DETAILED ACTION
This is a final rejection in response to amendments filed 6/8/26. Claims 1-11 are currently pending.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boukhny et al. (US5645530) in view of Peartree et al. (US 2004/0138702).
Regarding independent claim 1 and 8 and dependent claim 2, Boukhny teaches an ophthalmic surgical instrument comprising: a needle 16 for insertion into an incision in an eye (col 1, ll. 7-20); a generator of ultrasonic energy attached to the needle for supplying the ultrasonic energy to the needle to emulsify tissue within the eye (col 1, ll. 7-20); and a sleeve 12 surrounding at least a portion of the needle, the sleeve including a distal insertion portion for supplying infusion fluid into the eye and a proximal compressible portion 12 for sealing the incision in the eye by pushing against an exterior surface of the eye at the incision (col. 1, ll. 37-39, col. 2, ll. 49-66).
Boukhny is silent to a proximal compressible portion configured to remain external to the eye.
Peartree teaches it was known to have a compressible member 22 that remains entirely external to the body and seals an incision purely by being compressed against an outer surface of the skin [0025,0030].
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Boukhny to have the compressible portion with external sealing as Peartree teaches rigid anchoring structures alone are insufficient to prevent leakage [0005], and further teaches that a compressible pad can maintain constant sealing pressure against tissue even as the inserted shaft is manipulated [0037].
Boukhny further teaches wherein a diameter of the insertion portion 18 of the sleeve is smaller than a diameter of the compressible portion of the sleeve (see fig. 1). The second diameter would have to be larger.
Regarding dependent claim 3 and 10, Boukhny in view of Peartree teaches the invention as claimed and discussed. Boukhny further teaches wherein the compressible portion of the sleeve includes a flange 20,21 at a distal end of the compressible portion to enhance the seal at the incision.
Regarding dependent claim 4, Boukhny in view of Peartree teaches the invention as claimed and discussed. Boukhny further teaches wherein the first diameter of the sleeve's insertion portion is sized to be inserted through the incision and does not seal the incision of the eye (see claim 1).
Regarding dependent claim 5 and 9, Boukhny in view of Peartree teaches the invention as claimed and discussed. Boukhny further teaches wherein the insertion portion of the sleeve includes at least one infusion port for supplying the infusion fluid into the eye (see claim 8, and col. 2, ll. 49-60).
Regarding dependent claim 6 and 11, Boukhny in view of Peartree teaches the invention as claimed and discussed. Boukhny as modified further teaches wherein the second diameter of the compressible portion is sized to be large enough not to pass through the incision (the insertion portion necessarily has a smaller diameter than the enlarged compressible sealing structure of Peartree).
Regarding dependent claim 7, Boukhny in view of Peartree teaches the invention as claimed and discussed. Boukhny further teaches wherein the sleeve is configured to allow the needle to move within the eye independent of the sleeve (col. 1, ll. 24-48).
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 CRAIG SANG KIM whose telephone number is (571)270-1418. The examiner can normally be reached 7:00 AM - 3:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Devon Kramer can be reached at 571-272-7118. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CRAIG KIM/
Primary Examiner
Art Unit 3741
Prosecution Insights