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 .
Election/Restrictions
Applicant’s election without traverse of Group II (claims 15-29), in the reply filed on 07/01/2026, is acknowledged.
Claims 1-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/01/2026.
Information Disclosure Statement
The information disclosure statements (IDS), submitted on 7/11/23; 7/14/23; 8/25/23; 9/19/23; 2/27/24; 7/2/24; 9/30/24; 2/7/25; 3/11/25; 7/9/25; 12/15/25; 3/5/26; 6/24/26, have been considered by the examiner.
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 15-21 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Staggs (PGPub 2008/0033342).
[Claims 15 and 19] Staggs teaches a surgical system (figure 1; paragraph [0027]) comprising:
a handpiece (figure 1, item 104; paragraph [0028]);
an aspiration line (figure 1, item 110) coupled with the handpiece (figure 1, item 104) (paragraphs [0027], [0028]);
a sensor (figure 1, item 113) communicatively coupled with the aspiration line (figure 1, item 110) (paragraph [0027]); and
a surgical console (“control unit”) (figure 1, item 105) communicatively coupled with the handpiece (figure 1, item 104) (paragraph [0028]), the surgical console (figure 1, item 105) configured to provide a predetermined ultrasound power (via line 102; paragraph [0028]) to the handpiece (figure 1, item 104) based on a comparison of a measured vacuum level and at least one vacuum threshold (“maximum vacuum”) (via the user/operator inputs 120; paragraph [0029]) (the examiner notes, for the purpose of claim interpretation, the term “vacuum threshold” has not been explicitly defined; as such, any parameter which is altered, relative to a change in vacuum, can be considered to be based on a “vacuum threshold”), the measured vacuum level is based on a reading from the sensor (figure 1, item 113)( “Selection of PSA mode may direct the microprocessor computer 109 to continuously monitor the resultant vacuum at line/handpiece needle 108 by measuring the pressure on line 110 via vacuum sensor 113. The computer 109 may respond to a surgeon selected preset maximum vacuum level and preset minimum and maximum PSA values using signals from the vacuum sensor 113.”) (figures 2 and 3; paragraphs [0029], [0047]).
[Claim 16] Staggs teaches the limitations of claim 15, upon which claim 16 depends. In addition, Staggs discloses the vacuum threshold is based on at least one of a tip size of the needle, irrigation sleeve size, an intraocular pressure, aspiration flow (“vacuum”), and an irrigation flow (figure 3; paragraph [0029]).
[Claim 17] Staggs teaches the limitations of claim 15, upon which claim 17 depends. Staggs also teaches the vacuum threshold is based on a sensitivity level (lacking any explicit definition for “sensitivity level”, a user set parameter can satisfy this limitation) (figure 3; paragraph [0029]).
[Claim 18] Staggs teaches the limitations of claim 15, upon which claim 18 depends. Staggs further discloses a foot pedal (“Any suitable input device such as, for example, a foot pedal (not shown) may be utilized in lieu of the switch 112.”), wherein the predetermined ultrasound power is provided when the foot pedal is adjusted to a specified position (figure 1; paragraph [0028]).
[Claims 20 and 21] Staggs teaches the limitations of claim 15, upon which claims 20 and 21 depend. In addition, Staggs teaches a first ultrasound power (figure 3, item 310) is provided if the measured vacuum level (figure 3, item 303) is less than the at least one vacuum threshold (again, the examiner notes, any parameter which is altered, relative to a change in vacuum, can be considered to be based on a “vacuum threshold”) and a second ultrasound power (figure 3, items 312-314) is provided if the measured vacuum level is greater than the at least one vacuum threshold (figure 3); wherein the second ultrasound power (figure 3, items 312-314) is greater than the first ultrasound power (figure 3, item 310) (figure 3; paragraph [0047]).
[Claim 26] Staggs teaches the limitations of claim 16, upon which claim 26 depends. Staggs further discloses the surgical console (figure 1, item 105) is further configured to provide an aspiration boost (the examiner notes this can be interpreted as any increase in vacuum level controlled by the surgical console) based on the comparison of the measured vacuum level to the at least one vacuum threshold (again, the examiner notes, any parameter which is altered, relative to a change in vacuum, can be considered to be based on a “vacuum threshold”) (figure 1; paragraphs [0027], [0028]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,874,551. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the elements of the recited instant application claims are found in the recited patent claims. For example, all of the elements of claim 15 of the instant application can be found in claim 1 of the patent. The difference between claim 15 of the instant application and claim 1 of the patent lies in the fact that the patent claim includes more elements and is thus more specific. Thus, the invention of claim 1 of the patent is in effect a “species” of the "generic” invention of claim 15 of the instant application. It has been held that the generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 15 of the instant application is anticipated by claim 1 of the patent, it is not patentably distinct from claim 1 of the patent.
Allowable Subject Matter
Claims 22-25 and 27-29 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON E FLICK whose telephone number is (571)270-7024. The examiner can normally be reached M-F 7 a.m.-3 p.m. Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bhisma Mehta can be reached at 571-272-3383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON E FLICK/Primary Examiner, Art Unit 3783 08/28/2026
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