further regarding claim 1, lines 22-24, recite "the oscillation damping material being formed of a material that is softer than the holder and that is filled in a gap at a portion where the contact receiver and the holder are in contact with each other" (emphasis added), which renders the scope of the claim indefinite because the scope of the term "contact" is unclear. Normally, "contact" would be given its ordinary meaning, which is to touch. However, it is not clear from the specification or figures that the holder and the contact receiver ever touch in the device of the application. The holder 53 and contact receiver 54 appear to have a gap between them (see Fig. 2). Additionally, it is unclear how there can be a gap at a portion where two elements contact each other, when contact is given its ordinary meaning of "to touch". Therefore, it is unclear how Applicant has construed the term in this context. For examination purposes, "contact" has been interpreted as any kind of connection, including indirect contact. Claims 2-6, 15-16, and 18-22 are similarly rejected by virtue of their dependency from claim 1.
Claim 18 recites “wherein the oscillation damping material includes a first damping material located between the proximal end surface of the holder and the distal end surface of the flange” which renders the scope of the claim indefinite since it is unclear how the first damping material relates to the oscillation damping material referenced in claim one as being located between the proximal end surface of the holder and the distal end surface of the flange (see claim 1, lines 20-21). In other words, it is unclear if the claim is referencing the same material in claim 1 or is introducing an additional material at the same location. For examination purposes, the first damping material has been interpreted as a reference to the same material recited in claim 1. Claims 19-21 are similarly rejected by virtue of their dependency from claim 18.
Claim 22 recites “wherein the node position is a position at which the ultrasonic oscillation resonates at a predetermined frequency during the resonance state.” It is unclear how or if this limitation further limits the subject matter of claim 1, which recites “a node position of ultrasonic oscillation in a resonance state” (see claim 1, lines 4-5). A node is understood to be a characteristic of an ultrasonic system during the resonance state, which necessarily corresponds to a frequency of oscillation. It is further unclear how the ultrasonic oscillation can “resonate” as claimed. Further, it is noted that the Specification does not provide a basis for understanding the claim language. As best understood, this limitation has been interpreted as “the node position is a position of ultrasonic oscillation at a predetermined frequency during the resonance state.”
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.
Claims 1-6, 15-16 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Hirai (US 2009/0275864) in view of Bales et al. (US 2015/0157354), and further in view of Deng (US 2004/0092991 A1).
Regarding claims 1, 18, 19 and 20, Hirai discloses an ultrasonic treatment tool (1, see Fig. 1) comprising: an ultrasonic oscillator (see Fig. 41) in which a plurality of piezoelectric elements (6) configured to generate ultrasonic oscillation are arranged along a longitudinal axis direction of the ultrasonic oscillator, the ultrasonic oscillator including a flange (6a), the ultrasonic oscillator being configured to transmit the ultrasonic oscillation from a proximal end side to a distal end side of the ultrasonic oscillator (see [0073]); a contact (elements 131,132, 133, 134 are all contacts); a contact receiver (contact-point receiving section 126 includes cylindrical portions 123, 124 and 125, see [0125] and Fig. 41) configured to transmit power and a control signal to the ultrasonic oscillator (the contact-point receiving section 126 connects to contact-point unit 66 for transmitting power and control signals to the transducer, see [0119]), the contact receiver having a cylindrical shape with an outer diameter that changes in a stepped manner (the outer diameter changes in a stepped manner between portions 123, 124 and 125, see Fig. 41), the contact being provided in the contact receiver (the contacts 131,132, 133 and 134 are provided within respective portions of 123, 124 and 125, see Fig. 41); and a floating structure, the floating structure including: a material (O-rings 214, 215, 216 and 219); a storage (211) configured to accommodate the ultrasonic oscillator (see Fig. 41), an inner surface of the storage facing an outer peripheral surface of the flange (see Fig. 41); and a holder (213) that is inserted into the contact receiver and the storage (transducer attachment member 213 is partially inserted into storing section 211 and contact-point receiving portion 126, see Fig. 41), the holder located proximally relative to the contact receiver (as best understood, the holder 213 of Hirai is located proximally relative to the contact-point receiving section 126 since it has a portion that located near the proximal end of the contact receiving section, see Fig. 41, and this interpretation is consistent with the way that holder 53 is located proximally relative to contact receiver 54, see Fig. 2 of the instant application), a proximal end surface of the holder facing a distal end surface of the flange (see Fig. 41), wherein the material is located between the proximal end surface of the holder and the distal end surface of the flange (O -ring 214 is located between the proximal end surface of transducer attachment member 213 and the distal end surface flange 6a, see Fig. 41), wherein the material is filled in a gap at a portion where the contact receiver and the holder are in contact with each other (O-ring 215 fills the a gap at a portion 301 of transducer attachment member 213 where the contact-point receiving section 126 is in contact with the transducer attachment member, see Fig. 41), and wherein the material is provided circumferentially on a distal end side of the holder (O-ring 215 extends circumferentially within the transducer attachment member 213 on a distal end side of the attachment member, see Fig. 41). Further regarding claim 18, Hirai discloses wherein the material includes a first material (214) located between the proximal end surface of the holder and the distal end surface of the flange (see Fig. 41). Further regarding claims 19 and 20, Hirai discloses wherein the material further includes a second material (219), the second material being located between the contact receiver and a distal end of the storage (O-ring 219 is located between the distal end of storing section 211 and cylindrical member 135 which is continuous with of contact-point receiving section 126, see [0129] and Fig. 41).
