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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/18/2025 has been entered.
Response to Arguments
Applicant’s arguments in combination with amendments, see remarks and claims, filed 11/18/2025, with respect to the rejection(s) of claim(s) under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the following:
Claim(s) 30, 33, 35, 37 and 60 is/are rejected under 35 U.S.C. 103 as being unpatentable over various embodiments of US Pat Pub No. 20140012155 to Flaherty et al. (hereinafter “Flaherty”).
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flaherty (20140012155) in view of US Pat Pub No. 20020123696 granted to Kokate et al. (hereinafter “Kokate” – previously presented).
Claim(s) 34 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flaherty (20140012155) in view of US 20140128881 granted to Tyc et al (hereinafter “Tyc” – previously presented).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 30, 33, 35, 37 and 60 is/are rejected under 35 U.S.C. 103 as being unpatentable over various embodiments of US Pat Pub No. 20140012155 to Flaherty et al. (hereinafter “Flaherty”).
Regarding claim 30. (Currently Amended) Flaherty discloses a multi-modal sensor probe (para 0083-0084, device 100) comprising: an elongate thermal sensor (para 0092 “functional element 160 is a [] thermocouple or other temperature sensor”); at least one optical fiber having a distal end (para 0019, 0091 “optical fibers”, para 0110 “wire bundle 128”, fig. 3A) and positioned adjacent and parallel to the elongated thermal sensor (fig. 3A, showing bundle 128 and sensor 160 are positioned in parallel to one another and adjacent to one another; additionally repositioning the components would be an obvious matter of design choice, see In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)); an angled light-directing surface (para 0126-0127, fig 8) separate from the at least one optical fiber and positioned at a distance from the distal end of the at least one optical fiber (fig. 8); and a housing encasing the elongated thermal sensor, the at least one optical fiber , and the angled light-directing surfaces (para 0092, fig. 3A, the outer portion of the functional element, lens 122, and shaft 110 of device 100 is considered to be the housing) wherein the at least one optical fiber and the angled light-directing surface form an optical sensor; and wherein the optical sensor is configured to measure a laser fluence or a laser radiance (para 0110, “array of sensors 121 [] record infrared light information”).
Regarding claim 33. (Previously Presented) Flaherty discloses the multi-modal sensor probe of claim 30, wherein the elongated thermal sensor is a fluoroptic thermal probe (para 0117).
Regarding claim 35. (Previously Presented) Flaherty discloses the multi-modal sensor probe of claim 30, wherein the multi- modal sensor probe is constructed from an optically transparent material (para 0019, 0021) that is thermally stable in the range of about 0° to 120° C (it is understood that the probe would be ‘stable’ in at least a portion of the claimed range to render the probe safe for use.). It is noted that the claim as recited has not specified the material that is being used and whether the entire probe and its components are all made of the optically transparent material or not. Under its BRI, any probe having any material that is at least in part transparent, and can operate within the temperature range recited, would read over the claimed limitation. Furthermore, even though the entire range is not disclosed, 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); See US 20060287647 A1 for transparent material).
Regarding claim 37. (Previously Presented) Flaherty discloses the multi-modal sensor probe of claim 60, wherein the multi- modal sensor probe is constructed from an optically transparent material (para 0019, 0021) that is thermally stable in the range of about 0° to 120° C (it is understood that the probe would be ‘stable’ in at least a portion of the claimed range to render the probe safe for use.). It is noted that the claim as recited has not specified the material that is being used and whether the entire probe and its components are all made of the optically transparent material or not. Under its BRI, any probe having any material that is at least in part transparent, and can operate within the temperature range recited, would read over the claimed limitation. Furthermore, even though the entire range is not disclosed, 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); See US 20060287647 A1 for transparent material).
Regarding claim 60. (Currently Amended) Flaherty discloses a multi-modal sensor probe (para 0083-0084, device 100) comprising: an elongate thermal sensor (para 0092 “functional element 160 is a [] thermocouple or other temperature sensor”) comprising a plurality of temperature sensitive elements (fig. 5, para 0117); a housing encasing the elongate thermal sensor (para 0092, fig. 3A, the outer portion of the functional element is considered to be the housing); at least one optical fiber (para 0019, 0091 “optical fibers”, para 0110 “wire bundle 128”, fig. 3A), having a distal end and positioned parallel and connected to the housing of the elongate thermal sensor (fig. 3A, showing bundle 128 and sensor 160 are positioned in parallel to one another and adjacent to one another; additionally repositioning the components would be an obvious matter of design choice, see In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)); and an angled light-directing surface (para 0126-0127, fig 8), separate from the at least one optical fiber and positioned at a distance from the distal end of the at least one optical fiber (fig. 8); wherein the at least one optical fiber and the angled light-directing surface form an optical sensor; wherein the optical sensor is configured to measure a laser fluence or a laser radiance (para 0110, “array of sensors 121 [] record infrared light information”).
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flaherty (20140012155) in view of US Pat Pub No. 20020123696 granted to Kokate et al. (hereinafter “Kokate” – previously presented).
Regarding claim 32. (Previously Presented) The multi-modal sensor probe of claim 60 but fails to disclose wherein the plurality of temperature-sensitive elements comprises phosphor.
Kokate, from a similar field of endeavor, teaches a similar fiber-optic catheter having a phosphor temperature sensor to provide an accurate temperature measurement (para 0061, 0068, see also para 0012). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the disclosure of Flaherty with the teachings of Kokate to provide a phosphor temperature sensor to provide the predictable result of accurately measuring temperature.
Claim(s) 34 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Flaherty (20140012155) in view of US 20140128881 granted to Tyc et al (hereinafter “Tyc” – previously presented).
Regarding claims 34 and 36. (Previously Presented) Flaherty discloses the multi-modal sensor probe of claim 30 and claim 60, but fails to disclose the multi-modal sensor probe having an outer diameter of about 1.5 mm.
Tyc, from a similar filed of endeavor teaches the diameter of the capsule to be 0.3, 0.4, 0.5, 0.6, 0.7, 0.8, 0.9, 1.0 or 0.5 to 1.0 mm. (para 0292) and the probe with an outer diameter of 3.3 mm (para 0295). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the disclosure of Flaherty with the teachings of Tyc to provide the predictable result of a probe with the known dimensions.
It is noted that the claim does not define what it considers to be “about 1.5 mm”. Under its broadest reasonable interpretation, 1.0mm and/or 3.3 mm could be considered to read over the claimed limitation of “about 1.5 mm”. However, even if about is to be perceived to be more limiting, the court has told us 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANA SAHAND whose telephone number is (571)272-6842. The examiner can normally be reached M-Th 8:30 am -5:30 pm; F 9 am-3 pm.
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/SANA SAHAND/Examiner, Art Unit 3796
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