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 .
Election/Restrictions
Claims 5-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/02/2026. Claims 1-4 and 12 are thereby being examined in this office action.
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, 2 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Price (US 10806630).
Regarding claim 1, Price discloses a surgical instrument for fluid injection (10, 700), the surgical instrument comprising: a handpiece configured for grasping by a user (Fig. 1: body 20), the handpiece comprising: a first lumen disposed therein (Fig. 3B: lumen 104 of needle 100), the first lumen configured to receive a fluid cartridge (Fig. 1: 100 couples to supply tube 40 that connects to cartridge 590 of 500, see Fig. 9C to supply therapeutic fluid; col. 8, lines 28-45; also 410 fluid supply connected to supply tubes) comprising one or more injection fluids (341; col. 8, lines 31-33); a fluidic drive system disposed within the first lumen the fluidic drive system for driving a flow of the one or more injection fluids (Fig. 6: fluidic drive 600; col. 13, lines 51-63) from the fluid cartridge into a cannula (Fig. 1: 50); the cannula coupled to the handpiece and configured to be introduced into an eye (Figs. 1 and 4F: 50 coupled to 20, and introduced into eye), the cannula comprising: a second lumen extending therethrough (Fig. 3A: lumen 64 of cannula 50) for receiving the one or more injection fluids flowed from the fluid cartridge (Fig. 1: 64 couples to supply tube 30 that connects to cartridge 590 of 500 and 410, see Figs. 6 and 9C, to supply BSS fluid; col. 8, lines 28-45); and a needle movably disposed within the second lumen (Fig. 3B: needle 100 within lumen 64), the needle configured to extend from and retract into the second lumen at a distal end of the cannula (Figs. 3A-3B).
Regarding claim 2, Price discloses the system of claim 1, as described above, wherein the fluidic drive system comprises an electromechanical actuator (Fig. 19; col. 19, lines 16-57, electromechanical actuator/driver with rotary cam) coupled to a piston (col. 21, lines 32-36), the electromechanical actuator configured to translate the piston within the first lumen, the piston configured to engage with the fluid cartridge for driving the flow of the one or more injection fluids therefrom (col. 21, lines 32-36; Figs. 6 and 13: fluid line for fluid drive through 700 and 600, connected to 500 where cartridge 590 is stored to drive the therapeutic fluid via the piston in device 700).
Regarding claim 12, Price discloses the system of claim 1, as described above, wherein the fluid cartridge comprises an unmixed treatment solution and non-treatment solution for injection (cartridge 590 contains therapeutic fluid, and 410 contains BSS), and wherein driving the flow of the one or more injection fluids from the fluid cartridge into a cannula comprises mixing the treatment solution and non-treatment solution (col. 12, lines 34-36).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Price (US 10806630) in view of Chen (US 20200179102).
Regarding claim 3, Price discloses the system of claim 2, as described above, but fails to explicitly disclose that the electromechanical actuator comprises an electromechanical linear/rotary stepper motor, instead merely disclosing a rotary cam member.
Chen teaches an analogous delivery device for the eye, wherein the electromechanical actuator comprises an electromechanical linear or rotary stepper motor (Fig. 2: motor 202 of actuator 206; para. [0023] and para. [0025]). It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electromechanical actuation unit of the Price device by incorporating the stepper motor, taught by Chen, in order to precisely convert the rotary motion into linear motion, for the small and precise amounts required for the eye.
Regarding claim 4, Price in view of Chen teaches the system of claim 3, as described above, wherein the electromechanical actuator comprises a rotary screw motor (Chen: para. [0025]) and the piston comprises a rotary lead screw (Chen: para. [0025] and Price: col. 21, lines 32-36), wherein rotation of the rotary lead screw by the rotary screw motor causes the rotary lead screw to translate linearly within the first lumen (Price: col. 21, lines 32-36).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Grygus (US 20220047420) and Price (US 10064752).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATERINA ANNA WITTLIFF whose telephone number is (703)756-4772. The examiner can normally be reached M-Th: 9-7ET.
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, MICHAEL TSAI can be reached at 571-270-5246. 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.
/K.A.W./Examiner, Art Unit 3783
/NATHAN R PRICE/Primary Examiner, Art Unit 3783
Prosecution Insights