The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,617,560. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlapping subject matter of U.S. Patent No. 10,617,560 regarding an ophthalmologic instrument reads on the subject matter of the instant application regarding an ophthalmologic instrument.
Instant Application
U.S. Patent No. 10,617,560
2. An ophthalmologic instrument, comprising:
a base unit having an outer surface lateral to a longitudinal axis;
a small diameter instrument extending from the base unit, the small diameter instrument having a length;
a support frame slidably coupled to the small diameter instrument along the length;
an adjustment mechanism for the support frame, to provide two or more different levels of lateral support to the small diameter instrument; and
wherein the support frame includes two or more support members spaced laterally apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis.
1. An ophthalmologic instrument, comprising:
a base unit having an outer surface lateral to a longitudinal axis, with no protrusions or controls on the outer surface lateral to the longitudinal axis of the base unit;
a small diameter instrument fixed in relation to the base unit, and extending from the base unit, the small diameter instrument having a length;
one or more supply lines routed through an interior of the base unit to the small diameter instrument;
a support frame slidably coupled to the small diameter instrument along the length;
an adjustment mechanism for the support frame, to provide two or more different levels of lateral support to the small diameter instrument, wherein the adjustment mechanism is located on a surface other than the outer surface lateral to the longitudinal axis of the base unit; and
wherein the support frame is spaced apart from the one or more supply lines, and contained within the outer surface lateral to the longitudinal axis.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 10,945,882. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlapping subject matter of U.S. Patent No. 10,945,882 regarding an ophthalmologic instrument reads on the subject matter of the instant application regarding an ophthalmologic instrument.
Instant Application
U.S. Patent No. 10,945,882
2. An ophthalmologic instrument, comprising:
a base unit having an outer surface lateral to a longitudinal axis;
a small diameter instrument extending from the base unit, the small diameter instrument having a length;
a support frame slidably coupled to the small diameter instrument along the length;
an adjustment mechanism for the support frame, to provide two or more different levels of lateral support to the small diameter instrument; and
wherein the support frame includes two or more support members spaced laterally apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis.
1. An ophthalmologic instrument, comprising:
a base unit having an outer surface lateral to a longitudinal axis, with no protrusions or controls on the outer surface lateral to the longitudinal axis of the base unit;
a small diameter instrument fixed in relation to the base unit, and extending from the base unit, the small diameter instrument having a length;
a support frame slidably coupled to the small diameter instrument along the length;
an adjustment mechanism for the support frame, to provide two or more different levels of lateral support to the small diameter instrument, wherein the adjustment mechanism is located on a surface other than the outer surface lateral to the longitudinal axis of the base unit; and
wherein the support frame is spaced laterally apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis.
2. An ophthalmologic instrument, comprising:
a base unit having an outer surface lateral to a longitudinal axis;
a small diameter instrument extending from the base unit, the small diameter instrument having a length;
a support frame slidably coupled to the small diameter instrument along the length;
an adjustment mechanism for the support frame, to provide two or more different levels of lateral support to the small diameter instrument; and
wherein the support frame includes two or more support members spaced laterally apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis.
15. An ophthalmologic instrument, comprising:
a base unit having an outer surface lateral to a longitudinal axis, with no protrusions or controls on the outer surface lateral to the longitudinal axis of the base unit;
a small diameter instrument fixed in relation to the base unit, and extending from the base unit, the small diameter instrument having a length;
a support frame slidably coupled to the small diameter instrument along the length;
an adjustment mechanism for the support frame, including a plurality of rods that extend both proximally and distally through the base unit, to provide two or more different levels of lateral support to the small diameter instrument, wherein the adjustment mechanism is located on a surface other than the outer surface lateral to the longitudinal axis of the base unit; and
wherein the support frame is spaced apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,980,572. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlapping subject matter of U.S. Patent No. 11,980,572 regarding an ophthalmologic instrument reads on the subject matter of the instant application regarding an ophthalmologic instrument.
Instant Application
U.S. Patent No. 10,945,882
2. An ophthalmologic instrument, comprising:
a base unit having an outer surface lateral to a longitudinal axis;
a small diameter instrument extending from the base unit, the small diameter instrument having a length;
a support frame slidably coupled to the small diameter instrument along the length;
an adjustment mechanism for the support frame, to provide two or more different levels of lateral support to the small diameter instrument; and
wherein the support frame includes two or more support members spaced laterally apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis.
1. An ophthalmologic instrument, comprising:
a base unit having an outer surface lateral to a longitudinal axis;
a small diameter instrument extending from the base unit, the small diameter instrument having a length;
a support frame slidably coupled to the small diameter instrument along the length;
an adjustment mechanism for the support frame, to provide two or more different levels of lateral support to the small diameter instrument;
wherein the support frame is spaced laterally apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis; and wherein the base unit has no protrusions or controls on the outer surface lateral to the longitudinal axis of the base unit.