Hirai fails to teach the flange located at a node position of ultrasonic oscillation in a resonance state. Hirai further fails to teach the material is an oscillation damping material that is formed of a material that is softer than the holder.
Bales in the same field of art teaches a related ultrasonic treatment tool having an ultrasonic oscillator (902, see Fig. 54) including a flange (5450) located at a node position of ultrasonic oscillation in a resonance state (see [0241]-[0242]). Bales teaches that placing the flange at a node position is desirable since it is the contact point between the transducer and the casing and transferring vibration onto the casing is undesirable (see [0241]).
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 ultrasonic treatment tool of Hirai by causing the flange to be located at a node position, as taught by Bales, since doing so would prevent vibration from being transmitted to other portions of the device.
The combination of Hirai and Bales fails to teach the material is an oscillation damping material. However, it is noted that the material disclosed by Hirai are all O-rings which function as sealing elements (see Fig. 41 of Hirai and [0121]-[0122]).
Deng, in the same field of art, teaches a related ultrasonic treatment tool having O-rings made of silicone adhesive which are capable of forming a seal and withstanding sterilization (see [0038]). Silicone adhesive is further considered to be an oscillation damping material since this is a material disclosed by Applicant as an oscillation damping material (see pg. 18 of the specification of the instant application).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the material of Hirai with an oscillation damping material, as taught by Deng, since doing so would have yielded nothing more than predictable results, namely, the oscillation damping material of Deng in the ultrasonic treatment tool of Hirai would similarly have provided a seal and further would have been capable of withstanding sterilization, if sterilization were desired. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding the language “[the] floating structure configured to suppress transmission of ultrasonic oscillation generated by the ultrasonic oscillator to the contact receiver or dampen the ultrasonic oscillation” (see claim 1), “[the] oscillation damping material configured to dampen the ultrasonic oscillation transmitted from the flange to the contact receiver” (see claim 1), and “[the] second damping material configured to dampen the ultrasonic oscillation transmitted from the flange to the contact receiver” (see claim 19), it is the Examiner’s position that these limitations constitute functional language, indicating that the claimed device need only be capable of being used in such a manner. Furthermore, the claim is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Hirai, Bales and Deng meets the structural limitations of the claim, and the floating structure and oscillation damping material of Hirai, Bales and Deng would be capable of damping ultrasonic oscillation in the way claimed since the floating structure and oscillation damping material of Hirai, Bales and Deng is the made of the same material and is in the same locations as the oscillation damping material of the device of the application.
Regarding the limitation “the oscillation damping material that is formed of a material that is softer than the holder,” in the ultrasonic treatment tool of Hirai as modified by Bales and Deng, the oscillation damping material would be formed of a material that is softer than the holder since the oscillation damping material would be a flexible silicone adhesive and the holder taught by Hirai (transducer attachment member 213) is formed of a resin material which is understood to be a rigid plastic (see [0120] – [0121]).
Regarding claim 2, the combination of Hirai, Bales and Deng teaches the ultrasonic treatment tool according to claim 1, wherein the oscillation damping material includes a silicone adhesive (Deng teaches the oscillation damping material is a silicone adhesive, see Deng [0038]).
Regarding claim 3, Hirai further teaches a casing (212) configured to accommodate a proximal end side of the contact receiver and accommodate the storage (casing 212 receives both the proximal end of contact-point receiving section 126 and storing section 211, see Fig. 41), wherein at least a part of a proximal end side of the storage is in contact with a proximal end-side inner wall of the casing (the outer surface of storing section 211 is in contact with the inner wall of the casing 212 at the proximal end, see Fig. 42).
Regarding claim 4, Hirai further teaches an ultrasonic transducer including the ultrasonic oscillator and the contact receiver (transducer 6 and contact-point receiving section 126 collectively form transducer unit 2, see Fig. 38); and a handpiece (4, see Fig. 2) to which the ultrasonic transducer is detachable (see [0072]).
Regarding claim 5, Hirai further teaches the handpiece (4, see Fig. 14) is provided with a contact unit (66) to which the contact receiver is attached (see [0119]).
Regarding claim 6, Hirai further teaches wherein high frequency energy is supplied to the ultrasonic transducer (see [0119]).
Regarding claim 15, Hirai further teaches wherein the inner surface of the storage faces an outer peripheral surface of the holder (the inner surface of 211 faces and is in contact with the outer surface of transducer attachment member 213, see Fig. 41).
Regarding claim 16, Hirai further teaches wherein the inner surface of the storage is in contact with the outer peripheral surface of the holder (the inner surface of 211 faces and is in contact with the outer surface of transducer attachment member 213, see Fig. 41).
Regarding claim 21, Hirai further teaches wherein the distal end surface of the flange is a surface distinct from the outer peripheral surface of the flange and is a surface that faces the proximal end surface of the holder (the distal end surface of flange 6a, which faces the proximal end surface of transducer attachment member 213, is distinct from the outer surface of the flange which faces and is in contact with the inner surface of storing section 211, see Fig. 41).
Regarding claim 22, Hirai further teaches wherein the node position is a position of ultrasonic oscillation at a predetermined frequency during the resonance state (as discussed above with respect to the rejection of claim 22 under 35 U.SC. 112b this is an inherent property of a node).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SERENITY MILLER whose telephone number is (571)272-1155. The examiner can normally be reached Monday-Friday 8:00am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at (571)272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SERENITY A MILLER/Examiner, Art Unit 3771
/ELIZABETH HOUSTON/Supervisory Patent Examiner, Art Unit 3771
Prosecution Insights