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 .
Response to Arguments
Applicant's arguments filed 06/08/2026 have been fully considered but they are not persuasive. Applicant argues that the cited arts of Murphy in view of Benedictus do not teach the two optical fiber system, in parallel and connected by an optical interface. This limitation requires a rejection under U.S.C. 112(a) as there no disclosure, in either the Specification or the Drawings, showing that there are two optical fibers parallel to one another. There are, however, two optical fibers aligned, see Fig. 4a. The Examiner is interpreting based on Fig. 4a and the arguments presented by Applicant that the intention was to limit the two fibers as being aligned, and is providing citations and arguments to this interpretation for the purpose of expediting prosecution. A 112(a) rejection has been added in light of these issues.
Even under the interpretation that the two optical fibers should be aligned, Applicant’s argument is unpersuasive. Murphy teaches that the drill tip can be a fiber tip (Col. 7, Lines 32-35, “Both the embodiments of FIGS. 6 and 7 feature optical lenses, or fiber tips, and/or mirrors which guide the laser energy into predetermined fields adjacent the drill bits”), and that the optical fiber can be ben around the corner to be aligned with the tip (Col. 5, Lines 4-11, “The hand-piece 2 also preferably includes a mirror 20 which reflects laser energy 4 from a laser waveguide 22 down through the turbine 16, through the drill bit 6, and to the tooth 8. In an alternative form, the mirror 20 may be eliminated and the laser waveguide 22 may be bent downward to direct its energy through the turbine 16, the drill bit 6, and toward the tooth 8, for those laser wavelengths which propagate accordingly”), with an optical interface connecting the tip to the internal fiber (Col. 7, Lines 46-50, “In the preferred form, the bur 62 is made of high hardness/high heat metal such as carbide steel while the lens or lenses 102 comprises one or more biconvex optical lenses, attached to internal waveguides such as fiber optic waveguides”). For these reasons, the rejections below are maintained, and updated to account for the new claim language.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9, 12-15, and 21-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Regarding Claim 9, there is no disclosure provided to support that the first and second optical fiber are parallel to one another, only that the two fibers are aligned with one another (Fig. 1 where two optical fibers are touching). For the purposes of expediting prosecution, the Examiner will be interpreting that the language intended to mean the fibers were aligned.
Claims 12-15 and 21-22 are rejected based on their dependency to Claim 9.
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 9, 12-15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 5409376 awarded to Murphy et al, hereinafter Murphy, in view of U.S. Patent Publication 20070264626 awarded to DeBenedictis et al, hereinafter DeBenedictis.
Regarding Claim 9, Murphy teaches a shaft (handpiece 2, Fig. 1a), comprising: a face of the shaft that is configured to penetrate bone (drill bit 6, Fig. 1a, Col. 4, Lines 22-26, “FIG. 1A is a block diagram of a laser-assisted dental drill according to a preferred embodiment of the present invention. In FIG. 1, a hand-piece 2 is used to direct both laser energy 4 and the drill bit 6 toward the tooth 8”); and a first optical fiber within the shaft (Col. 6, Lines 15-30, “In FIG. 2A, a drill bit 60 comprises the passageway 14 and the drill bur 62. The specific structural details of the bur 62 are omitted for purposes of clarity. The wide variety of shapes and sizes of drill burs are well known to those of skill in this field. Such known burs may be adapted for use with the present invention depending on the specific purpose for which a specific drill bit 60 is intended. Preferably, the bur 62 is coated with a diamond or other abrasive texture to enhance the cutting operation. Preferably, the passageway 14 is coated with a reflective substance 64 in order to deliver as much laser power to the tooth as possible. However, the passageway 14 may be non-coated, or coated with a light modulating substance depending upon the laser power and focus desired to be delivered to the tooth. It may even be filled with a light-guiding fiber bundle”) to propagate laser light generated by a laser light source to the face of the shaft to create an ultrasonic emission at the face of the shaft (Col. 5, Lines 4-11, “The hand-piece 2 also preferably includes a mirror 20 which reflects laser energy 4 from a laser waveguide 22 down through the turbine 16, through the drill bit 6, and to the tooth 8. In an alternative form, the mirror 20 may be eliminated and the laser waveguide 22 may be bent downward to direct its energy through the turbine 16, the drill bit 6, and toward the tooth 8, for those laser wavelengths which propagate accordingly”, The Examiner notes that the creation of an ultrasonic emission at the face of the shaft is an inherent method effect of generating the laser emission at the face of the shaft. Where a reference discloses the terms of the recited method steps, and such steps necessarily result in the desired and recited effect, that the reference does not describe the recited effect in haec verba is of no significance as the reference meets the claim under the doctrine of inherency. Ex Parte Novitski, 26 USPQ2d 1389, 1390-91 (BdPatApp & Inter 1993)), wherein the shaft comprises one or more holes at the face of the shaft (Fig. 6; the holes being the spaces between burr 62 where the lenses 102 are located on the side faces of the burr; see