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 .
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.
Claims 2, 4-6, 7 are 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.
Claims 2, 4, 6, 7 recite the limitation "the micro-structure" in line 1 of the claims. There is insufficient antecedent basis for this limitation in the claim since claim 1 only recites “a micro-structure pattern” and not a “a micro-structure”. The examiner interprets the limitation to be “the micro-structure pattern” for examination purposes.
Claim 4 recites the limitation “wherein the micro-structure is patterned on an exterior of the probe and the coating is formed on an interior of the probe” in lines 1-2 of the claim which requires both the micro-structure pattern and the coating. It is unclear whether both the micro-structure pattern and the coating are required by the claim since claim 1 only requires a micro-structure pattern or a coating.
Claim 5 recites the limitation “wherein the micro-structure is patterned on an interior of the probe and the coating is formed on an exterior of the probe” in lines 1-2 of the claim which requires both the micro-structure pattern and the coating. It is unclear whether both the micro-structure pattern and the coating are required by the claim since claim 1 only requires a micro-structure pattern or a coating.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-8, 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akahoshi et al (US 20210161710).
Regarding claim 1, Akahoshi et al (hereafter Akahoshi) discloses a surgical instrument (figure 18), comprising: a handle (250) comprising a distal end; a probe (needle 100) comprising: a proximal end coupled to the distal end of the handle (figure 18, paragraph 0050); a micro-structure pattern or coating formed on a surface of the probe (texture on 102, paragraph 0048-0049, figures 12-14 or sleeve 300, molding secondary material to exterior surface 303, figure 17); a driver (paragraph 0050, 251) in communication with the probe, wherein the driver is configured to cause vibration of the probe; and wherein the micro-structure pattern or coating and the vibration are configured to reduce adhesion of the probe to a vitreous of an eye (paragraph 0049).
Regarding claim 2, Akahoshi discloses all of the limitations set forth in claim 1, wherein the micro-structure pattern is patterned on an interior or an exterior surface of a probe (figures 12-14, paragraph 0048. It is noted that although the prior art meets the limitations, the micro-structure pattern is only alternatively recited in claim 1, since the prior art meets the coating limitation. These limitations directed to the micro-structure pattern are not further limiting).
Regarding claim 3, Akahoshi discloses all of the limitations set forth in claim 1, wherein the coating is formed on an interior or an exterior surface of a probe (300 as a coating is placed on exterior of probe 100; It is noted that although the prior art meets the limitations, the coating is only alternatively recited in claim 1, since the prior art meets the micro-structure pattern limitation. These limitations directed to the coating are not further limiting).
Regarding claim 4, Akahoshi discloses all of the limitations set forth in claim 1, wherein the micro-structure pattern is patterned on an exterior of the probe (paragraph 0048, outer surface 154; the coating is only alternatively recited in claim 1, and the prior art meets the micro-structure pattern limitation. The limitations directed to the coating are not further limiting).
Regarding claim 5, Akahoshi discloses all of the limitations set forth in claim 1, wherein the micro-structure is patterned on an interior of the probe (paragraph 0048, interior surface, 152; the coating is only alternatively recited in claim 1, and the prior art meets the micro-structure pattern limitation. The limitations directed to the coating are not further limiting).
Regarding claim 6, Akahoshi discloses all of the limitations set forth in claim 1, wherein the micro-structure pattern on the surface of the probe is formed by chemical etching, physical etching, wet etching, dry etching, stamping, or molding (paragraph 0048, sandblasting as physical etching; It is noted that although the prior art meets the limitations, the micro-structure pattern is only alternatively recited in claim 1, since the prior art meets the coating limitation. These limitations directed to the micro-structure pattern are not further limiting).
Regarding claim 7, Akahoshi discloses all of the limitations set forth in claim 1, wherein a depth of the micro-structure is between 0.1 microns and 100 microns (paragraph 0051, 12-36VDI equivalent to .4-6.3 microns; It is noted that although the prior art meets the limitations, the micro-structure pattern is only alternatively recited in claim 1, since the prior art meets the coating limitation. These limitations directed to the micro-structure pattern are not further limiting).
