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 Arguments
The Office notes the deletion of “nano hooks” from claim 1 rendering the drawing objection moot. The Office would also like to note that an amendment to the drawings showing just what is in the specification (in this case nano hooks) would not necessarily be considered new matter.
The Office notes that the removal of “nano hooks” from claim 1 has removed the allowable subject matter from the claim.
Applicant’s arguments, see pg. 5-6, filed 12/29/2025, with respect to the rejection(s) of claim(s) 15-22 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Horvath.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/2025 has been entered.
This office action is responsive to the amendment filed on 12/29/2025. As directed by the amendment: claims 1 and 15 have been amended and claims 13-14 have been cancelled. Thus, claims 1-12 and 15-22 are presently pending in this application with claims 4, 6, and 7 withdrawn.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.
Claims 9 and 19 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.
Claims 9 and 19 recite the limitation "the face" in line 1. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the limitation will be interpreted as “the end face”. Appropriate correction is required.
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, and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Parham (US 20160331397 A1) in view of Horvath et al. (US 20120123438 A1) and Tano (US 5,921,998).
Regarding claim 1 Parham discloses (fig. 1-3) a surgical probe for manipulating ocular tissues, comprising:
a handpiece configured to be held by a user (see fig. 1); and
a tube 220 defining a longitudinal axis (see fig. 3), the tube 220 comprising:
a proximal end coupled to the handpiece (see fig. 3); and
a distal end opposite the proximal end and comprising a distal tip (see fig. 3), wherein the distal tip is beveled (see fig. 3 and [0035]) and comprises a distal face at least partially defining a port, the port having an elongated shape (see fig. 1);
wherein the tube 220 comprises a lumen therethrough (see [0028]-[0029] and fig. 3) configured to provide vacuum through the port. The language “configured to provide vacuum through the port” constitutes functional claim 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 Parham meets the structural limitations of the claim, and the device is capable of provide vacuum through the port. The needle 220, has a lumen therethrough with an open proximal and distal end, therefor a vacuum device can be attached to provide a vacuum therethrough.
Parham is silent regarding an entire surface area of the end face comprises a textured surface having a plurality of raised surface features.
Horvath, in the same field of endeavor, teaches (fig. 7A-7B) of a needle beveled needle tip having a distal face made up of a end face (tip bevel, see [0054]) and a proximal face (flat bevel, see [0054]), the end surface (tip bevel) at least partially defining a port, the port having an elongated shape (see fig. 7A).
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 Parham to modify the distal face to have the proximal portion be a flat bevel creating a distal face with an end face and a proximal face as taught by Horvath, for the purpose of the needle tip having improved puncturing by minimizing damage and improving positioning (see Horvath [0054]).
Tano, in the same field of endeavor, teaches (fig. 1b-1c) a tube 3 having a beveled end with an end face (distal portion of bevel; see fig. 1b-1c), wherein the entire end face comprises a textured surface having a plurality of raised surface features (see fig. 1c and col. 3 ln. 26-38).
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 Parham to have the entire end face comprises a textured surface having a plurality of raised surface features as taught by Tano, for the purpose of being able to aid in removal of tissue while mitigating damage to surrounding healthy tissue (see Tano col. 3 ln. 26-38).
Regarding claim 2, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Parham further discloses (fig. 1-3) the tube 220 comprises a cylindrical morphology (see fig. 3).
Regarding claim 3, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 2. Parham further discloses (fig. 1-3) the port has an ellipsoid shape (see fig. 1).
Regarding claim 5, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Parham as modified teaches the end face is substantially planar (see Horvath fig. 7A).
Regarding claim 8, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Parham further discloses (fig. 1-3) the end face is disposed at an angle between about 10° and about 30° relative to a normal of the longitudinal axis (see [0035]).
Regarding claim 9, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 8. Parham further discloses (fig. 1-3) the face is disposed at an angle of 18° relative to a normal of the longitudinal axis (see [0035]).
Regarding claim 10, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Parham further discloses (fig. 1-3) the tube 220 is formed of a plastic or polymeric material (see [0023]).
Regarding claim 11, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Parham further discloses (fig. 1-3) the tube 220 is formed of, stainless steel, nitinol, or other metal alloy (see [0023]).
Regarding claim 12, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Parham further discloses (fig. 1-3) the tube comprises a distal portion formed of a plastic or polymeric material (coating of plastic; see [0023]) and a proximal portion formed of, stainless steel, nitinol, or other metal alloy (metal under plastic coating see [0023]).
Claims 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Parham (US 20160331397 A1) in view of Horvath et al. (US 20120123438 A1) Tano (US 5,921,998) and Grueebler et al. (US 10,987,119 B2).