explanation below), wherein the one or more holes are filled, at the face of the shaft, with a material that propagates the laser light and protects the optical fiber from being damaged or blocked during operation of the shaft (Col. 7, Lines 41-56, “In FIG. 6, the drill bit 100 comprises a helical bur 62 interspaced or surrounding one or more lenses 102. The lens or lenses 102 may comprise one integral structure having uniform or varying optical structures, or may comprise a plurality of lenses having similar or dissimilar optical properties. In the preferred form, the bur 62 is made of high hardness/high heat metal such as carbide steel while the lens or lenses 102 comprises one or more biconvex optical lenses, attached to internal waveguides such as fiber optic waveguides. The lens or lenses 102 should be configured to provide a laser energy pattern 104 which has its highest intensity adjacent the bur, and preferably from 0 to 0.5 millimeters from the surface of bur 62. The helical shape of the bur 62 provides enhanced cutting action while also acting to modulate the field intensity ore the laser energy”), wherein the laser light is customized with one or more parameters associated with a particular type of a tissue (Col. 2, Lines 26-34, “The laser energy (either pulsed or continuous wave) is modulated to cause the tooth structure to recrystallize into a chalky, charred, easily-removed material. The mechanical portion of the drill bur is then used to easily remove the structurally perturbed portion of the tooth. Thus, the laser energy is used to change the molecular structure of the tooth while the dentist still preserves his/her tactile sense for actually removing the structure”) wherein the laser light is absorbed by the tissue based on the one or more parameters and the laser light interacts with the tissue to generate an ultrasonic emission (as this limitation is directed to the material worked upon, it is intended use of the device and not given patentable weight, see MPEP 2115, “"[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).”), and an optical interface that connects a second optical fiber to the shaft (Col. 7, Lines 46-50, “In the preferred form, the bur 62 is made of high hardness/high heat metal such as carbide steel while the lens or lenses 102 comprises one or more biconvex optical lenses, attached to internal waveguides such as fiber optic waveguides”, Col. 7, Lines 32-35, “Both the embodiments of FIGS. 6 and 7 feature optical lenses, or fiber tips, and/or mirrors which guide the laser energy into predetermined fields adjacent the drill bits”), wherein the first optical fiber and the second optical fiber are aligned, enabling light to travel from the first optical fiber to the second optical fiber (Col. 7, Lines 32-35, “Both the embodiments of FIGS. 6 and 7 feature optical lenses, or fiber tips, and/or mirrors which guide the laser energy into predetermined fields adjacent the drill bits”). Murphy further teaches a need to differentiate between hard tissue of the tooth and soft tissue of the surrounding tissue to minimize damage (Col. 1, Lines 58-63, “Another problem with known dental laser systems applied to hard tissues is safety. Application of laser energy sufficient to remove hard tooth structure by ablation may cause some damage in soft tissues if the laser accidentally strays or is reflected from an instrument such as a dental mirror”), but Murphy does not teach wherein the generated ultrasonic emission is obtained by a ultrasound transducer device for analysis, and wherein the analysis causes at least one action to be performed.
However, in the art of laser medical treatments (abstract), DeBenedictis teaches detecting an ultrasonic reading from a laser treatment site (Para. 0066, “The ablated material 198 can be detected by the photodetector 172 when illuminated by the light source 171. The ablation event may also generate an acoustical signal that is detected by an ultrasonic transducer 173”), for the purposes of adjusting the beam parameters if the wrong tissue is detected (Para. 0041, “In yet another preferred embodiment, the controller 150 can direct the optical source 110 or the delivery system 140 to alter treatment as soon as a lipid-rich target is detected by the sensing element 170”, Para. 0054, “An acoustic transducer can be used, for example, to measure a signal generated as the result of ablation of skin 190. For example, an acoustic transducer could detect a characteristic (e.g., magnitude, frequency, resonance, or time of flight) of the small popping sound associated with the sudden expansion of tissue due to laser ablation. Since tissue material properties such as elasticity, absorption, and refractive index may affect the popping sound characteristics, the characteristics of the popping sound may correspond to the type of material being ablated and thus may be used to distinguish types of material such as lipid-rich material. This type of sensor has the advantage of being able to detect signals by nonoptical means, which reduces the need to clean sensitive optical components. It also has the advantage of allowing the signatures of lipid-rich targets lying in the region just below the hole by measuring changes in the signal resonance of one or more acoustical transducers. Multiple transducers may be used to more precisely locate (e.g., through triangulation) or to determine the extent of particular lipid-rich targets”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Murphy by DeBenedictis, i.e. by using the ultrasound transducer detection and feedback system of DeBenedictis in the system of Murphy, for the predictable purpose of using the system of DeBenedictis to improve the noted deficiency of Murphy in the same way.
