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 .
Remarks
This action is in response to the remarks filed 04/23/2026.
Claims 1, 2, 4, 7-17, 19, and 22-41 are pending, with claims 29-39 withdrawn. Claims 1, 2, 4, 7-17, 19, 22-28, 40, and 41 are examined in the office action below.
Response to Arguments
Applicant’s arguments, see pages 11-14, filed 04/23/2026, with respect to the rejection of claims 1, 2, 4, 7-17, 19, and 22-28 under 35 U.S.C. 103 have been fully considered but are not persuasive. Applicant argues that Yu does not disclose a reflection coating on a distal end surface of the optical fiber or detecting flexure of the optical fiber. Applicant further argues that Pratten does not disclose reflecting a monitoring beam at the distal end surface of the fiber or detecting flexure of the optical fiber. However, this argument is not found persuasive.
In the Non-Final Rejection of 12/30/2025, Yu was used to disclose the limitation of a reflection coating on a distal end surface of the optical fiber and reflecting a monitoring beam (e.g. Par. [0067]; Par. [0073]). Pratten was used to disclose the limitation of outputting a beam from a proximal end of the fiber, and Younge was used to disclose the limitation of detecting flexure of the optical fiber. Therefore, these references are still eligible as prior art.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
New claims 40 and 41 are addressed in the office action below.
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.
Claims 1, 2, 4, 7-17, 19, 22-28, 40 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (US Patent Application Publication 2018/0049806 – of record), hereinafter Yu, in view of Diao et al. (US Patent Application Publication 2018/0333304 – of record), hereinafter Diao, further in view of Pratten et al. (US Patent Application Publication 2018/0168729 – of record), hereinafter Pratten, and further in view of Younge et al. (US Patent Application Publication 2012/0323075), hereinafter Younge.
Regarding claims 1 and 16, Yu discloses an optical probe (e.g. Abstract) comprising:
a holder member that is mounted on a distal end side of an optical fiber and holds the optical fiber (e.g. Fig. 2: member 114 coupled to distal end of optical fiber 112; Par. [0049]: describing Fig. 2; Fig. 3: member 140 coupled to distal end of optical fiber 112; Par. [0058]; Fig. 5: members 183 and 184 hold the distal end of the fiber 112; Par. [0065]: describing Fig. 5);
a traveling direction changing unit that changes a traveling direction of an output beam to a sideward direction with respect to the optical fiber, wherein the traveling direction changing unit is a reflector that is joined to a part of a surface of the holder member and reflects the output beam (e.g. Fig. 2: reflector 130 changes direction of output beam and is connected to member 114; Fig. 3: reflector 130 changes direction of output beam and is connected to main body 140; Fig. 5: reflector 230 changes direction of the output beam and is connected to member 184; Par. [0052]: reflective surface 130 promotes reflection of laser beam; Par. [0060]: laser beam reflected off of surface 130 to desired target; Par. [0067]: reflective surface 230); and
a reflection mechanism arranged on a distal end surface of the optical fiber from which the output beam is output, the reflection mechanism being configured to transmit the output beam and reflect a monitoring beam having a certain wavelength different from a wavelength of the output beam (e.g. Par. [0073]: the reflector transmits the beam at 420nm and reflects beam at 532nm),
wherein the holder member includes an insertion hole and a diameter extending hole that communicates with the insertion hole and has a larger inner diameter than the insertion hole, the optical fiber is inserted in the insertion hole, the distal end surface of the optical fiber is located at a boundary of the insertion hole and the diameter extending hole or at a side of the diameter extending hole relative to the boundary (e.g. Fig. 3: dotted lines show insertion hole as having a smaller diameter than the diameter of the main body, optical fiber 112 is located at the insertion hole), and
wherein the reflection mechanism is a reflection coating (e.g. Par. [0067]: reflection coating 240).
