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
Regarding the objection to claim 2, applicant’s cancellation of this claim has rendered the objection moot.
Regarding the 102 rejection to DeVoe, applicant’s arguments are moot, as this reference is no longer being used as a 102/primary reference. Instead, DeVoe is currently being used as an additional reference (in a new 103 rejection) to teach the claimed laser energy control system (previous dependent claim 12).
Regarding the 102/103 rejection of Buck/Tomita, applicant’s amendments have incorporated previous dependent claims 5-9 and 11-12, which have been previously addressed in the NF, and are substantially maintained in the new 103 rejection; see details below.
Regarding applicant’s argument that “Buck and Tomita do not disclose, teach, or suggest at least ‘wherein the galvanometer motor is configured to move the mirror between the first position and the second position by rotating the mirror about a mirror axis by a selected angle; wherein movement of the mirror is on a pulse-by-pulse basis in synchronization with a timing of the laser pulses’ in combination with the other elements of amended claim 1”. The examiner contends that the limitation “the galvanometer motor configured to move the mirror between the first position and the second position by rotating the mirror about a mirror axis by a selected angle” has been previously addressed by Nakamura, which is being substantially maintained in the current rejection. It is emphasized that applicant has not presented any arguments related to this previously-presented rejection of Nakamura, and more particularly has presented no arguments related to the official notice taken by the examiner. Based on MPEP 2144.03 “If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. See Ahlert, 424 F.2d at 1091, 165 USPQ at 420”. Regarding the limitation “wherein movement of the mirror is on a pulse-by-pulse basis in synchronization with a timing of the laser pulses”, the examiner contends that the shutter mirror taught by the combination of Buck, Tomita and Nakamura include all of the necessary structural elements/configurations in order to be capable of such a function. See citations from MPEP 2114 below.
MPEP 2114 states:
“[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.
Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 and/or 35 U.S.C. 103 may be appropriate.
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 1, 3, 4 and 10 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.
The limitation “wherein movement of the mirror is on a pulse-by-pulse basis in synchronization with a timing of the laser pulses” fails the written description requirement, specifically the bolded portion. While the specification discloses a controller that controls the shutter on a pulse-by-pulse basis, the specification never discloses/details/explains any synchronization with a timing of the laser pulses or how this synchronization is provided. Therefore, this limitation fails the written description requirement.
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 1, 3, 4 and 10 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.
The limitation “wherein movement of the mirror is on a pulse-by-pulse basis in synchronization with a timing of the laser pulses” is indefinite, as it unclear if/how this serves to further limit the structure of the mirror, as seemingly any/all motor controlled shutter/mirrors are inherently capable of such a movement. Stated differently, it’s unclear when infringement would occur for this limitation. Would infringement occur when a mirror is capable of the claimed movement/synchronization or would infringement only occur when a mirror actually moves in the claimed manner? For examination purposes, the examiner contends that this is a purely functional limitation of a mirror, and only a mirror that is capable of moving in the claimed synchronized manner is required by the claim language.
Claim Rejections - 35 USC § 103
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, 3, 4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0188166 to Buck et al. in view of US 6,322,554 to Tomita in view of US 2002/0165525 to Nakamura and further in view of US 2011/0001950 to DeVoe.
[Claims 1, 4 and 10] A laser system comprising:
a laser (laser engine 200) configured to emit electromagnetic radiation in pulses (“The laser engine 200 may be a regenerative femtosecond laser amplifier configured to provide a repetitively pulsed femtosecond laser beam collimated along a laser axis”; Par 0082);
and a laser shutter assembly (reconfigurable optical device/mirror 270) comprising a shutter and shutter motor (Par 0139 details that the repositioning of the mirror may be performed automatically. The examiner takes the position that the automatic repositioning of a mirror requires a motor. If applicant disagrees, see Tomita below);
a controller (Par 0139)
a laser energy control system configured to regulate an amount of electromagnetic energy of each laser pulse that exits the laser system (beam shaper module 300; Pars 0122 and 0130, specifically the discussion of “clip level”);
wherein the shutter comprises a mirror (mirror 270);
wherein the shutter motor is configured to move the shutter in an alternating manner between a first position in which electromagnetic radiation emitted by the laser is allowed to be output from the laser system and a second position in which electromagnetic radiation emitted by the laser is prevented from being output from the laser system (first position 71 and second position 72; Pars 0138-139; Fig. 19);
wherein movement of the mirror is on a pulse-by-pulse basis in synchronization with a timing of the laser pulses (Buck discloses all of the necessary structure to be inherently capable of the claimed function; MPEP 2114. If applicant disagrees, see further discussion, below);
wherein the controller is configured to send signals to the shutter motor driver to control moving the shutter between the first position and the second position (Par 0139; The examiner takes the position that this inherently requires sending signal to a shutter motor driver. However, if applicant disagrees, see Tomita below);
As discussed above, the examiner takes the position that Buck inherently teaches a motor and controller that sends signal to the motor driver, in order to automatically reposition the mirror. However, if applicant disagrees, Tomita, in the same field of endeavor, teaches a similar laser ophthalmic surgical device (Fig. 2) including a shutter (14) automatically controlled with a motor (43) and control unit (30) for driving the motor; Col 4, lines 59-62). Furthermore, Tomita discloses “numeral 43 is a motor connected to the shutter 14 for driving the shutter 14 to open or close. Numeral 44 is a driving circuit which is controlled in response to a control signal from the control unit 30 for driving the motor 43”. Therefore, in the situation where Buck does not inherently teach a motor, shutter motor driver and controller to automatically control the position of the mirror, then it would be obvious to modify the shutter/controller of Buck to include a motor, shutter motor driver and controller, as taught by Tomita, to automatically control the positioning, e.g. open or close, of the shutter, as this is a commonly known/used configuration to control the position of a shutter.