2. An ophthalmologic instrument, comprising:
a base unit having an outer surface lateral to a longitudinal axis;
a small diameter instrument extending from the base unit, the small diameter instrument having a length;
a support frame slidably coupled to the small diameter instrument along the length;
an adjustment mechanism for the support frame, to provide two or more different levels of lateral support to the small diameter instrument; and
wherein the support frame includes two or more support members spaced laterally apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis.
13. An ophthalmologic instrument, comprising:
a base unit having an outer surface lateral to a longitudinal axis, with no protrusions or controls on the outer surface lateral to the longitudinal axis of the base unit;
a small diameter instrument extending from the base unit, the small diameter instrument having a length;
a support frame slidably coupled to the small diameter instrument along the length;
an adjustment mechanism for the support frame, to provide two or more different levels of lateral support to the small diameter instrument, wherein the adjustment mechanism is located on a, surface other than the outer surface lateral to the longitudinal axis of the base unit; and
wherein the support frame is spaced apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “adjustment mechanism” in claims 2 and 16 defined as capably varying a level of support of a small diameter instrument in [007] and providing levels of lateral support comprising a scale and/or rods in [0010]-[0013] and/or positioning system in [0038] of the Specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 2, 3, 5, and 7-21 are rejected under 35 U.S.C. 102(b) as being anticipated by Ryan (U.S. Patent Application Publication 2005/0033309).
As to Claim 2, Ryan discloses an ophthalmologic instrument (100) in Fig. 1, comprising:
a base unit (130) in [0015] having an outer surface lateral to a longitudinal axis;
a small diameter instrument (110) in [0012] extending from the base unit, the small diameter instrument having a length;
a support frame (124) in [0015] slidably coupled as described in [0013]-[0014] to the small diameter instrument along the length;
an adjustment mechanism (126, 132) in [0015] for the support frame, to provide two or more different levels of lateral support to the small diameter instrument (the adjustment mechanism moveable to two or more positions); and
wherein the support frame includes two or more support members spaced laterally apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis (see Figures 1 and 2 and in [0012]-[0013], [0016]-[0017], and [0020] to control stiffness as described in [0016]).
As to Claim 3, Ryan discloses the ophthalmologic instrument of claim 2, wherein the support frame includes three equally spaced support members (122) in [0015].
As to Claim 5, Ryan discloses the ophthalmologic instrument of claim 2, wherein the adjustment mechanism includes two or more rods (122) in [0012] and [0015] that slide within holes in the base unit as described in [0015].
As to Claim 7, Ryan discloses the ophthalmologic instrument of claim 2, wherein the small diameter instrument includes a fiber optic instrument in [0012].
As to Claim 8, Ryan discloses the ophthalmologic instrument of claim 2, wherein the small diameter instrument includes an infusion cannula in [0012].
As to Claim 9, Ryan discloses the ophthalmologic instrument of claim 2, wherein the small diameter instrument includes a cutting tool in [0012].
As to Claim 10, Ryan discloses the ophthalmologic instrument of claim 2, wherein the small diameter instrument includes a forceps in [0012].
As to Claim 11, Ryan discloses the ophthalmologic instrument of claim 2, wherein the small diameter instrument includes a probe in [0012].
As to Claim 12, Ryan discloses the ophthalmologic instrument of claim 2, wherein the support frame includes a cylinder (124) in [0015] that fits around the small diameter instrument as shown in Fig. 1.
As to Claim 13, Ryan discloses the ophthalmologic instrument of claim 2, wherein the small diameter instrument is approximately 23 gauge or smaller in diameter in [0015].
As to Claim 14, Ryan discloses the ophthalmologic instrument of claim 2, wherein the small diameter instrument is approximately 25 gauge in diameter in [0013].
As to Claim 15, Ryan discloses the ophthalmologic instrument of claim 2, wherein the small diameter instrument is approximately 27 gauge in diameter in [0013].
As to Claim 16, Ryan discloses an ophthalmologic instrument (100) in Fig. 1, comprising:
a base unit (130) in [0015] having an outer surface lateral to a longitudinal axis;
a small diameter instrument (110) in [0012] extending from the base unit, the small diameter instrument having a length;
a support frame (124) in [0015] slidably coupled as described in [0013]-[0014] to the small diameter instrument along the length;
an adjustment mechanism (126, 132) in [0015] for the support frame, to provide two or more different levels of lateral support to the small diameter instrument (the adjustment mechanism moveable to two or more positions);
wherein the support frame is spaced laterally apart from the small diameter instrument, and contained within the outer surface lateral to the longitudinal axis (see Figures 1 and 2 and in [0012]-[0013], [0016]-[0017], and [0020] to control stiffness as described in [0016]); and
a positioning system (120) in [0012] located between the support frame and the base unit, wherein the positioning system is configured to provide tactile feedback of adjustments to a user (during movement).
