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 .
Claim Rejections - 35 USC § 102
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 1-3 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hickingbotham et al. (US 2013/0178822).
Regarding claim 1, Hickingbotham et al. disclose an ophthalmic surgical instrument (Abstract) for delaminating a retinal membrane (having a small spatula shape, Figure 11a, similar to Applicant’s and capable of being placed on an eye, it is considered to be capable of this function; tools for delivering substances and/or implants to an eye would be reasonably pertinent to one solving the problem addressed by Applicant), comprising: a handpiece (4); an actuator (3) mounted on the handpiece; an outer tube (2) having a proximal end mounted to the handpiece; a dissection spatula (1) extendable outwardly relative to a distal end of the outer tube responsive to movement of the actuator (¶[0130]; noting that in view of claim 2 and Applicant’s pgpub ¶[0016], movement of tube 2 to uncover the spatula is readable by “extendable outwardly relative to a distal end of the outer tube”; however, Hickingbotham et al. also disclose the actuator distally extending the spatula relative to the outer tube - ¶[0130], Figure 7), the dissection spatula defining a channel (within each member 31; ¶[0212]) connected to an opening at a distal edge of the dissection spatula (Figure 11a); and a dispensing system in fluid communication with the channel (¶[0212], [0238]).
Regarding claim 2, the actuator is configured to move the outer tube relative to the handpiece (¶[0130]).
Regarding claim 3, the dissection spatula is wider than an inner diameter of the outer tube (evident from Figure 5b).
Regarding claim 5, a hollow rod (30; ¶[0212]) connects the dissection spatula to the handpiece, the hollow rod being in fluid communication with the channel and the dispensing system (¶[0212]).
Regarding claim 6, the dispensing system includes one of a button (Table 1) mounted to the handpiece and a footswitch configured to cause fluid to flow through the channel.
Regarding claim 7, the dispensing system includes a reservoir (27) within the handpiece (Figure 4).
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 non-obviousness.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hickingbotham et al. (US 2013/0178822) in view of Nishida et al. (US 2017/0079838).
Regarding claims 8 and 9, Hickingbotham et al. disclose that the outer tube defines a longitudinal direction that is collinear with an axis of symmetry of the outer tube (Figure 4) but fail to disclose that the spatula is at least 2 times wider than a thickness as claimed.
Nishida et al. discloses a similar spatula (50) also for delivering substances and/or objects to an eye (¶[0002]-[0006]) having a width at least 2 times wider than a thickness (¶[0105]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the spatula of Hickingbotham et al. with the width to thickness ratio as taught by Nishida et al. as a suitable width to thickness ratio disclosed for a very similar spatula with a reasonable expectation of success when applied to Hickingbotham et al.
Regarding claim 9, the dissection spatula is curved in a plane parallel to the longitudinal direction and a vertical direction that is perpendicular to the longitudinal direction and the transverse direction (Figure 9).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hickingbotham et al. (US 2013/0178822) in view of Pollack et al. (US 2022/0346876).
Regarding claim 4, Hickingbotham et al. fail to disclose that the dissection spatula comprises nitinol.
Pollack et al. teach that nitinol is a suitable material for constructing a similar spatula (2106; ¶[0309]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and in view of Pollack et al. to have made the spatula of Hickingbotham et al. from nitinol since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant’s arguments with respect to the pending claims 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
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 Thomas McEvoy whose telephone number is (571) 270-5034 and direct fax number is (571) 270-6034. The examiner can normally be reached on Monday-Friday, 9:00 am – 6:00 pm.
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/THOMAS MCEVOY/Primary Examiner, Art Unit 3771
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