Buck and Tomita are discussed above, but fail to explicitly teach that the reconfigurable/repositionable mirror (270) is rotated, i.e. the orientation of the mirror is changed, in order to position the mirror into and out of the beam path (50) of laser (200). However, in the same field of endeavor, Nakamura discloses a rotatable mirror (48, Fig. 2) that is controlled by a motor to be inserted into and removed from the optical path of the beam (Par 0033), by rotating the mirror from 45° (when located in the path) to 180° (when removed from the path). As can be seen in Fig. 2, when the mirror is located outside of the beam path, i.e. 180°, the mirror axis and the beam path are in a skew line relationship with each other, i.e. they do not intersect. See applicant’s Figs. 3 and 8 which show the shutter in the same skew line relationship. Therefore, it would have been obvious to substitute the linearly-moving shutter mirror (270, Fig. 19) of Buck for the rotating shutter mirror (48, Fig. 2) of Nakamura as a simple substitution of one known element for another to obtain predictable results, as they both function to provide the same effect, i.e. allowing and blocking light based on the mirror positions.
Regarding the galvanometer motor, Nakamura discloses a motor that causes the mirror to rotate, but is silent as to the specific type of motor. The examiner takes official notice that a galvanometer motor is known and used in the art to rotate a mirror. Therefore, it would have been obvious to one of ordinary skill in the art to choose/try any known/common type of motor to rotate the mirror, including a galvanometer.
Buck, Tomita and Nakamura are discussed above, but fail to teach the specifics of the laser energy control system. However, DeVoe discloses a similar laser system that includes a laser energy control system (power control 40) configured to regulate an amount of laser energy of each laser pulse that exits the laser beam (Pars 0087-93), comprising a waveplate (half-wave plate; HWP; 92, Fig. 6), waveplate motor (“high-speed galvanometer motor rotates the HWP”; Par 0091) and polarizer plate (polarizing beam splitter; PBS or polarizer; 93, Fig. 6). The waveplate motor is configured to function in the claimed manner, by controlling the rotation/angle of the half-wave plate; see at least Pars 0091-92 and MPEP 2114. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the laser energy control system of Buck with the laser energy control system of DeVoe, as a simple substitution of one known laser energy control system for another to obtain predictable results, i.e. regulate an amount of laser energy of each pulse that exits the laser beam.
Regarding the limitation “wherein movement of the mirror is on a pulse-by-pulse basis in synchronization with a timing of the laser pulses”, as discussed above, the examiner contends that Buck or the combination of Buck, Tomita, Nakamura teach all of the necessary structure related to a shutter mirror to be capable of functioning in the claimed manner. If applicant disagrees, then the examiner takes the position that such a function is obvious. Specifically, when considering that Buck discloses a pulsed laser, it stands to reason that the only way a shutter can operate to allow and/or block pulses of light it must be synchronized with the pulses, otherwise it would cease to function, i.e. if the mirror wasn’t synchronized with the pulses it wouldn’t direct them when desired or block them when desired. Regarding the pulse-by-pulse limitation, it’s the examiner’s position that there are only two ways in which the shutter can function: 1. pulse-by-pulse, i.e. each pulse individually, or 2. As a group/plurality of pulses. Applicant has provided no criticality or unexpected result to pulse-by-pulse control (in fact, applicant’s specification makes it clear that both are equal options). Therefore, it would be obvious to try either option, including pulse-by-pulse control, as this is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
[Claim 3] As shown in Fig. 19 and disclosed in Pars 0138-139, the first position (71) is located in the path of laser (200) to direct the laser beam (50) to the eye (10), i.e. allowed to be output from the laser system, and the second position (72) is located out of the path of laser (200) so that laser beam (50) is directed to laser beam diagnostic (750), i.e. prevented from output from the laser system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2012/0136342 to Bischoff discloses a pulse-by-pulse control of an ophthalmic laser device (pulse selecting/picking; at least Abstract, Pars 0013 and 0016).
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 Lynsey C Eiseman whose telephone number is (571)270-7035. The examiner can normally be reached Monday-Thursday and alternating Fridays 7 to 4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at 571-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796