DETAILED ACTION
Response to Arguments
Applicant's arguments filed 13 November 2025 have been fully considered but they are not persuasive.
Rejections under 35 USC § 112(a):
The remarks take the position that determining the claimed first damage threshold and second damage threshold is supported in paragraphs [0011] and [0013].
This has been found unpersuasive. Specifically, paragraph [0011] and [0013] in combination only suggest determining damage thresholds over a range of laser writing parameters. This does not indicate how the thresholds are determined only a range of parameters the thresholds would like to be determined. In other words this is a result with no disclosure as to how the result is achieved.
The remarks further point to paragraphs [0060]-[0086] and suggest these paragraphs suggest these paragraphs disclose how different damage thresholds at different laser repetition rates. Specifically, the remarks point out that [0061] recites discuses investigating the “effect of repetition rate on both the induced RI change and the optical damage threshold.” This does not show possession of determining a damage threshold because investigating the effect on the optical damage threshold means that the damage threshold is known or determined. This again fails to show how the result of determining the damage threshold is achieved.
The remarks then point to paragraph [0062] as disclosing in part “energy damage threshold as a function of the repetition rate was investigated”. However, again there is no actual suggestion as to how the damage threshold is determined, only that the damage threshold may be investigated as a function of repetition rate. Here again, the only way to investigate damage threshold as a function of repetition rate, would require actual knowledge of the damage threshold. The claim requires determining first and second damage thresholds and paragraph [0062], does not remediate this deficiency in the disclosure.
The remarks further point to paragraphs [0064] for an experimental set up and paragraph [0066]. Specifically, at page 11 the remarks recite:
“For the power scaling experiments, it is explained that grating lines became brighter as the power was increased until the optical breakdown threshold was reached while the repetition rate and scan speed were kept the same. Paragraph [0066] further explains the new findings based on such experiments that usage of a lower repetition rate pulse train can result in much larger refractive index change at the same average power, but that lower repetition rate pulses also cause optical damage at a smaller average power. ”
Here, again the paragraph [0066] merely discusses 1) the power was increased until the optical breakdown threshold was reached and 2) that lower repetition rate pulses cause optical damage at a smaller average power. However, there is no suggestion as to how the breakdown threshold is determined.
The remarks continue discussing paragraphs [0067] and [0069], specifically noting that to map out the induced phase change at different repetition rates, the power tested started from a small value at which a small phase change can be measured by MZI and ended at a value where the sample damage occurs.
Here again, the specification merely suggests ending a test when sample damage occurs, however this does not suggest how the first and second damage thresholds are determined as required by claim 26. That is, to end power at a value where the sample damage occurs, one would have to have a means of determining sample damage. That is, while the specification is voluminous with regards to how the damage threshold is used, the specification is notably silent with respect to how the damage thresholds are determined. This amounts to a desired result with no disclosure as to how the result of determining the damage threshold is achieved.
The remarks continue with a discussion of paragraph [0072] and figures 4a-4d. While paragraph [0072] does suggest damage thresholds, there is no discussion of how these thresholds are determined. Indeed it appears that the graphs of figures 4a-d are generated by the disclosure in paragraph [0069]. However, paragraph [0069] has no discussion of how to determine when damage occurs.
Additionally, the remarks point out the damage thresholds correspond to the max phase changes reported in such figures for each repetition ration, which are the phase changes “before sample damage occurs”. Again, since there is no disclosed way of determining threshold damage, the specification fails to provide evidence the applicant was in possession of determining a damage threshold.
Lastly, the remarks point to paragraph [0102]. However again it is noted, while the plot stops just below the damage threshold, there is no disclosure as to how that any damage threshold is determined as required by claim 26.
Therefore, this portion of the remarks is unpersuasive and the rejection stands as reiterated herein below.
With regards to the failure to show possession of maximum phase shift obtained without causing optical damage in the ophthalmic devices, the remarks point to paragraphs [0104]-[0111] and [0113]-[0115]. This has been found unpersuasive. Specifically, as discussed above, the instant specification fails to disclose any procedure of determining damage thresholds, therefore any disclosure of maximum phases shift is insufficient as it is dependent upon being able to determine the damage threshold.
The remarks have been found unpersuasive and the rejection stands as reiterated herein below.
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 4-12, 14-15, 17, 19, 21, 23 and 26-28 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.
Claim 26 fails to meet the written description requirement by reciting “determining at least a first damage threshold for an induced single layer optical phase shift of the ophthalmic device at a first laser repetition rate between 1 and 60 MHz for a pulsed laser beam having a pulsewidth 350 femtoseconds and a wavelength in the range of 340 nm to 1100 nm, and determining a second damage threshold for an induced single layer optical phase shift of the ophthalmic device at a second laser repetition rate between 1 and 60 MHz for a pulsed laser beam having a pulsewidth less than 350 femtoseconds and a wavelength in the range of 340 nm to 1100 nm”. Specifically, the specification is devoid of any teaching as to how the determination of the damage thresholds occurs. MPEP 2161.01 (I) recites:
“Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.”
Here, the specification merely indicates that the damage thresholds are determined at a repetition rate, without any disclosure of how the damage thresholds are determined. Therefore, the step of determining damage thresholds is a result without any indication as to how intended the function to be performed.
Moreover, claim 26 fails to meet the written description requirement for “obtaining the maximum phase shift designed for the ophthalmic device without causing optical damage in the ophthalmic devices with a pulsed laser beam having a pulsewidth less than 350 femtoseconds, a repetition rate between 1 and 60 MHz, and a wavelength in the range of 340 nm to 1100 nm”. Specifically, the specification is silent with respect to how the maximum phase shift is obtained without causing optical damage in the ophthalmic devices. Specifically, paragraph [0101] teaches the maximum phase shift is obtainable “determined at applicable scanning speeds, numerical apertures, repetition rates or other factors”, however the specification is silent with respect to how the scanning speeds, numerical apertures, repetition rates or other factors are used to obtain the maximum phase shift such that damage in the ophthalmic device does not occur. Moreover, paragraph [0072] recites “Therefore, it is reasonable to conclude that the maximum achievable phase change just below the damage threshold also increases as the repetition rate increases by taking into account that the change in single pulse energy damage threshold is modest for the repetition rates from 5 MHz through 60 MHz”. That is, the maximum phase shift is dependent on determining/identifying the damage threshold, however as discussed above because the specification fails to disclose how the damage threshold is determined, the specification also fails to support how the maximum phase shift is obtained. Therefore, claim 26 fails to meet the written description requirement under 35 USC § 112(a).
Claims 4-12, 14-15, 17, 19, 21, 23 and 27-28 are rejected by virtue of their dependencies on rejected claim 26.
Conclusion
THIS ACTION IS MADE FINAL. 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 MICHAEL J LOGIE whose telephone number is (571)270-1616. The examiner can normally be reached M-F: 7:00AM-3:00PM.
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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881