However, Yu fails to disclose the output beam is a light beam for cautery, and the monitoring beam is output from a proximal end side of the optical fiber and is used to detect flexure of the optical fiber. Diao is directed towards a laser probe. Diao discloses it is known to use a light beam for cautery (e.g. Par. [0003]: a laser probe is used for cauterization).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Yu to include the light beam being used for cautery as taught by Diao because doing so would provide the required cauterization.
However, Yu in view of Diao fails to specifically disclose a monitoring beam output from a proximal end side of the optical fiber and is used to detect flexure of the optical fiber. Pratten is directed towards a catheter system and method for ablating a tissue. Pratten discloses a beam being output from a proximal end of the fiber (e.g. Par. [0176]: the sensing beam travels to the proximal end of the fiber; Fig. 2D: sensing beam 140 going towards proximal end of the fiber).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Yu in view of Diao to include the beam being output from a proximal end of the fiber as taught by Pratten because doing so would allow monitoring of the sensing beam.
However, Yu in view of Diao and Pratten fail to specifically disclose the monitoring beam being used to detect flexure of the optical fiber. Younge, in a similar field of endeavor, is directed towards measuring bending in optical fibers. Younge discloses using a light beam to detect bending of the optical fiber (e.g. Par. [0112]: using the reflected light to determine bending of the optical fiber).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Yu in view of Diao and Pratten to include detecting flexure of the optical fiber as taught by Younge because doing so would allow determination of the spatial position and orientation of the fiber while in use (e.g. Younge, par. [0005]).
Regarding claims 2 and 17, Yu further discloses wherein the traveling direction changing unit is a diffraction grating that is arranged on the holder member and diffracts the output beam (e.g. Par. [0054]: reflective surface 130 can be a binary diffraction surface).
Regarding claims 4 and 19, Yu further discloses wherein the distal end surface of the optical fiber from which the output beam is output is inclined with respect to an optical axis of the optical fiber (e.g. Par. [0006]: known to have a beveled end surface; Fig. 13: inclined surface 320).
Regarding claim 7, Yu further discloses wherein the distal end surface of the optical fiber from which the output beam is output is inclined with respect to an optical axis of the optical fiber, and the traveling direction changing unit is a reflector that is arranged on the distal end surface and that reflects the output beam (e.g. Par. [0006]: known to have a beveled end surface; Fig. 13: inclined surface 320; (e.g. Fig. 2: reflector 130 changes direction of output beam and is connected to member 114; Fig. 3: reflector 130 changes direction of output beam and is connected to main body 140; Fig. 5: reflector 230 changes direction of the output beam and is connected to member 184; Par. [0052]: reflective surface 130 promotes reflection of laser beam; Par. [0060]: laser beam reflected off of surface 130 to desired target; Par. [0067]: reflective surface 230).
Regarding claim 8, Yu further discloses wherein the holder member includes an insertion hole and an opening hole that communicates with the insertion hole and that is opened on a side surface with respect to a direction in which the insertion hole is extended, the optical fiber is inserted in the insertion hole of the holder member, the distal end surface protrudes to an inside of the opening hole, and the distal end surface of the optical fiber is oriented to a side opposite to an opening side of the opening hole (e.g. Fig. 3: dotted lines show insertion hole as having a smaller diameter than the diameter of the main body, optical fiber 112 is located at the insertion hole).
Regarding claims 9 and 22, Yu further discloses wherein the holder member has an approximately cylindrical outer shape (e.g. Par. [0059]: cylindrical socket; Par. [0066]: main body is cylindrical).
Regarding claims 10 and 23, Yu discloses wherein the reflection mechanism that reflects the monitoring beam with the certain wavelength different from the wavelength of the output beam has reflectivity with respect to the monitoring beam with the certain wavelength different from the wavelength of the output beam (e.g. Par. [0073]: the reflector transmits the beam at 420nm and reflects beam at 532nm; Par. [0052]: reflective surface 130 promotes reflection of laser beam; Par. [0060]: laser beam reflected off of surface 130 to desired target; Par. [0067]: reflective surface 230). Yu discloses the claimed invention except for the reflectivity being 4% or higher. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the invention as taught by Yu in view of Diao, Pratten, and Younge with the reflectivity being 4% or higher, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art [In re Aller, 105 USPQ 233].