Regarding claim 15 Parham discloses (fig. 1-3) a surgical probe for manipulating ocular tissues, comprising:
a handpiece configured to be held by a user (see fig. 1); and
a tube 220 defining a longitudinal axis (see fig. 3), the tube 220 comprising:
a proximal end coupled to the handpiece (see fig. 3); and
a distal end opposite the proximal end and comprising a distal tip (see fig. 3), wherein the distal tip is beveled (see fig. 3 and [0035]) and comprises an end face at least partially defining a port, the port having an elongated shape (see fig. 1);
wherein the tube 220 comprises a lumen therethrough (see [0028]-[0029] and fig. 3) configured to provide vacuum through the port. The language “configured to provide vacuum through the port” constitutes functional claim 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 Parham meets the structural limitations of the claim, and the device is capable of provide vacuum through the port. The needle 220, has a lumen therethrough with an open proximal and distal end, therefor a vacuum device can be attached to provide a vacuum therethrough.
Parham is silent regarding an entire surface area of the end face comprises a textured surface having a plurality of raised surface features.
Horvath, in the same field of endeavor, teaches (fig. 7A-7B) of a needle beveled needle tip having a distal face made up of a end face (tip bevel, see [0054]) and a proximal face (flat bevel, see [0054]), the end surface (tip bevel) at least partially defining a port, the port having an elongated shape (see fig. 7A).
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 Parham to modify the distal face to have the proximal portion be a flat bevel creating a distal face with an end face and a proximal face as taught by Horvath, for the purpose of the needle tip having improved puncturing by minimizing damage and improving positioning (see Horvath [0054]).
Tano, in the same field of endeavor, teaches (fig. 1b-1c) a tube 3 having a beveled end with an end face (distal portion of bevel; see fig. 1b-1c), wherein the entire end face comprises a textured surface having a plurality of raised surface features (see fig. 1c and col. 3 ln. 26-38).
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 Parham to have the entire end face comprises a textured surface having a plurality of raised surface features as taught by Tano, for the purpose of being able to aid in removal of tissue while mitigating damage to surrounding healthy tissue (see Tano col. 3 ln. 26-38).
Parham as modified is silent regarding the raised surface features are angled relative to an effective surface of the textured surface to facilitate grabbing of an ocular tissue when the probe is moved in a first direction and release of the ocular tissue when the probe is moved in a second direction.
However Grueebler, in the same field of endeavor, teaches (fig. 3-6) a textured surface 32 having a plurality of raised surface features 34 (see fig. 3-4 and col. 3 ln. 47-59), the raised surface features 34 are angled relative to an effective surface of the textured surface (see fig. 6 and see col. 4 ln. 9-33) to facilitate grabbing of an ocular tissue when the probe is moved in a first direction (see col. 3 ln. 47-59) and release of the ocular tissue when the probe is moved in a second direction. The language “to facilitate grabbing of an ocular tissue when the probe is moved in a first direction and release of the ocular tissue when the probe is moved in a second direction” constitutes functional claim 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 Grueebler meets the structural limitations of the claim, and the raised surface features are capable of grabbing of an ocular tissue when the probe is moved in a first direction and release of the ocular tissue when the probe is moved in a second direction. The angle of the microposts 34, creates increased friction to facilitate grasping in the direction opposite the angle and would allow release due to decreased friction in the opposite direction.
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 Parham as modified to have the raised surface features comprise nano-hooks; the raised surface features are angled relative to an effective surface of the textured surface to facilitate grabbing of an ocular tissue when the probe is moved in a first direction and release of the ocular tissue when the probe is moved in a second direction as taught by Grueebler, for the purpose of reducing the force needed to grasp tissue (see Grueebler col. 3 ln. 47-59).
Regarding claim 16, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 15. Parham further discloses (fig. 1-3) the tube 220 comprises a cylindrical morphology (see fig. 3) and the port has an ellipsoid shape (see fig. 1).
Regarding claim 17, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 15. Parham as modified teaches the end face is substantially planar (see Horvath fig. 7A).
Regarding claim 18, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 15. Parham further discloses (fig. 1-3) the end face is disposed at an angle between about 10° and about 30° relative to a normal of the longitudinal axis (see [0035]).
Regarding claim 19, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 18. Parham further discloses (fig. 1-3) the face is disposed at an angle of 18° relative to a normal of the longitudinal axis (see [0035]).
Regarding claim 20, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 15. Parham further discloses (fig. 1-3) the tube 220 is formed of a plastic or polymeric material (see [0023]).
Regarding claim 21, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 15. Parham further discloses (fig. 1-3) the tube 220 is formed of, stainless steel, nitinol, or other metal alloy (see [0023]).
Regarding claim 22, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 15. Parham further discloses (fig. 1-3) the tube comprises a distal portion formed of a plastic or polymeric material (coating of plastic; see [0023]) and a proximal portion formed of, stainless steel, nitinol, or other metal alloy (metal under plastic coating see [0023]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE H SCHWIKER whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 7:30 am-4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE H SCHWIKER/Primary Examiner, Art Unit 3771