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 Objections
Claims 17, 24, 27, and 28 are objected to because of the following informalities:
Claim 17 recites “the first mode” and “second mode”, although the lines are understood by Examiner to mean “the first mode of oscillation” and “second mode of oscillation” as defined and repeated in claim 18, the Examiner suggests the lines in claim 17 be amended to recite the “the first mode of oscillation” and “second mode of oscillation” or the lines, “the first mode of oscillation” and “second mode of oscillation”, in claim 18 be amended to read “the first mode” and “the second mode” for the purpose of maintaining consistent language throughout the claims;
Claim 24 recites “A ultrasonic handpiece” in line 1, however this is not grammatically correct and the Examiner suggests the line be amended to read “An ultrasonic handpiece”;
Claim 24 recites “a controller couped to” in line 3, however this is not grammatically correct and the Examiner suggests the line be amended to read “a controller coupled to”;
Claim 24 recites “adjusting the applying control signals” in line 8, however this is not grammatically correct and the Examiner suggests the line be amended to read “adjusting the applied control signals”;
Claim 24 recites “the first mode” and “second mode”, although the lines are understood by Examiner to mean “the first mode of oscillation” and “second mode of oscillation” as defined and repeated in claim 25, the Examiner suggests the lines in claim 24 be amended to recite the “the first mode of oscillation” and “second mode of oscillation” or the lines, “the first mode of oscillation” and “second mode of oscillation”, in claim 25 be amended to read “the first mode” and “the second mode” for the purpose of maintaining consistent language throughout the claims;
Claims 24, 27, and 28 recites “the generate feedback” however this is not grammatically correct and the Examiner suggests the line be amended to read “generating the feedback”
Appropriate correction is required.
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 20, 21, 27, and 28 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.
Regarding claims 20, 21, 27, and 28, the phrase "the resulting oscillation" renders the claim indefinite because it is unclear if Applicant is intending for the “resulting oscillation” to mean the resulting oscillation of the first mode, the resulting oscillation of the second mode or both of the resulting oscillations in the first and second modes combined into a single resultant oscillation. Based on Applicant’s specification paragraphs [0033 – 0034] and Formula (1), the claims will be examined by the Examiner to mean the latter.
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.
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.
Claims 17 – 19, 22 – 26, and 29 – 30 are rejected under 35 U.S.C. 103 as being unpatentable over Steen et al (US 2021/0330493 A1) in view of Boukhny et al (US 2010/0268388 A1).
Regarding claims 17 and 19, Steen discloses a method of operating an ultrasonic handpiece / phacoemulsifier (phacoemulsification apparatus 10) comprising a piezoelectric element assembly (abstract, paragraphs [0014], [0031], [0035], [0046], and Figs. 2 – 3) the method comprising:
applying control signals to drive the piezoelectric element assembly (top two electrodes 50 that make up the piezoelectric stack shown in Fig. 4) simultaneously in a first mode of oscillation (one of the multiple modes) and a second mode of oscillation (a second one of the multiple modes) (paragraphs [0026], [0028], [0042 – 0044], and Figs. 2 – 4);
generating feedback of a resulting oscillation of the piezoelectric element assembly in the first mode and the second mode (Examiner’s note: as stated in paragraphs [0026 – 0028] the controller receives feedback from an initial oscillation (i.e., the resulting oscillation) via a measured phase difference between the measured driving voltage and the resulting current); and
based on the feedback, adjusting the applying control signals so that the resulting oscillation in the first mode and the resulting oscillation in the second mode are each approximately at a respective resonant frequency (Examiner’s note: as stated in paragraph [0028] the each drive signal frequency is adjusted to maintain the piezoelectric actuator vibrating at the multiple resonant frequency).
However, Steen is silent regarding (i) wherein the generating feedback comprises determining a root mean square (RMS) value of the measured voltage and the resulting current in each of the first mode and the second mode.