Regarding claim 8, Akahoshi discloses all of the limitations set forth in claim 1, wherein the driver is configured to cause at least one of a rotational vibration, a gyrational vibration, or an axial vibration of the probe (paragraph 0007, 0011).
Regarding claim 10, Akahoshi discloses all of the limitations set forth in claim 8, wherein the vibration comprises a rotational vibration comprising a continuous circular movement of the probe about a longitudinal axis of the surgical instrument (torsional vibration, paragraph 0011-0012).
Regarding claim 11, Akahoshi discloses all of the limitations set forth in claim 8, wherein the vibration comprises a gyrational vibration comprising a rotational movement of the probe in a conical path about a longitudinal axis of the surgical instrument (torsional vibration, paragraph 0011-0012).
Regarding claim 13, Akahoshi discloses all of the limitations set forth in claim 1, wherein the coating forms a micro-structure on the distal end of the probe (exterior surface 303 of coating, paragraph 0051; It is noted that although the prior art meets the limitations, the coating is only alternatively recited in claim 1, since the prior art meets the micro-structure pattern limitation. These limitations directed to the coating are not further limiting).
Claims 1, 9, 14, 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carter et al (US 2020/0289319)
Regarding claim 1, Carter et al (hereafter Carter) discloses a surgical instrument (figure 1), comprising: a handle (114) comprising a distal end; a probe (112) comprising: a proximal end coupled to the distal end of the handle (figure 2A); a micro-structure pattern or coating formed on a surface of the probe (paragraph 0098); a driver (116, paragraph 0094) in communication with the probe, wherein the driver is configured to cause vibration of the probe; and wherein the micro-structure pattern or coating and the vibration are configured to reduce adhesion of the probe to a vitreous of an eye (paragraph 0098).
Regarding claim 8, Carter discloses all of the limitations set forth in claim 1, wherein the driver is configured to cause at least one of a rotational vibration, a gyrational vibration, or an axial vibration of the probe (paragraph 0092).
Regarding claim 9. The surgical instrument of claim 8, wherein the vibration is at a frequency between 1-100 MHz (paragraph 0187, 0191) and an amplitude between 1-500 micrometers (paragraph 0187).
Regarding claim 14, Akahoshi discloses all of the limitations set forth in claim 1, wherein the coating forms a hydrophobic interface on a distal end of the probe (ptfe, paragraph 0098; It is noted that although the prior art meets the limitations, the coating is only alternatively recited in claim 1, since the prior art meets the micro-structure pattern limitation. These limitations directed to the coating are not further limiting).
Regarding claim 15, Akahoshi discloses all of the limitations set forth in claim 1, wherein the coating comprises a ceramic or polytetrafluoroethylene (ptfe, paragraph 0098; It is noted that although the prior art meets the limitations, the coating is only alternatively recited in claim 1, since the prior art meets the micro-structure pattern limitation. These limitations directed to the coating are not further limiting).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Akahoshi as applied to claim 1 above, and further in view of Carter et al (US 2020/0289319).
Regarding claim 12, Akahoshi discloses all of the limitations set forth in claim 1, wherein the depth of the micro-structure pattern is 0.01 microns to 100 microns (paragraph 0051, 12-36 VDI equivalent to .4-6.3microns), but not specifically that a coating on the probe comprises a hydrophobic material having a thickness of 0.01 microns to 100 microns (It is noted that although the prior art meets the limitations, the coating is only alternatively recited in claim 1.Since the prior art meets the micro-structure pattern limitation and the coating is not required, limitations directed to the coating are not further limiting). However, Carter teaches a known ophthalmic cutting instrument comprising a hydrophobic coating (paragraph 0098) as an art-recognized equivalent surface treatment at the time of the invention to further reduce the roughness of the cutting tube. Therefore, it would have been obvious to one with ordinary skill in the art to alternatively utilize a hydrophobic coating for the surface treatment of the needle in Akahoshi, as an art recognized equivalent by Carter, in order to further reduce the roughness of the cutting tube, since it has been held that substitution of art-recognized equivalents at the time of the invention involves routine skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANH TIEU DANG whose telephone number is (571)270-3221. The examiner can normally be reached Monday-Thursday (9am-4pm EST).
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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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/ANH T DANG/Primary Examiner, Art Unit 3771
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