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 .
In view of prior art that indicates nonpatentability of the appealed claims in which the Patent Trial and Appeal Board (PTAB) reversed the Examiner in their decision mailed 09 March 2026, PROSECUTION IS HEREBY REOPENED (see MPEP 1214.04). A new ground of rejection is set forth below. A Technology Center Director or designee has approved of reopening prosecution by signing below:
/Allana Lewin Bidder/ Director, Technology Center 2800
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.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vijfvinkel et al. (8,900,220).
As for claim 13, Vijfvinkel teaches a method comprising: belling a proximal end of each of a plurality of optical fibers (Fig. 2; *note that “belling” is defined as to “spread of flare outward like the tip of a bell” (Oxford Languages direction) or “to bell or curve outward in a shape like a metal bell” (Cambridge dictionary); therefore “belling” and “tapering” are analogous shapes, depending on the direction of travel), each of the plurality of optical fibers having the proximal end and a distal end (Fig. 1); and combining the belled proximal ends of the plurality of optical fibers in a connector (6) configured to be coupled to a surgical console (column 2, lines 30-33).
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 1-3 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Vijfvinkel in view of Hussein (4,768,858).
With respect to claim 1, Vijfvinkel teaches a chandelier illumination probe (1), comprising: a second element (top item 2 in Fig. 1); an optical fiber (2); and a sleeve (4), wherein: the second element (top item 2 in Fig. 1) and the optical fiber are housed within the sleeve (Fig. 1), the second element (top item 2 in Fig. 1), the optical fiber (2), and the sleeve are bound at a binding (6); an exposed distal portion (9) of the optical fiber extends beyond a distal end of the sleeve (Figs. 1-2).
Vijfvinkel does not explicitly teach a metal wire; the metal wire and the optical fiber are housed within the sleeve, and the metal wire comprises a malleable material configured for being bent to an angle before or during a surgical procedure (claim 1).
As for claim 1, Hussein also drawn to chandelier illulmination probes, teaches a second element is a metal wire (46); the metal wire and the optical fiber (28) are housed within a sleeve (26), and the metal wire comprises a malleable material configured for being bent to an angle before or during a surgical procedure (Figs. 1-4 and column 5, lines 1-10).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to use the metal wire of Hussein with the chandelier illumination probe of Vijfvinkel, in order to provide accurate positioning and safe guidance (column 4, line 59-column 5, line 10 of Hussein).
As for claim 2, Vijfvinkel teaches wherein a diameter of the second element (top item 2) is between about 0.1 millimeter and about 0.5 millimeters (column 3, lines 27-37); and wherein a diameter of the sleeve is between about 0.5 millimeters and 1.5 millimeters (column 3, lines 27-37).
As for claim 3, Vijfvinkel teaches further comprising a moveable stopper (7) disposed between the binding (6) and a distal end of the exposed distal portion of the optical fiber (Fig. 1), the moveable stopper comprising one or more compliant members (inside of 7) disposed therein and configured for increasing friction between the movable stopper and the optical fiber (column 3, lines 1-15).
As for claim 6, Vijfvinkel teaches further comprising a removable spacer (7), a proximal end of the removable spacer being disposed in contact with the distal end of the sleeve (see; P in Fig. 1 and column 3, lines 1-15). Although Vijfvinkel and Hussein do not explicitly teach wherein a length of the removable spacer is between about 2 millimeters and about 4 millimeters, but one of ordinary skill in the art would have been led to the recited dimensions through routine experimentation and optimization. Applicant has not disclosed that the dimensions are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical, and it appears prima facie that the process would possess utility using another set of dimensions. Indeed, it has been held that mere dimensional limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. See, for example, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See also MPEP 2144.04(IV)(B). In this case, one of ordinary skill in the art, before the effective filing date, would have been led to the recited dimensions through routine experimentation and optimization, in order to provide a size appropriate for eye surgery (column 3, lines 27-46 of Vijfvinkel).
As for claim 7, Vijfvinkel further teaches wherein a proximal end of the optical fiber is belled (Fig. 2; *note that “belling” is defined as to “spread of flare outward like the tip of a bell” (Oxford Languages direction) or “to bell or curve outward in a shape like a metal bell” (Cambridge dictionary); therefore “belling” and “tapering” are analogous shapes, depending on the direction of travel)).
As for claim 8, Vijfvinkel further teaches further comprising a guiding needle configured to create an opening in a patient’s eye wall through which the chandelier illumination probe is inserted (column 2, lines 47-50).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Vijfvinkel and Hussein, as is applied to claim 1 above, further in view of Smith et al. (2008/0177257).
With respect to claims 4-5, Vijfvinkel and Hussein teach all of the claimed elements, as is discussed above, except for explicitly teaching a retention member, wherein the chandelier illumination probe is fixedly coupled to the retention member; wherein the retention member is configured to be detachably couple to a cannula assembly, and wherein the retention member is coupled to the cannula assembly, the retention member retains the chandelier illumination probe within the cannula assembly when at least an amount of pulling force is applied to the chandelier illumination probe (claim 4); a first retention member, wherein the chandelier illumination probe is fixedly coupled to the first retention member; a second retention member, wherein the second retention member is configured to be detachably couple to the first retention member and wherein the optical fiber extends through both the first retention member and the second retention member; wherein the second retention member is configured to be detachably coupled to a cannula assembly, and wherein the second retention member is coupled to the cannula assembly, the second retention member retains the chandelier illumination probe within the cannula assembly when at least an amount of pulling force is applied to the chandelier illumination probe (claim 5).