As to the above, Boukhny teaches, in the same field of endeavor, a method of operating a phacoemulsification handpiece (handpiece 112’) (paragraphs [0044] and [0111]) by applying multiple drive signals (drive frequencies) simultaneously in a first mode (longitudinal mode) and a second mode (torsional mode) (paragraph [0116]), and generating feedback of a resulting oscillation for each mode by determining a root means square value of a measured voltage a resulting current of each of the first mode and second mode (Examiner’s note: as stated in paragraph [0111] the drive circuit 340 monitors and controls the frequency of both modes. Additionally, Fig. 25 of Boukhny shows the circuit taking in the voltage and current feedback and determining the RMS value for each).
Furthermore it should be understood that Steen and Boukhny are known references in the art that teach an ultrasonic phacoemulsification handpiece using multiple modes driven by multiple drive signals and generating feedback to adjust the multiple drive signals to the frequencies (abstract, paragraphs [0014], [0026], [0028], [0031], [0035], and [0046] – Steen ; abstract, paragraphs [0111] and [0116], and Fig. 25 – Boukhny); and the Examiner contends that it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have substituted one method / means of deriving the generated feedback for another method / means, and the results of the substitution would have been predictable and resulted in the modified system of Steen being able to acquire the appropriate feedback needed in order to accurately adjust the multiple drive signals to the desired frequency. The examiner notes the rejection above is based on KSR int’l Co. V. Teleflex inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), rational B, outlined in MPEP 2143.
Regarding claim 18, Steen discloses wherein the first mode of oscillation comprises a longitudinal motion and the second mode of oscillation comprises a torsional motion (Examiner’s note: as stated in paragraphs [0003] and [0021] the multi-resonance mode combines longitudinal and torsional modes; therefore, the first mode is a longitudinal mode and the second mode is torsional).
Regarding claim 22, Steen discloses wherein the piezoelectric element assembly comprises one or more pairs of ring-shaped piezoelectric elements (top two split electrodes 50 shown in the stack of electrodes in Fig. 4) (Examiner’s: as discussed in paragraph [0042] and shown in Fig. 4 the piezoelectric assembly comprises ring shaped electrodes 50).
Regarding claim 23, Steen discloses wherein the ultrasonic handpiece comprises an additional piezoelectric element assembly (bottom two electrodes 50 of the piezoelectric stack shown in Fig. 4), and wherein each piezoelectric element assembly is spaced apart along a longitudinal axis of the ultrasonic handpiece (Examiner’s note: as shown in Fig. 4 the top 2 electrodes and the bottom two electrodes are spaced along the longitudinal axis).
Regarding claims 24 and 26, Steen discloses an ultrasonic handpiece system / phacoemulsifier (phacoemulsification apparatus 10) (abstract, paragraphs [0014], [0031], [0035], [0046], and Figs. 2 – 3) comprising:
a handpiece (phacoemulsification probe 12) comprising a piezoelectric element assembly (piezoelectric actuator 22) (paragraph [0031 – 0033] and Figs. 2 and 4);
[claim 26] an ultrasonic horn (horn 14), an aspiration tube (tubing line 46), and a hollow tip (needle 16) (paragraphs [0031 – 0033] and Fig. 1);
a controller (drive system 100) coupled the piezoelectric element assembly (piezoelectric actuator 22) (paragraph [0042]) and configured to:
apply control signals to drive the piezoelectric element assembly (top two electrodes 50 that make up the piezoelectric stack shown in Fig. 4) simultaneously in a first mode of oscillation (one of the multiple modes) and a second mode of oscillation (a second one of the multiple modes) (paragraphs [0026], [0028], [0042 – 0044], and Figs. 2 – 4);
generate feedback of a resulting oscillation of the piezoelectric element assembly in the first mode and the second mode (Examiner’s note: as stated in paragraphs [0026 – 0028] the controller receives feedback from an initial oscillation (i.e., the resulting oscillation) via a measured phase difference between the measured driving voltage and the resulting current); and
based on the feedback, adjust the applying control signals so that the resulting oscillation in the first mode and the resulting oscillation in the second mode are each approximately at a respective resonant frequency (Examiner’s note: as stated in paragraph [0028] the each drive signal frequency is adjusted to maintain the piezoelectric actuator vibrating at the multiple resonant frequency).
