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
This Office action is responsive to the amendment filed 10/23/2025. Claims 1, 3, and 7-8 are currently amended. Claims 13-17 have been newly added. Claims 1-17 are currently pending in the application with claims 7-12 standing withdrawn from further consideration.
Response to Arguments
Applicant’s arguments, see pg. 6-7, filed 10/23/2025, with respect to the rejections of the claims under 35 U.S.C. 112(b) have been fully considered and are persuasive. Therefore, the rejections have been withdrawn.
Applicant's arguments, see pg. 7-9, with respect to the rejections of the claims under 35 U.S.C. 103 as being unpatentable over Bales et al. (US 2015/0157354), in view of Maguire et al. (US 2002/0022833) and further in view of Houser et al. (US 2010/0331872) have been fully considered but they are not persuasive.
Applicant argues that Bales fails to teach the oscillation damping material is located between the proximal end surface of the holder and the distal end surface of the flange as recited by amended claim 1.
The Examiner disagrees. Bales teaches an oscillation damping material 5452 (see Fig. 54) located between a proximal end surface of the holder (5434,5432) and the distal end surface of the flange (5450). The o-ring 5452 is located between the proximal surface at the distal end of the holder and the distal end surface of the flange (see Fig. 54).
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, and 13-17 are 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). In fact, it appears based on the figures that the contact receiver extends proximal of the holder 53 (see Fig. 2 and 7). Therefore, this limitation 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 (i.e., “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 and 13-17 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” which renders the scope of the claim indefinite unclear since it is unclear how the holder can both be inserted into and proximal of the contact receiver.
Claims 2-6 and 13-17 are similarly rejected by virtue of their dependency from claim 1.
Claim Rejections - 35 USC § 102
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 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, 3-6 and 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bales et al. (US 2015/0157354).
Regarding claim 1, Bales discloses an ultrasonic treatment tool (see Fig. 45 and 50-56) comprising: an ultrasonic oscillator (902, see Fig. 54) in which a plurality of piezoelectric elements (5502, see Fig. 55) configured to generate ultrasonic oscillation are arranged along a longitudinal axis direction of the ultrasonic oscillator (see [0240]), the ultrasonic oscillator including a flange (5450, see Fig. 54) at a node position of ultrasonic oscillation in a resonance state (see [0242]), 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 [0241]); a contact receiver (body 5005 is considered a contact receiver because it houses the generator 904 containing contacts 5402 and 5404, see Fig. 54) configured to transmit power and a control signal to the ultrasonic oscillator (contact 5402 and 5404 transmit power and a driving signal to the transducer, see [0460]); and a floating structure configured to suppress transmission of ultrasonic oscillation generated by the ultrasonic oscillator to the contact receiver or dampen the ultrasonic oscillation, the floating structure including: an oscillation damping material (5452) configured to dampen the ultrasonic oscillation transmitted from the flange to the contact receiver; a storage configured to accommodate the ultrasonic oscillator (the space on the interior of the handle assembly 302 is considered a storage since it is an open space that accommodates the transducer 902 , see Fig. 56); and a holder (5434, 5432) that is inserted into the contact receiver and the storage (the housing portions 5434, 5432 are inserted into the contact receiver 5005, see Fig. 50, and fit into the space formed by the handle assembly, see Fig. 56). Bales further teaches an inner surface of the storage facing an outer surface of the flange (the inner surface of handle assembly 302 faces an outer surface of the flange 5450, see Fig. 54 and 56) and the oscillation damping material 5452 (see Fig. 54) located between a proximal end surface of the holder (5434,5432) and the distal end surface of the flange (5450).
Regarding claim 3, Bales further discloses a casing (the body of handle assembly 302, see Fig. 56) configured to accommodate a proximal end side of the contact receiver (when TAG assembly 303 is inserted into the handle assembly 302, the proximal end of body 5005 is accommodated by the body of the handle assembly, see Fig. 36 and 50) and accommodate the storage, 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 storage is interior of the casing formed by the body of the handle assembly 302 and therefore is necessarily in contact with a proximal end side inner wall of the casing).
Regarding claim 4, Bales further discloses an ultrasonic transducer including the ultrasonic oscillator and the contact receiver; and a handpiece (302, see Fig. 45) to which the ultrasonic transducer is detachable (the handpiece is selectively removable, see [0453]).
Regarding claim 5, Bales further discloses the handpiece is provided with a contact unit (5602) to which the contact receiver is attached (the body 5005 is attached to the handpiece by electrical connector 5010 as the handle assembly’s electrical connector 5602, see Fig. 56 and [0465]).
Regarding claim 6, Bales further discloses wherein high frequency energy is supplied to the ultrasonic transducer (see [0044]).
Regarding claim 13, Bales further disclose wherein the oscillation damping material is a first oscillation damping material, the floating structure further comprises a second oscillation damping material configured to dampen the ultrasonic oscillation transmitted from the flange to the contact receiver (an adhesive secures contacts 5402 and 5404 in place to prevent them from moving out of contact with respect to the transducer housing 5434, 5432 as the transducer vibrates, see [0459]), wherein the second oscillation damping material is located between the contact receiver and the storage (the adhesive extends in the space between the contacts 5402, 5404 and the storage formed by handle assembly 302).
Regarding claim 14, Bales further discloses ultrasonic treatment tool according to claim 13, wherein the second oscillation damping material is located between the contact receiver and a distal end surface of the storage (the adhesive extends in the space between the contacts 5402,5404 and the distal end of the storage formed by handle assembly 302, see Fig. 56).
Regarding claim 15, Bales further discloses the ultrasonic treatment tool according to claim 1, wherein the inner surface of the storage faces an outer peripheral surface of the holder (the inner surface of handle assembly 302 faces the outer peripheral surface of the holder 5432, 5434, see Fig. 45-46).
Regarding claim 16, Bales further discloses the ultrasonic treatment tool according to claim 15, wherein the inner surface of the storage is in contact with the outer peripheral surface of the holder (the inner surface of handle assembly 302 is in contact with the outer peripheral surface of the holder 5432, 5434, see Fig. 45-46).
Regarding claim 17, Bales discloses wherein the oscillation damping material is formed of a material that is softer than the holder (o-ring 5452 is formed of a material softer than the holder since it is compressed between the flange 5450 and holder 5432,5434, see [0244]).
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.
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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.
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/SERENITY A MILLER/Examiner, Art Unit 3771
/ELIZABETH HOUSTON/Supervisory Patent Examiner, Art Unit 3771