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Claims 2, 3, 9 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 7/10/2026.
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.
(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, 4-8, 11, 12, 14 and 15 are rejected under 35 U.S.C. 102(a)(1) and (2) as being anticipated by Diao (US 11,471,242, hereinafter “Diao I”).
In regards to claim 1, Diao I discloses a surgical probe (abstract) comprising:
a handpiece configured to be held by a user (Fig. 4A, element 301); and
a tube (e.g., Figs. 4A-4B, 10-11E, element 340) comprising:
a proximal end coupled to the handpiece (Figs. 4A-4B);
a distal end opposite the proximal end and comprising a distal tip (Figs. 10-11E), wherein the distal tip is beveled (e.g., Figs. 10, 11C, 11E; note beveled end of tube 340) and comprises an end face at least partially defining a port for aspiration (opening of 340; col. 8, lines 53-56; col. 9, lines 49-50); and
at least one functional component disposed in the tube (element 332, “optical fiber,” col. 8, lines 4-11).
In regards to claim 4, the at least one functional component includes an optical fiber (element 332, “optical fiber,” col. 8, lines 4-11), a proximal end of the optical fiber connected to a light source (col. 8, lines 5-11, “extend from the fiber subsystem 120”).
In regards to claim 5, the optical fiber is configured to transmit light for illumination (col. 2, lines 39-43, “cause a field of illumination”).
In regards to claim 6, the optical fiber is configured to transmit laser light for photocoagulation (col. 17, lines 60-64, “the optical fiber included in implementations of the surgical instrument 110 may provide for transmission of laser light to provide a photocoagulation laser at a distal tip of the surgical instrument”).
In regards to claim 7, the probe further comprises at least one of a lens, a camera, or an image sensor (col. 6, lines 27-28; “the fiber subsystem 120 may further include sensors, lenses, filters, and other optical devices”).
In regards to claim 8, the at least one functional component is extendable relative to the tube (col. 8, lines 12-44; at least a portion of the fiber is able to extend relative to the tube -- the claim does not require the ability of the functional component to extend from the distal face of the tube).
In regards to claim 11, the at least one functional component includes an optical fiber (element 332, “optical fiber,” col. 8, lines 4-11).
In regards to claim 12, the optical fiber comprises a straight optical fiber (col. 8, lines 27-29; “permit slidable transition for the optical fiber 332 through a straight, offset or curved path”).
In regards to claim 14, the optical fiber is configured to transmit light for illumination (col. 2, lines 39-43, “cause a field of illumination”).
In regards to claim 15, the optical fiber is configured to transmit laser light for photocoagulation (col. 17, lines 60-64, “the optical fiber included in implementations of the surgical instrument 110 may provide for transmission of laser light to provide a photocoagulation laser at a distal tip of the surgical instrument”).
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.
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 13 is rejected under 35 U.S.C. 103 as being unpatentable over Diao I in view of Diao et al. (US 2021/0173143, hereinafter “Diao II”).
Diao I discloses the essential features of the claimed invention except for wherein a portion of the optical fiber is disposed in a shape memory material having a pre-formed curve.
However, Diao II in the same field of endeavor of laser eye surgical devices teaches providing a similar system with a portion of the optical fiber that is disposed in a shape memory material having a pre-formed curve (par. 0034, second curved portion including the optical fiber is surrounded by a Nitinol tube, which is a shape-memory material) to provide the predictable results of better access to the target anatomical site, as shown in Fig. 1A.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Diao I by providing a portion of the optical fiber that is disposed in a shape memory material having a pre-formed curve to provide the predictable results of better access to the target anatomical site.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Diao I in view of Lopez et al. (US 10,639,197, hereinafter “Lopez”).
Diao I discloses the essential features of the claimed invention, including a beveled end face, but does not expressly disclose wherein the end face is disposed at an angle between about 10 degrees and about 30 degrees relative to a normal of the a longitudinal axis of the tube.
However, Lopez in the same field of endeavor of eye surgical instruments teaches providing an instrument wherein the end face is disposed at an angle range covering between about 10 degrees and about 30 degrees relative to a normal of a longitudinal axis of the tube (col. 13, lines 40-53) to provide the predictable results of allowing the user to place the instrument closer to the target without cutting the target, allow shaving and dissection of the target, and allow the user to lift and pick membranes without having to switch to another instrument (col. 9, line 57 to col. 10, line 7). Further Lopez recognizes that this bevel angle is a results-effective variable (col. 13, lines 40-53; col. 9, line 57 to col. 10, line 7) and it has been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Diao I by providing an instrument wherein the end face is disposed at an angle range covering between about 10 degrees and about 30 degrees relative to a normal of a longitudinal axis of the tube to provide the predictable results of allowing the user to place the instrument closer to the target without cutting the target, allow shaving and dissection of the target, and allow the user to lift and pick membranes without having to switch to another instrument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Berlin (US 2002/0013572) is another example of an eye surgical instrument with aspiration, fiber functional element, and beveled tip.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL W KAHELIN whose telephone number is (571)272-8688. The examiner can normally be reached M-F, 8-5.
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, Benjamin Klein can be reached at (571)270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL W KAHELIN/Primary Examiner, Art Unit 3792
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