However, Steen is silent regarding (i) wherein generating the feedback comprises determining a root mean square (RMS) value of the measured voltage and the resulting current in each of the first mode and the second mode.
As to the above, Boukhny teaches, in the same field of endeavor, a method of operating a phacoemulsification handpiece (handpiece 112’) (paragraphs [0044] and [0111]) by applying multiple drive signals (drive frequencies) simultaneously in a first mode (longitudinal mode) and a second mode (torsional mode) (paragraph [0116]), and generating feedback of a resulting oscillation for each mode by determining a root means square value of a measured voltage a resulting current of each of the first mode and second mode (Examiner’s note: as stated in paragraph [0111] the drive circuit 340 monitors and controls the frequency of both modes. Additionally, Fig. 25 of Boukhny shows the circuit taking in the voltage and current feedback and determining the RMS value for each).
Furthermore it should be understood that Steen and Boukhny are known references in the art that teach an ultrasonic phacoemulsification handpiece using multiple modes driven by multiple drive signals and generating feedback to adjust the multiple drive signals to the frequencies (abstract, paragraphs [0014], [0026], [0028], [0031], [0035], and [0046] – Steen ; abstract, paragraphs [0111] and [0116], and Fig. 25 – Boukhny); and the Examiner contends that it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have substituted one method / means of deriving the generated feedback for another method / means, and the results of the substitution would have been predictable and resulted in the modified system of Steen being able to acquire the appropriate feedback needed in order to accurately adjust the multiple drive signals to the desired frequency. The examiner notes the rejection above is based on KSR int’l Co. V. Teleflex inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), rational B, outlined in MPEP 2143.
Regarding claim 25, Steen discloses wherein the first mode of oscillation comprises a longitudinal motion and the second mode of oscillation comprises a torsional motion (Examiner’s note: as stated in paragraphs [0003] and [0021] the multi-resonance mode combines longitudinal and torsional modes; therefore, the first mode is a longitudinal mode and the second mode is torsional).
Regarding claim 29, Steen discloses wherein the piezoelectric element assembly comprises one or more pairs of ring-shaped piezoelectric elements (top two split electrodes 50 shown in the stack of electrodes in Fig. 4) (Examiner’s: as discussed in paragraph [0042] and shown in Fig. 4 the piezoelectric assembly comprises ring shaped electrodes 50).
Regarding claim 30, Steen discloses wherein the ultrasonic handpiece comprises an additional piezoelectric element assembly (bottom two electrodes 50 of the piezoelectric stack shown in Fig. 4), and wherein each piezoelectric element assembly is spaced apart along a longitudinal axis of the ultrasonic handpiece (Examiner’s note: as shown in Fig. 4 the top 2 electrodes and the bottom two electrodes are spaced along the longitudinal axis).
Examiner’s Note
Claims 20, 21, 27, and 28, as interpreted by the Examiner in the 112(b) rejection, are free from prior art, and would be allowable if amended to overcome the 112(b) rejection and moved into their respective independent claims.
Related Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Raney et al (US 10,363,166 B2) and Downey et al (US 2017/0143369 A1) teach an ultrasonic hand piece operated in two modes driven by at least one signal and generating feedback, wherein the feedback is used to adjust the drive signals.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew P. Restaino whose telephone number is (571)272-4748. The examiner can normally be reached Mon - Fri 8:00 - 4:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kelly Bekker can be reached on 5712722739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew Restaino/Primary Examiner, Art Unit 3771
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