Regarding Claim 12, Murphy modified by DeBenedicitis makes obvious the shaft of Claim 9. Murphy further teaches wherein the shaft is composed of a material to absorb a wavelength of light associated with the laser light (Col. 6, Lines 26-30, “However, the passageway 14 may be non-coated, or coated with a light modulating substance depending upon the laser power and focus desired to be delivered to the tooth. It may even be filled with a light-guiding fiber bundle”).
Regarding Claim 13, Murphy modified by DeBenedicitis makes obvious the shaft of Claim 9. Murphy further teaches wherein the shaft is a drill bit (drill bit 6, Fig. 1a).
Regarding Claim 14, Murphy modified by DeBenedicitis makes obvious the shaft of Claim 9. Murphy further teaches wherein the shaft is to create a hole in a bone using one or more cutting edges (Col. 2, Lines 20-24, “The present invention overcomes the above-noted problems of both laser and mechanical drills by combining their features into a single laser-assisted drill. Laser energy and mechanical energy are combined in one drill to both weaken and remove the tooth structure”).
Regarding Claim 15, Murphy modified by DeBenedicitis makes obvious the shaft of Claim 9. Murphy further teaches wherein an end of the shaft is to be inserted into an end of an optical interface of a surgical drill device (lens 102 of drill bit 6, Col. 8, Lines 18-21, “In use, the dentist selects from among a plurality of interchangeable, replaceable drill bits for a particular dental procedure, and installs the selected drill bit on the hand-piece 2”), wherein the optical interface transfers the laser light generated by the laser light source to the optical fiber (Col. 7, Lines 46-50, “In the preferred form, the bur 62 is made of high hardness/high heat metal such as carbide steel while the lens or lenses 102 comprises one or more biconvex optical lenses, attached to internal waveguides such as fiber optic waveguides”).
Regarding Claim 22, Murphy modified by DeBenedicitis makes obvious the shaft of claim 9. Murphy further teaches wherein the one or more holes at the face of the shaft stem from the optical fiber within the shaft, and wherein the one or more holes are configured to allow the propagated laser light to interact with materials external to the shaft, to create the ultrasonic emission (Col. 7, Lines 41-56, “In FIG. 6, the drill bit 100 comprises a helical bur 62 interspaced or surrounding one or more lenses 102. The lens or lenses 102 may comprise one integral structure having uniform or varying optical structures, or may comprise a plurality of lenses having similar or dissimilar optical properties. In the preferred form, the bur 62 is made of high hardness/high heat metal such as carbide steel while the lens or lenses 102 comprises one or more biconvex optical lenses, attached to internal waveguides such as fiber optic waveguides. The lens or lenses 102 should be configured to provide a laser energy pattern 104 which has its highest intensity adjacent the bur, and preferably from 0 to 0.5 millimeters from the surface of bur 62. The helical shape of the bur 62 provides enhanced cutting action while also acting to modulate the field intensity ore the laser energy.”).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murphy and DeBenefictis as applied to claim 9 above, and further in view of U.S. Patent Publication 20070264626 awarded to DeBenedictis et al, hereinafter DeBenedictis, further in view of U.S. Patent Publication 20040071409 awarded to Brown, hereinafter Brown.
Regarding Claim 21, Murphy modified by DeBenedicitis makes obvious teaches the shaft of Claim 9. As noted above, Murphy teaches the material is related to one or more lenses, however, Murphy does not teach diamond lenses.
However, in the art of laser drilling, Brown teaches the usage of diamond lenses at the end of an optical fiber (Para. 0037).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Murphy by Brown, i.e. by using the diamond lens of Brown in the device of Murphy, for the predictable purpose of simply substituting one known lens for another.
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 Jess Mullins whose telephone number is (571)-272-8977. The examiner can normally be reached between the hours of 9:00 a.m. to 5:00 p.m. PST M-F.
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, Unsu Jung, can be reached at (571)-272-8506. The fax number for the organization where this application or proceeding is assigned is (571)-273-8300.
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/JLM/
Examiner, Art Unit 3792
/UNSU JUNG/Supervisory Patent Examiner, Art Unit 3792
