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 13-14 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.
The limitation of claim 13, line 2 of “the platform” is indefinite because it is unclear if this limitation refers to: 1) the first platform, or 2) the second platform. Examiner suggests amending the limitation to read “the first platform”.
The limitation of claim 14, line 2 of “the platform” is indefinite because it is unclear if this limitation refers to: 1) the first platform, or 2) the second platform. Examiner suggests amending the limitation to read “the first platform”.
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.
Claim(s) 1-2, 4-6, 10, 12-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2012/0191120 (Linsi).
1. Linsi discloses an ophthalmic knife (probe 100), comprising:
a shaft (tubular body 102);
a first platform (blade 108) connected to an end of the shaft and extending at an angle (e.g., approximately 180 degrees in FIG. 2A-2B) from a longitudinal axis of the shaft (FIG. 2A-2B), the first platform comprising:
a first top surface (top of body 114) extending from a first tip (end portion 112)(FIG. 2A); and
a first bottom surface (bottom of body 114) opposing the first top surface (FIG. 2A); and
a second platform (blade 106) connected to the shaft adjacent to the first platform (FIG. 2A-2B; P0017), the second platform comprising:
a second top surface (top of body 110) extending from a second tip (cutting edge 116)(FIG. 2A); and
a second bottom surface (bottom of body 110) opposing the second top surface (FIG. 2A),
wherein the first platform is configured to sever trabecular meshwork in a human eye as the trabecular meshwork advances over the first top surface of the first platform (see cutting edge 116)(FIG. 2A; P0018) and the second bottom surface of the second platform is configured to (or at least capable of) engage but not sever the trabecular meshwork (e.g., see blunt bottom surface of body 110 hook hooked end portion 112 in FIG. 2A at least capable of engaging but not severing tissue).
2. The first platform and the second platform are radially offset (see each body 110 and 114 extending along differing radii such that they are radially offset in FIG. 2A-2B).
4. The first top surface of the first platform comprises a planar ramp extending from a tip side to a back side of the first platform opposite the tip side (FIG. 2A-2B).
5. The planar ramp extends at an obtuse angle from the shaft (FIG. 2A-2B).
6. When the first platform is advanced between the trabecular meshwork and an outer wall of Schlemm's canal, a portion of the trabecular meshwork on the planar ramp is capable of being elevated away from the outer wall of Schlemm's canal without cutting the portion of the trabecular meshwork from surrounding portions of the trabecular meshwork and the portion of the trabecular meshwork is guided toward the shaft (e.g., see capability in FIG. 2A due to the blunt top of blade 108 proximal to cutting edge 116).
10. The first platform comprises first and second sides (e.g., first and second flat lateral sides in FIG. 2A-2B or first and second angled sides near cutting edge 116 increasing in width) extending from the first bottom surface to the first top surface and from the first tip laterally toward the shaft (FIG. 2A-2B).
12. The second platform comprises third and fourth sides (e.g., third and fourth flat lateral sides in FIG. 2A-2B) extending from the second bottom surface to the second top surface (FIG. 2A-2B).
13. The first and second sides are angled (e.g., angled sides from cutting edge 116 in FIG. 2A) and a width between the first and second angled sides increases toward a shaft side of the platform (e.g., increasing width proximal to cutting edge 116 in FIG. 2A).
14. First and second lateral sides (first and second flat lateral sides in FIG. 2A-2B) are disposed between the first and second angled sides (first and second angled sides near cutting edge 116 increasing in width in FIG. 2A) and the shaft side of the platform, the first and second lateral sides being substantially parallel (FIG. 2A-2B).
15. The first tip is configured to pierce the trabecular meshwork (FIG. 2A; P0017).
16. The second platform is configured such that the second bottom surface of the second platform is capable of being disposed on a top surface of the trabecular meshwork when the first platform is in the trabecular meshwork (e.g., capability due to orientation of FIG. 2A-2B).
17. When the first top surface is advanced between the trabecular meshwork and an outer wall of Schlemm's canal, a portion of the trabecular meshwork on the first top surface is elevated away from the outer wall of Schlemm's canal without cutting the portion of the trabecular meshwork and the portion is guided toward the shaft (e.g., see capability in FIG. 2A due to the blunt top of blade 108 proximal to cutting edge 116).
18. The first platform comprises first and second lateral elements (e.g., first element at top surface of cutting edge 116 and second element proximal to cutting edge 116 as shown in annotated FIG. 2A) extending above the first top surface (FIG. 2A).
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20. The first and second lateral elements are linear (see lateral side of elements being flat/linear in FIG. 2A-2B).
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 1-6, 10-12, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,844,727 (Kahook ‘727). Although the claims at issue are not identical, they are not patentably distinct from each other because Kahook ‘727 claims:
US Patent App. # 18/947,691
Kahook ‘727
Claim 1
Claim 1 or 15
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 10
Claim 1
Claim 11
Claim 8
Claim 12
Claim 1
Claim 15
Claim 1
Claim 16
Claim 1
Claim 17
Claim 1 and 6
Claim 18
Claim 15 and 16
Claim 19
Claim 17
Claim 20
Claim 18
Claims 1, 4-6, 10-12, 15, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,171,694 (Kahook ‘694). Although the claims at issue are not identical, they are not patentably distinct from each other because Kahook ‘694 claims:
US Patent App. # 18/947,691
Kahook ‘694
Claim 1
Claim 1
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 4
Claim 10
Claim 1
Claim 11
Claim 7
Claim 12
Claim 2
Claim 15
Claim 1
Claim 17
Claim 4
Allowable Subject Matter
Claim(s) 3, 11, and 19 are free from prior art rejections under 35 U.S.C. 102/103.
Claims 7-9 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TODD J SCHERBEL whose telephone number is (571)270-7085. The examiner can normally be reached Mon - Fri 9:00-6:00.
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, Jackie Ho can be reached at 571-272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TJ SCHERBEL
Primary Examiner
Art Unit 3771
/TODD J SCHERBEL/Primary Examiner, Art Unit 3771