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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/02/2026 has been entered.
This office action is responsive to the amendment filed on 07/02/2026. As directed by the amendment: claims 1 and 31 have been amended and claims 13-30 have been cancelled. Thus, claims 1-12 and 31-34 are presently pending in this application with claims 10-12 withdrawn.
Claim Rejections - 35 USC § 112
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.
Claim 5 is 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 5 recites “the inner jacket is not secured to the cutting tip” however independent claim 1 recites “a distal end of the inner jacket is secured to the cutting tip within the counter bore”. The limitation of claim 5 is the opposite to claim 1 and thus is unclear.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 33 and 34 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitations of claim 33 and 34 are recited in independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-5, 9, 33, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Harvey (US 20120221035 A1) in view of Nakano et al. (US 20200397458 A1).
Regarding claims 1, 33, and 34 Harvey discloses (fig. 1-4, 6A, and 7) a cutting assembly configured to be coupled to an irrigation source (see [0041]) and an aspiration source (see [0040]), the cutting assembly comprising:
a housing 13 (see fig. 2 and [0025]);
an outer tube 40 comprising a proximal end coupled to the housing (see fig. 2 and [0026]);
a drive hub 14 (see fig. 2 and [0024]);
an inner tube 46 coupled to the drive hub 14 (see fig. 2 and [0027]) and rotatably and coaxially disposed within the outer tube (see [0027] and [0035]), wherein an irrigation path is defined between the inner tube and the outer tube (see [0041]);
a cutting tip 61 comprising a proximal end fixedly secured to the distal end of the inner tube 46 (see fig. 2, [0027]-[0028], and [0039]); and
an inner jacket 78 coupled to the drive hub 14 (78 can extend along the length of 46 and 46 is coupled to the drive hub, see [0027] and [0036]) and coaxially disposed within the inner tube (see fig. 7 and [0036]), wherein an aspiration path is defined within the inner jacket (see [0040]), and wherein the inner jacket is configured to provide a fluid seal between the aspiration path and the irrigation path (see [0036]).
Harvey is silent regarding the cutting tip defines a counterbore, and wherein the distal end of the inner jacket is secured to the cutting tip within the counterbore.
However Nakano, in the same field of endeavor, teaches (fig. 3) a cutting tip 40 defines a counterbore, and wherein a distal end of an inner jacket 20 is secured to the cutting tip within the counterbore (see fig. 3 and [0024]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Harvey to have the cutting tip defines a counterbore, and wherein the distal end of the inner jacket is secured to the cutting tip within the counterbore as taught by Nakano, for the purpose of ensuring the liquid tight seal continues into the cutting tip (see Nakano [0027]).
Regarding claim 2 Harvey as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Harvey further discloses (fig. 1-4, 6A and 7) the inner tube defines slots (92-95; see fig. 6A and [0030]), wherein the fluid seal provided by the inner jacket 78 is configured to prevent ingress of irrigation fluid through the slots (see [0036]).
Regarding claim 3 Harvey as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Harvey further discloses (fig. 1-4, 6A and 7) the outer tube 40 comprises a bend, wherein the slots of the inner tube are axially positioned along the bend (see fig. 1 and [0038]).
Regarding claim 4, Harvey discloses the claimed invention substantially as claimed, as set forth above for claim 1. Harvey is further silent regarding the inner jacket is coupled to the drive hub at a position proximal to where a proximal end of the inner tube is coupled to the drive hub.
However Nakano, in the same field of endeavor, teaches (fig. 2) an outer tube 30, an inner tube 50, an inner jacket 20, a fluid path between the inner 50 and outer 30 tubes (see fig. 2) and a fluid path in the inner jacket 20 (see fig. 2), wherein the inner jacket 20 is coupled to a drive hub 60 at a position proximal to where a proximal end of the inner tube 50 is coupled to the drive hub 60 (see fig. 2, [0038], and [0041]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Harvey to have the inner jacket is coupled to the drive hub at a position proximal to where a proximal end of the inner tube is coupled to the drive hub as taught by Nakano, for the purpose of being able to have a side port to connect the aspiration device to (see Nakano [0039]).
Regarding claim 5 Harvey as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Harvey further discloses (fig. 1-4, 6A and 7) the inner jacket 78 is not secured to the cutting tip (see fig. 7).