Regarding claims 11 and 24, Yu discloses wherein the reflection mechanism that reflects the monitoring beam with the certain wavelength different from the wavelength of the beam has reflectivity with respect to the monitoring beam with the certain wavelength different from the wavelength of the output beam (e.g. Par. [0073]: the reflector transmits the beam at 420nm and reflects beam at 532nm; Par. [0052]: reflective surface 130 promotes reflection of laser beam; Par. [0060]: laser beam reflected off of surface 130 to desired target; Par. [0067]: reflective surface 230). Yu discloses the claimed invention except for the reflectivity being 40% or higher. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the invention as taught by Yu in view of Diao, Pratten, and Younge with the reflectivity being 40% or higher, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art [In re Aller, 105 USPQ 233].
Regarding claims 12 and 25, Yu further discloses wherein the certain wavelength of the monitoring beam different from the output beam is separated by 3 nanometers or more from the wavelength of the beam (e.g. Par. [0073]: wavelengths of 420nm and 532nm are separated by more than 3 nanometers).
Regarding claims 13 and 26, Yu fails to disclose a plurality of reflectors or Bragg gratings that reflect a plurality of beams with wavelengths different from the wavelength of the output beam. Younge, in a similar field of endeavor, is directed towards measuring bending in optical fibers. Younge discloses a plurality of Bragg gratings that reflect a plurality of beams with wavelengths different from the wavelength of the beam to determine the position or deflection of the instrument (e.g. Par. [0085]: fiber with different gratings that each have a corresponding wavelength spectra).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Yu in view of Diao, Pratten, and Younge to include the Bragg gratings as taught by Younge because doing so would allow determination of the position or deflection of the instrument (e.g. Younge, par. [0085]).
Regarding claims 14 and 27, Yu further discloses the certain wavelength of the monitoring beam different from the output beam belongs to one of a visible region, an O band, and a C band (e.g. Par. [0073]: wavelength of 532nm is in the visible range). However, Yu fails to disclose wherein the wavelength of the output beam belongs to a 980-nanometer wavelength range. Pratten, in a similar field of endeavor, is directed towards a catheter system for tissue ablation. Pratten discloses the ablating beam having a wavelength of 808nm – 980nm (e.g. Par. [0082]; Par. [0117]; Par. [0151]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Yu in view of Diao, Pratten, and Younge to include the wavelength belonging to a 980nm range as taught by Pratten because doing so would provide an optical beam to perform ablation.
Regarding claims 15 and 28, Yu further discloses wherein a core diameter of the optical fiber is 65 micrometers or larger (e.g. Par. [0076]: optical fiber with core diameter of 500 micrometers).
Regarding claims 40 and 41, Yu fails to disclose wherein flexure of the optical fiber is detected based on attenuation of the monitoring beam reflected from the distal end surface of the optical fiber and received at the proximal end of the optical fiber. Younge, in a similar field of endeavor, is directed towards measuring bending in optical fibers. Younge discloses using a light beam to detect bending of the optical fiber (e.g. Par. [0112]: using the reflected light to determine bending of the optical fiber).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Yu in view of Diao, Pratten, and Younge to include detecting flexure of the optical fiber as taught by Younge because doing so would allow determination of the spatial position and orientation of the fiber while in use (e.g. Younge, par. [0005]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHREYA P ANJARIA whose telephone number is (571)272-9083. The examiner can normally be reached M-F: 8:00-5:00 EST.
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/SHREYA ANJARIA/Examiner, Art Unit 3796
/NIKETA PATEL/Supervisory Patent Examiner, Art Unit 3792
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