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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/01/2026 has been entered.
This office action is responsive to the amendment filed on 03/16/2026. As directed by the amendment: claim 1 has been amended. Thus, claims 1-15 are presently pending in this application with claims 11-15 withdrawn.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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Schaller (US 20180092702 A1) in view of Hickingbotham (US 20080188877 A1).
Regarding claims 1-3 Schaller discloses (fig. 1-3C) an ophthalmic surgical instrument for peeling a retinal membrane, comprising:
a handle 130 (see fig. 1 and [0032]);
an outer tube 202 having a proximal end mounted to the handle 130 (see fig. 1 and [0033]) and a distal end (see fig. 2A and [0033]);
a first arm 204A at least partly housed within the outer tube 202 (see fig. 2A and [0035]) and including a first distal portion having a first pulling surface formed thereon (see annotated fig. 2C below);
a second arm 204B at least partly housed within the outer tube 202 (see fig. 2A and [0035]) and including a second distal portion having a second pulling surface (see annotated fig. 2C below);
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the first distal portion and the second distal portion are configured to deform in order to be withdrawn into the outer tube 202 (see [0035]);
the outer tube configured to change in relative positions to the first arm and the second arm (see [0035]);
wherein the first pulling surface and second pulling surface are configured such that (a) when the outer tube 202 is in a first position relative to the first arm 204A and the second arm 204B (position of fig. 2C), the first pulling surface and the second pulling surface are configured to flare outwardly from one another (see fig. 2C and [0035]) and can both be placed simultaneously in contact with the retinal membrane (see fig. 3A and [0039]-[0040]) and (b) when the outer tube 202 is in a second position relative to the first arm 204A and the second arm 204B, the first pulling surface and the second pulling surface are facing one another and pressed against one another (see fig. 2A), and
wherein the first pulling surface and the second pulling surface are configured to deform in order to at least partially conform to a curvature of the retinal membrane (see fig. 3A-3B and [0035]).
The language “the first pulling surface and the second pulling surface are configured to deform in order to at least partially conform to a curvature of the retinal membrane” 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 Schaller meets the structural limitations of the claim, and the first pulling surface and the second pulling surface are capable of deforming in order to at least partially conform to a curvature of the retinal membrane. The first and second pulling surfaces are deformable in a curved shape and thus are capable of deforming in a shape that at least partially conform to a curvature of the retinal membrane.
Schaller is silent regarding the first distal portion and the second distal portion each have a width greater than an inner diameter of the distal end of the outer tube.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Schaller to have the first distal portion and the second distal portion each have a width greater than an inner diameter of the distal end of the outer tube since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Schaller would not operate differently with the claimed width as it would still enable the distal portions to grasp tissue. Further, applicant places no criticality on the relative dimensions claimed, indicating simply that portions “may” expand to the claimed relative width (specification [0026]).
Schaller is silent regarding an actuator mounted to the handle and configured to change relative positions of the outer tube and the first arm and the second arm; the actuator is configured to move the outer tube from the first position to the second position responsive to movement of the actuator in a first direction; the actuator is configured to move the outer tube from the second position to the first position responsive to movement of the actuator in a second direction opposite the first direction.
However Hickingbotham, in the same filed of endeavor, teaches (fig. 2) a handle 20 (see fig. 2 and [0024]); an outer tube 40 with a proximal end mounted to the handle 20 (see fig. 2 and [0024]); an actuator 48 mounted to the handle 20 and configured to change relative positions of the outer tube 40 and a first arm and a second arm (see [0024] and fig. 2); the actuator 48 is configured to move the outer tube 40 from a first position to a second position responsive to movement of the actuator in a first direction (see [0024]); the actuator 48 is configured to move the outer tube 40 from the second position to the first position responsive to movement of the actuator 48 in a second direction opposite the first direction (see [0024]).
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 Schaller to have an actuator mounted to the handle and configured to change relative positions of the outer tube and the first arm and the second arm; the actuator is configured to move the outer tube from the first position to the second position responsive to movement of the actuator in a first direction; the actuator is configured to move the outer tube from the second position to the first position responsive to movement of the actuator in a second direction opposite the first direction as taught by Hickingbotham, for the purpose of the use being able to easily move the outer tube to open and close the arms (see Hickingbotham [0024]).
Regarding claim 4, Schaller as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Schaller further discloses (fig. 1-3C) the first pulling surface and the second pulling surface are configured to flare outwardly from an outer diameter of the outer tube 202 when extended from the distal end of the outer tube 202 (see fig. 2A and 2C).