Regarding claim 9 Harvey as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Harvey further discloses (fig. 1-4, 6A and 7) the outer tube 40 comprises an outer tip portion defining an outer window 43 (see [0026]), and an inner tip portion comprises an inner window 49 (see [0028]) such that the cutting assembly is a shaver (see [0037] and [0039]).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Harvey Harvey in view of Nakano, as applied to claim 1 above, and further in view of in view of Escudero et al. (US 20090018566 A1).
Regarding claims 6-8, Harvey as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Harvey as modified is silent regarding the inner jacket is a multilayer reinforced tube; the multilayer reinforced tube comprises a braid disposed between inner and outer layers of polymeric material; the braid is stainless steel, and the polymeric material is polyether block amide.
However Escudero, in the same field of endeavor, teaches a tube can be formed of a multilayer reinforced tube; the multilayer reinforced tube comprises a braid disposed between inner and outer layers of polymeric material; the braid is stainless steel, and the polymeric material is polyether block amide (see [0199] and [0202]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Harvey as modifed to have the inner jacket is a multilayer reinforced tube; the multilayer reinforced tube comprises a braid disposed between inner and outer layers of polymeric material; the braid is stainless steel, and the polymeric material is polyether block amide as taught by Escudero, for the purpose of reinforcing the device to provide a stiffer structure (see Escudero [0199]).
Claims 31 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Harvey (US 20120221035 A1) in view of Nakano et al. (US 20200397458 A1).
Regarding claim 31 Harvey discloses (fig. 1-4, 6A, and 7) a cutting assembly configured to be coupled to an irrigation source (see [0041]) and an aspiration source (see [0040]), the cutting assembly comprising:
a housing 13 (see fig. 2 and [0025]);
an outer tube 40 comprising a proximal end coupled to the housing (see fig. 2 and [0026]);
a drive hub 14 (see fig. 2 and [0024]);
an inner tube 46 coupled to the drive hub 14 (see fig. 2 and [0027]) and rotatably and coaxially disposed within the outer tube (see [0027] and [0035]), wherein an irrigation path is defined between the inner tube and the outer tube (see [0041]);
a cutting tip 61 comprising a proximal end fixedly secured to a distal end of the inner tube 46 (see fig. 2, [0027]-[0028], and [0039]); and
an inner jacket 78 coaxially disposed within the inner tube (see fig. 7 and [0036]), wherein an aspiration path is defined within the inner jacket (see [0040]), and wherein the inner jacket is configured to provide a fluid seal between the aspiration path and the irrigation path (see [0036]).
Harvey is silent regarding a distal end of the inner jacket is positioned distal to the proximal end of the cutting tip.
However Nakano, in the same field of endeavor, teaches (fig. 3) a distal end of an inner jacket 26 is positioned distal to the proximal end of a cutting tip 40 (see fig. 3 and [0027]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Harvey to have a distal end of the inner jacket is positioned distal to the proximal end of the cutting tip as taught by Nakano, for the purpose of ensuring the liquid tight seal continues into the cutting tip (see Nakano [0027]).
Regarding claim 32, Harvey as modified discloses the claimed invention substantially as claimed, as set forth above for claim 31. Harvey is further silent regarding a proximal end of the inner jacket is coupled to the drive hub at a position proximal to where a proximal end of the inner tube is coupled to the drive hub.
However Nakano, in the same field of endeavor, teaches (fig. 2) an outer tube 30, an inner tube 50, an inner 26 20, a fluid path between the inner 50 and outer 30 tubes (see fig. 2) and a fluid path in the inner jacket 26 (see fig. 2), wherein a proximal end of the inner jacket 26 is coupled to a drive hub 60 at a position proximal to where a proximal end of the inner tube 50 is coupled to the drive hub 60 (see fig. 2, [0027]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Harvey as modified to have a proximal end of the inner jacket is coupled to the drive hub at a position proximal to where a proximal end of the inner tube is coupled to the drive hub as taught by Nakano, for the purpose of being able to have a side port to connect the aspiration device to (see Nakano [0039]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 31 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE H MENDEZ whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 8 am-4:00 pm.
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/KATHERINE H MENDEZ/Primary Examiner, Art Unit 3771
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