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 .
Response to Arguments
Applicant’s arguments filed on 1/06/2026 have been fully considered but are moot in view of a new grounds of rejection.
Claim Objections
Claim 8 is objected to because of the following informalities. Appropriate correction is required.
In re claim 8, the limitation “wherein a proximal surface of the spatula is patterned to redirect the laser light from the optical fiber” should read “wherein a proximal surface of the spatula is patterned to redirect the treatment laser light from the optical fiber”.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In re claim 11, the limitation “wherein the laser light further comprises a non-treatment laser light” appears to contradict claim 1, which requires the laser light to comprise a “treatment laser light”. Given that it is impossible for a laser light to be both “a non-treatment laser light” and “a treatment light”, Examiner believes Applicant is trying to claim a laser source that is configured to emit either a “non-treatment laser light” or “a treatment laser light”. Examiner notes however, that this feature is neither recited in nor required by claim 1. For examination purposes, based on claim 1, the limitation “wherein the laser light further comprises a non-treatment laser light”, will be interpreted as requiring the laser light to be a treatment laser light.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5, 11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by L’Esperance Jr. (US 5,257,988).
In re claim 1, L’Esperance Jr. discloses a surgical instrument (FIG. 1, FIG. 2: 10) for membrane removal (abstract: “remove cataractous tissue”), the surgical instrument comprising:
a cannula (32) comprising a longitudinal axis (FIG. 2: imaginary line running along tubular member 35);
a spatula (13; col. 2, lines 48-52) formed at a distal end (left most end surgical instrument) of the cannula,
the spatula extending from the distal end of the cannula at a non-zero angle relative to the longitudinal axis of the cannula (FIG. 2),
the spatula at least partially defining an aperture (12) at the distal end of the cannula (FIG. 2); and
an optical fiber (16) extending along the cannula (FIG. 1), the optical fiber configured to direct laser light (17; FIG. 1) toward a surface (inside surface of 40 near 11) of the spatula (col. 3, lines 40-46)
wherein the laser light comprises a treatment laser light (col. 5, lines 6-9: “neodymium-YAG or other laser”) for severing ocular tissues (70; col. 5, lines 1-9: “process to sever chunk 70 of cataract tissue”);
wherein the spatula is configured to mechanically lift and separate a membrane from a target surgical site (col. 2, lines 48-52: “excavated and scooped”) and
wherein the spatula is configured to provide a backstop for the treatment laser light (FIG. 2) such that the treatment laser light strikes the lifted/separated membrane without striking the target surgical site on an opposing side of the spatula (col. 5, lines 1-9; col. 6, lines 61- col. 7, line 2).
In re claim 3, L’Esperance Jr. discloses wherein an outer edge of the spatula has a curved geometry (FIG. 2).
In re claim 5, L’Esperance Jr. discloses wherein the aperture is sized to allow for aspiration of material (70) from a membrane into an interior (39) of the cannula (col. 4, lines 65-col. 5, lines 6; col. 5, lines 11-15).
In re claim 11, regarding the limitations “wherein the laser light further comprises a non-treatment laser light” see above (section Claim Rejections 35 USC § 112 and In re claim 1).
In re claim 13, L’Esperance Jr. discloses wherein the optical fiber extends along an interior of the cannula (FIG. 1).
In re claim 14, L’Esperance Jr. discloses wherein the optical fiber extends along at least a portion of an exterior of the cannula (FIG. 2: optical fiber extends outside of cannula from 33 to region indicated by “FROM 15”).
In re claim 15, L’Esperance Jr. discloses further comprising a vacuum source (FIG. 1: “VAC.”) in fluid communication with the cannula (FIG. 1) to facilitate aspiration of material through the aperture and an interior (39) of the cannula (col. 5, lines 11-15).
Claim Rejections - 35 USC § 102/103
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.
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
Claim 2 is rejected under 35 U.S.C. 102/103 as being unpatentable over L’Esperance Jr. (US 5,257,988).
In re claim 2, L’Esperance Jr. discloses wherein the non-zero angle of the spatula is between thirty and eighty degrees (FIG. 2).