Regarding claim 5, Schaller as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Schaller as modified fails to expressly disclose the first pulling surface and the second pulling surface are configured to flare outwardly to at least twice an outer diameter of the outer tube when extended from the distal end of the outer tube. Schaller sets forth that flare outer diameter is a result effective variable, wherein the larger the flare outer diameter (D1 in fig. 3A and D3 in fig. 5A), the more of the tissue that is grasped (see [0039]-[0040] and [0046]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the first pulling surface and the second pulling surface are configured to flare outwardly to at least twice an outer diameter of the outer tube when extended from the distal end of the outer tube, for the purpose of being able to grasp more tissue, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, Schaller as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Schaller further discloses (fig. 1-3C) the first pulling surface and the second pulling surface are configured to recoil outwardly to an angle appearing to be close to 45 degrees relative to an axis of symmetry of the outer tube (see annotated fig. 2C below).
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Schaller as modified fails expressly teach the angle is at least 45 degrees.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have the angle be at least 45 degrees because Applicant places no criticality on the claimed range indicating that it “may” be withing the claimed range (see [0023]). One of ordinary skill in the art, furthermore, would have expected Schaller as modified’s device, and applicant’s invention, to perform equally well with either the angle taught by Schaller as modified or the claimed at least 45 degree angle because both angles would perform the same function of grasping.
Therefore, it would have been prima facie obvious to modify Schaller as modified to obtain the invention as specified in claim 6 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Schaller as modified.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Schaller in view of Hickingbotham as applied to claims 6 and 1 above, and further in view of Vezzu et al. (US 20150238355 A1).
Regarding claim 7, Schaller as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Schaller further discloses (fig. 1-3C) that the first and second arm are self deforming/expanding (see [0035] and can be formed of a variety of materials including metal (see [0042]). Schaller fails to expressly disclose the first arm and the second arm each comprise nitinol.
However Vezzu, in the same field of endeavor, teaches (fig. 1-4, 6, and 17-18) a first arm 13 and a second arm 14 each comprise nitinol ([0040] discloses that the arms can be the same material as the elongate body 11 and [0026] discloses that the elongate body can be nitinol).
Therefore, the substitution of one known material (nitinol as taught in Vezzu) for another (metal as taught in Schaller) would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the substitution of the nitinol as taught in Vezzu would have yielded predictable results, namely, arms in Schaller as modified that would expand upon retraction of the outer tube. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding claim 8-9, Schaller as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Schaller as modified is silent regarding a first pulling surface includes first barbs configured to grip the retinal membrane and the second pulling surface includes second barbs configured to grip the retinal membrane; the first barbs and the second barbs have lengths between 1 pm (micrometers) and 7.5 pm.
However Vezzu further teaches (fig. 1-4, 6, and 17-18) a first pulling surface 27 includes first barbs 66 configured to grip the retinal membrane and the second pulling surface 27 includes second barbs 66 configured to grip the retinal membrane (see [0031]-[0032] and [0034]); the first barbs 66 and the second barbs 66 have lengths 67 between 1 µm and 7.5 µm (see [0034]).
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 Schaller as modified to have a first pulling surface includes first barbs configured to grip the retinal membrane and the second pulling surface includes second barbs configured to grip the retinal membrane; the first barbs and the second barbs have lengths between 1 pm (micrometers) and 7.5 pm as taught by Vezzu, for the purpose of being able to improve the grasping of the tissue (see Vezzu [0034]).
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over Schaller in view of Hickingbotham and Vezzu as applied to claim 8 above, and further in view of Taguchi et al. (US 4,909,789).
Regarding claim 10, Schaller as modified discloses the claimed invention substantially as claimed, as set forth above for claim 8. Schaller as modified further teaches the first barbs 66 and the second barbs 66 both point toward the first/second arm when the outer tube is in the second position (see Vezzu fig. 4).
Schaller as modified is silent regarding the first barbs and the second barbs both point toward the outer tube when the outer tube is in the second position.
Taguchi, in the analogous art of grasping devices, teaches (fig. 1-2) an outer tube and first and second arms, wherein the first and second arms are received fully in the outer tube (see fig. 2).
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 Schaller as modified to have the first and second arms are received fully in the outer tube as taught by Taguchi, for the purpose of protecting the arms during advancement/retraction.
Schaller as modified teaches the first barbs and the second barbs both point toward the outer tube when the outer tube is in the second position. Schaller as modified (Vezzu) teaches the first barbs 66 and the second barbs 66 both point toward the first/second arm when the outer tube is in the second position and a further modification is made to have the outer tube cover the first and second arms.
Response to Arguments
Applicant’s arguments, see pg. 6-7, filed 03/16/2026, with respect to the rejection(s) of claim(s) 1 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 Schaller and Hickingbotham as obvious in view of the teachings of Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984).
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
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