As for claim 4, Smith also drawn to Chandelier illumination probes, a retention member (700), wherein the chandelier illumination probe (603) is fixedly coupled to the retention member (Figs. 6-8); wherein the retention member is configured to be detachably couple to a cannula assembly (605), and wherein the retention member is coupled to the cannula assembly (Figs. 6-8), the retention member retains the chandelier illumination probe within the cannula assembly when at least an amount of pulling force is applied to the chandelier illumination probe (Figs. 6-8).
As for claim 5, Smith teaches a first retention member (700), wherein the chandelier illumination probe (603 and 604) is fixedly coupled to the first retention member (Figs. 6-8); a second retention member (820), wherein the second retention member is configured to be detachably couple to the first retention member and wherein the optical fiber (603) extends through both the first retention member and the second retention member (Figs. 6-8); wherein the second retention member is configured to be detachably coupled to a cannula assembly (605), and wherein the second retention member is coupled to the cannula assembly, the second retention member retains the chandelier illumination probe within the cannula assembly when at least an amount of pulling force is applied to the chandelier illumination probe (Figs. 6-8).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to use the retention members and cannula of Smith in the Chandelier illumination probe of Vijfvinkel, in order to protect the optical fiber and to minimize light leakage (paragraph 45 of Smith).
Claims 9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Auld et al. (2013/0079598) in view of Vijfvinkel et al. (8,900,220).
With respect to claims 9, 11, and 12, Auld teaches a chandelier illumination probe (10), comprising: an optical fiber (26) having a proximal portion (portion of 26 furthest from 40) and a distal portion (portion of 26 closest to 40), a portion of the optical fiber (portion of 26 at item 36) between the proximal portion and the distal portion being bent to a predetermined angle between about 70° (degrees) and about 160° (as suggested by paragraph 17 of Auld, it is known and contemplated, depending on use of the device, to have angles between 70 and 160 degrees – see MPEP 2144.04 on ranges) prior to a surgical procedure (paragraph 14) [claim 9].
Auld does not explicitly teach the optical fiber is a plastic optical fiber (claim 9); further comprising a moveable stopper disposed along the distal portion of the optical fiber, the moveable stopper being configured to move in a vertical direction along a length of the distal portion (claim 11); wherein the proximal portion of the optical fiber is belled (claim 12).
As for claim 9, Vijfvinkel also drawn to chandelier illumination probes, teaches an optical fiber is a plastic optical fiber (column 3, lines 30-32).
As for claim 11, Vijfvinkel teaches further comprising a moveable stopper (7) disposed along the distal portion of the optical fiber (Fig. 1), the moveable stopper being configured to move in a vertical direction along a length of the distal portion (see: P).
As for claim 12, Vijfvinkel teaches wherein the proximal portion of the optical fiber is belled (in Fig. 2 belling is shown starting at free end (3) and moving away from free end (3) along the optical fiber; *note that “belling” is defined as to “spread of flare outward like the tip of a bell” (Oxford Languages direction) or “to sell or curve outward in a shape like a metal bell” (Cambridge dictionary); therefore “belling” and “tapering” are analogous shapes, depending on the direction of travel).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to use the plastic optical fiber, stopper, and belling of Vijfvinkel in the chandelier illumination probe of Auld, since Auld teaches plastic is a well known optical fiber material (column 3, line 27-32 of Vijfvinkel) and in order to define the insertion length (column 2, lines 53-63 of Vijfvinkel) and to provide a preferable shape (column 3, line 54 of Vijfvinkel).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Vijfvinkel and Hussein, as is applied to claim 8 above, further in view of Peterson (2016/0066777).
With respect to claim 10, Vijfvinkel and Hussein teach all of the claimed elements, as is discussed above, except for explicitly teaching wherein the optical fiber is bent using a thermal heating method.
As for claim 10, Peterson also drawn to chandelier illumination probes, teaches wherein the optical fiber is bent using a thermal heating method (paragraph 36).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to use the thermal heating method of Peterson in the chandelier illumination probe of Vijfvinkel, in order to shape the optical fiber as desired (paragraph 36 of Peterson).
Allowable Subject Matter
Claims 14-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
With respect to claim 14, while the Auld reference teaches belling a proximal end of each of a plurality of optical fibers, as is laid out above with respect to claim 13, the prior art does not teach or suggest wherein the belling the proximal end of each of the plurality of optical fibers comprises heating the proximal end of each of the plurality of optical fibers to a predetermined temperature; along with the other limiting elements of claims 13-14.
Claim 15 is dependent on allowable claim 14.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM JOSEPH CARTER whose telephone number is (571)272-0959. The examiner can normally be reached M-F 8am-5pm.
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/WILLIAM J CARTER/Primary Examiner, Art Unit 2875 5/29/2026
/ABDULMAJEED AZIZ/Supervisory Patent Examiner, Art Unit 2875
Prosecution Insights