As shown in FIG. 2, the non-zero angle of the spatula appears to be between thirty and eighty degrees. However, in so far as L’Esperance Jr. does not explicitly disclose a value of the non-zero angle, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the non-zero angle of the spatula between thirty and eighty degrees, 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.
Claim 6 is rejected under 35 U.S.C. 102/103 as being unpatentable over L’Esperance, Jr. (US 5,257,988) [in view of Hobart et al. (US 6,743, 221)].
In re claim 6, L’Esperance Jr discloses wherein the cannula is at least partially flexible (apparent as any material is “at least partially flexible”).
Examiner asserts that because any material is at least partially flexible, L’Esperance discloses the limitation of claim 6. However, because L’Esperance Jr. is silent on the specific material of the cannula, Examiner alternatively rejects claim 6 under 35 U.S.C. 103 as follows:
Hobart discloses an analogous surgical instrument (Fig. 5d), that like L’Esperance Jr., includes a spatula (535) that provides both tissue manipulation and beam blocking functions (col. 5, lines 40-45). As shown in FIG. 5d, the surgical instrument has a housing (531) for holding an optical fiber (532). The housing of Hobart is preferably flexible or bendable (col. 5, lines 35-37), which allows an operator to easily change an irradiation angle during treatment (col. 11, lines 9-11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the cannula of L’Esperance Jr, to be at least partially flexible, as taught by Hobart. One would have been motivated to make this modification because doing so would allow an operator to easily change the irradiation angle during treatment (col. 11, lines 9-11).
Claim Rejections - 35 USC § 103
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over L’Esperance, Jr. (US 5,257,988), in view of Cook et al. (US 5,957,914).
In re claim 8, L’Esperance, Jr. does not disclose wherein a proximal surface of the spatula is patterned to redirect *the laser light from the optical fiber.
Cook, like L’Esperance Jr, discloses a surgical instrument (FIG. 5) for membrane removal (abstract: “cataract removal”). As shown in FIG. 5, the surgical instrument of Cook has a curved member (70) with a surface (80) that functions to protect surrounding tissue from laser energy delivered from the surgical instrument (col. 5, lines 36-46; abstract: “laser photo optic breakdown probe”). In one embodiment, Cook discloses the surface of the curved member being patterned with a series of angled faces (FIGS. 9-10: 84, 86).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the spatula of L’Esperance Jr. to have a patterned proximal surface, as taught by Cook. One would have been motivated to make this modification because doing so would help cut the ocular tissue (col. 5, 51-60; col. 5, 64-67). Accordingly, such a modification would wherein a proximal surface of the spatula is “patterned to redirect the laser light from the optical fiber”.
*Regarding the limitation “the laser light” see above section (Claim Objections).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over L’Esperance, Jr. (US 5,257,988) in view of Hickingbotham (US 2008/0319463).
In re claim 9, the proposed combination does not yield
wherein a distal surface of the spatula is patterned to facilitate traction against a membrane.
Hickingbotham discloses a multifunctional surgical instrument (Fig. 4) that, like L’Esperance Jr., is used in ophthalmic surgery (abstract). The multifunctional surgical instrument includes a spatula (360) with a patterned distal surface (362) that supports membrane manipulation and removal [0029].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spatula of L’Esperance Jr., to have a patterned distal surface, as taught by Hickingbotham. One would have been motivated to make this modification because doing so would help facilitate the manipulation and removal of intraocular membranes (Hickingbotham, [0029]). Accordingly, such a modification would yield wherein a distal surface of the spatula is patterned “to facilitate traction against a membrane”.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mittelstein et al. (US 11,559,431) discloses a device (Fig. 2: 10) for cutting ophthalmological tissue (Fig. 4a). The device includes a protector (24) that prevents surrounding tissue from being damaged by laser energy delivered by the device (abstract).
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.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA WALKER whose telephone number is (571)272-7052. The examiner can normally be reached M-F: 7-4pm CT.
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, David Hamaoui can be reached at (571)-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLIVIA WALKER/Examiner, Art Unit 3796
/DAVID HAMAOUI/SPE, Art Unit 3796