As to Claim 17, Ryan discloses the ophthalmologic instrument of claim 16, wherein the adjustment mechanism includes two or more rods (122) in [0012] and [0015] that slide within holes in the base unit as described in [0015].
As to Claim 18, Ryan discloses the ophthalmologic instrument of claim 17, wherein the adjustment mechanism includes a scale on a side of a rod to indicate the different levels of lateral support.
As to Claim 19, Ryan discloses the ophthalmologic instrument of claim 16, wherein the small diameter instrument is approximately 23 gauge or smaller in diameter in [0015].
As to Claim 20, Ryan discloses the ophthalmologic instrument of claim 16, wherein the small diameter instrument is approximately 25 gauge in diameter in [0013].
As to Claim 21, Ryan discloses the ophthalmologic instrument of claim 16, wherein the small diameter instrument is approximately 27 gauge in diameter in [0013].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over Ryan and in further views of Scheller et al. (U.S. Patent 6,575,989, hereinafter “Scheller”) and Yoon (U.S. Patent 5,632,717).
As to Claim 4, Ryan discloses the ophthalmologic instrument of claim 2. While Ryan’s base unit does not have any protrusions “on” any lateral surface, knob (126) does protrude “from” the lateral surface as being attached to the support frame (124) located underneath the lateral surface. Knob (126) is supported in the channel (132) as shown in Fig. 1, and therefore not “on” any lateral surface and is located on a surface other than the continuous lateral gripping surface as discussed above. Knob (126) is also noted to be the only protrusion. Scheller teaches that a sliding adjustment mechanism (85) in 9/10 and Figs. 4A-5B can be made flush with an outer circumference of handle (13) in 9/17 with continuous lateral gripping surface (83) in 9/4 wherein the handle has no protrusions on any lateral surface beyond the outer circumference of the handle. It would have been obvious to one of ordinary skill in the art at the time of invention that the knob of Ryan can be provided flush in a channel as taught by Scheller as such a modification would reduce the profile of the knob and reduce the chances of inadvertent actuation of the knob as it would be less likely to catch on clothing articles and unintentional hand movements in close proximity. Disposition of the knob (126) of Ryan within and flush with the groove locates the knob on a surface (surfaces of groove) other than the continuous lateral gripping surface.
In order to expedite prosecution, Yoon teaches a base unit (36) in 4/10 and Figs. 1-3 and 9-11 having a continuous lateral gripping surface (32, 34) in 4/2-3, with no protrusions or controls on any lateral surface of the base unit with a small diameter instrument (60) in 4/37 and Fig. 2 fixed in relation to the base unit, and extending from the base unit in 4/35-41, the small diameter instrument having a length; one or more supply lines (58) in 4/36, (50) in 4/29-30 shown in Fig. 2, shown in Figs. 1 and 10, and (94, 96) in 5/16 shown in Figs. 9-10 routed through an interior of the base unit to the small diameter instrument. It would have been obvious to one of ordinary skill in the art that one or more supply lines would be necessarily provided in the base unit of Ryan and the base unit of Yoon are equivalent structures, wherein a continuous lateral gripping surface can be additionally provided as taught by Yoon, and wherein normal operation of the small diameter instrument in 4/35-41 as well as viewing and passage of fluids would necessarily include provisions in the base unit in the form of one or more supply lines as taught by Yoon in 6/18-25.
Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ryan and in further views of Fritch et al. (U.S. Patent 4,607,622, hereinafter “Fritch”).
As to Claim 6, Ryan discloses the ophthalmologic instrument of claim 2, wherein the adjustment mechanism includes a scale “stops” in [0016] on a side of a rod to indicate the different levels of lateral support. Fritch teaches visible markings as a scale in 8/20-27 and Fig. 6. It would have been obvious to a person of ordinary skill in the art at the time of invention to provide the scale of Ryan with visible markings as taught by Fritch in order to improve determination of penetration depth of the stops disclosed by Ryan in view of Fritch. The inclusion of visible markings would not have been beyond the level of ordinary skill in the art or unpredictable to a person of ordinary skill in the art to fulfill the same goal with predictable results. Such a modification is the mere application of a known technique to a piece of prior art ready for the improvement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the enclosed 892 form. 8287466 is cited to show a similar support frame. 4799496 is cited to show a similar base unit without lateral protrusions in Figs. 1 and 3. The prior art should be considered to define the claims over the art of record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM B CHOU whose telephone number is (571) 270-3367. The examiner can normally be reached on M-F 9 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached on (571) 270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM CHOU/
Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795