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 on 05/11/2026. As directed by the amendment: claims 1, 9, 15, and 19 have been amended, claims 4, and 13-14 have been cancelled and claim 23 had been added. Thus, claims 1-3, 5-12, and 15-23 are presently pending in this application with claims 6 and 7 withdrawn.
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, 8-12, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Parham (US 20160331397 A1) in view of Morlet (US 20110208114 A1) and Grueebler et al. (US 20180103972 A1).
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 surface features formed into the end face.
However Morlet, in the same filed of endeavor, teaches (fig. 1a) a tube 10 having a beveled end 12 with an end face 15 (see fig. 1a and [0045]), wherein the entire end face 18 comprises a textured surface (see [0045] and [0015]).
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 as taught by Morlet, for the purpose of creating a serrated edge to assist in cutting through tissue (see Morlet [0015]).
Parham as modified is silent regarding the textured surface having a plurality of surface features formed into the end face.
However Grueebler, in the same filed of endeavor, teaches a textured surface can be formed having a plurality of surface features formed into the end face (see [0021] and [0038]).
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 textured surface having a plurality of surface features formed into the end face as taught by Grueebler, for the purpose of increasing coefficient of friction and reducing normal force needed to engage the tissue (see Grueebler [0019]).
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 Morlet fig. 1A).
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]).
Regarding claim 23, Parham as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Parham as modified teaches the plurality of surface features are formed by application of laser energy to the end face (see Grueebler [0021]).
Claims 15-22 are rejected under 35 U.S.C. 103 as being unpatentable over Parham (US 20160331397 A1) in view of Morlet (US 20110208114 A1) 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 surface features formed into the end face.
However Morlet, in the same filed of endeavor, teaches (fig. 1a) a tube 10 having a beveled end 12 with an end face 15 (see fig. 1a and [0045]), wherein the entire end face 18 comprises a textured surface (see [0045] and [0015]).
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 as taught by Morlet, for the purpose of creating a serrated edge to assist in cutting through tissue (see Morlet [0015]).
Parham as modified is silent regarding the textured surface having a plurality of surface features formed into the end face.
However Grueebler, in the same filed of endeavor, teaches a textured surface can be formed having a plurality of surface features formed into the end face (see col. 7 ln. 16-29).
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 textured surface having a plurality of surface features formed into the end face as taught by Grueebler, for the purpose of increasing coefficient of friction and reducing normal force needed to engage the tissue (see Grueebler col. 3 ln. 27-46).
Parham is further silent regarding the 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 surface features 34 (see fig. 3-4 and col. 3 ln. 47-59) that can be formed into the end face (see col. 7 ln. 16-29), 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 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]).
Response to Arguments
Applicant’s arguments, see pg. 5, filed 05/11/2026, with respect to the rejection of claims 9 and 19 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of claims 9 and 19 under 35 U.S.C. 112(b) has been withdrawn.
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.
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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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
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