DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
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 79-81 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.
Claim 79 recites the limitation “whereby the adaptive optic device corrects the laser beam thereby by reducing aberrations in the laser beam.” However, it is unclear how such an adaptive optic can “correct the laser beam thereby by reducing aberrations in the laser beam.” Specifically, it is unclear if the “correction” results in reduced aberrations or if the reduced aberrations induced provide the correction.
Additionally, this limitation is unclear as it recites functional language without providing a discernable boundary on what element/structure of the adaptive optic performs the function. Specifically, it is unclear if a specific material/structure/element must be present in the adaptive optic to perform the function of correcting the laser beam thereby by reducing aberrations in the laser beam. As such, the metes and bounds of the claim cannot be discerned and the claim is unclear. See Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc) (“Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim”) (MPEP § 2173.05(g)).
Furthermore, the term “reducing aberrations” in claim 1 is a relative term which renders the claim indefinite. The term “reducing” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what the claimed aberrations should be “reduced” with respect to as it is unclear that any aberrations are positively required.
For the purposes of examination, any deformable mirror will be interpreted as reading on the claimed limitation, as such a structure is capable of correcting aberrations in a laser beam.
Claims 80-81 are rejected as being dependent upon claim 79 and failing to cure the deficiencies of the rejected base claim.
Claim 81 recites the limitation "said received light" in line 2. There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 81 depends upon claims 79 and 80 which do not recite “received light” but rather recite a “laser beam.” It is unclear if the “received light” of claim 81 is intended to be the laser beam or additional light. For the purposes of examination, “said received light” will be interpreted as “said received laser beam.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 79-81 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Abe et al. (U.S. Patent No. 6,002,661; hereinafter – “Abe”).
Regarding claim 79, Abe teaches an ophthalmic laser system, comprising:
a) a laser source (65) configured to generate a laser beam (See e.g. Figs. 19-20; C. 15, L. 63 – C. 16, L. 4);
b) an adaptive optic device comprising:
i) a beam splitting device (67, 69) (See e.g. Figs. 19-20; C. 15, L. 63 – C. 16, L. 4) comprising: an input side (side of lens 62) for receiving the laser beam (See e.g. Figs. 19-20; C. 15, L. 63 – C. 16, L. 4); and an output side (side of lens 61) for transmitting the laser beam (See e.g. Figs. 19-20; C. 15, L. 63 – C. 16, L. 4); and
ii) a deformable mirror (30) that receives said received laser beam from said input side and directs said received laser beam to said output side (See e.g. Figs. 19-20; C. 15, L. 63 – C. 16, L. 4);
c) whereby the adaptive optic device corrects the laser beam thereby by reducing aberrations in the laser beam (See e.g. Figs. 19-20; C. 15, L. 63 – C. 16, L. 4).
Regarding claim 80, Abe teaches the system of claim 79, as above.
Abe further teaches that said beam splitting device comprises a polarization beam splitter cube (69) (See e.g. Figs. 19-20; C. 15, L. 63 – C. 16, L. 4).
Regarding claim 81, Abe teaches the system of claim 80, as above.
Abe further teaches a quarter wave plate (67) that receives said received light from said input side (side of lens 62) and directs said received light to said deformable mirror (30) (See e.g. Figs. 19-20; C. 15, L. 63 – C. 16, L. 4).
Claim(s) 79-81 is/are additionally rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Aoki et al. (U.S. PG-Pub No. 2007/0165312; hereinafter – “Aoki”).
Regarding claim 79, Aoki teaches an ophthalmic laser system, comprising:
a) a laser source configured to generate a laser beam;
b) an adaptive optic device comprising:
i) a beam splitting device (72, 73) (See e.g. Figs. 1 and 12-13; Paragraphs 0059-0063 and 0162-0169) comprising: an input side (side facing lens CL) for receiving the laser beam (See e.g. Figs. 1 and 12-13; Paragraphs 0059-0063 and 0162-0169); and an output side (side facing lens 71) for transmitting the laser beam (See e.g. Figs. 1 and 12-13; Paragraphs 0059-0063 and 0162-0169); and
ii) a deformable mirror (1, 20, 30, 40, 45, 50) that receives said received laser beam from said input side and directs said received laser beam to said output side (See e.g. Figs. 1 and 12-13; Paragraphs 0059-0063 and 0162-0169);
c) whereby the adaptive optic device corrects the laser beam thereby by reducing aberrations in the laser beam (See e.g. Figs. 1 and 12-13; Paragraphs 0059-0063 and 0162-0169).
Regarding claim 80, Aoki teaches the system of claim 79, as above.
Aoki further teaches that said beam splitting device comprises a polarization beam splitter cube (72) (See e.g. Figs. 1 and 12-13; Paragraphs 0059-0063 and 0162-0169).
Regarding claim 81, Aoki teaches the system of claim 80, as above.
Aoki further teaches a quarter wave plate (73) that receives said received light from said input side (side facing lens CL) and directs said received light to said deformable mirror (1, 20, 30, 40, 45, 50) (See e.g. Figs. 1 and 12-13; Paragraphs 0059-0063 and 0162-0169).
Claim(s) 79-81 is/are additionally rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Wirth (U.S. Patent No. 6,595,642).
Regarding claim 79, Wirth teaches an ophthalmic laser system, comprising:
a) a laser source (51) configured to generate a laser beam (See e.g. Figs. 3-6 and 27; C. 12, L. 36-46; C. 14, L. 51 – C. 15, L. 20);
an adaptive optic device (53, 101) comprising:
i) a beam splitting device (101) comprising: an input side (side of 103 facing illumination source) for receiving the laser beam; and an output side (side of 109 facing phase compensator) for transmitting the laser beam (See e.g. Figs. 3-6 and 27; C. 13, L. 27-44; C. 13, L. 63 – C. 15, L. 20); and
ii) a deformable mirror (53) that receives said received laser beam from said input side and directs said received laser beam to said output side (See e.g. Figs. 3-6 and 27; C. 13, L. 27-44; C. 13, L. 63 – C. 15, L. 20);
c) wherein the adaptive optic device corrects the laser beam thereby by reducing aberrations in the laser beam (See e.g. Figs. 3-6 and 27; C. 13, L. 27-44; C. 13, L. 63 – C. 15, L. 20: “The wavefront sensor 55 measures the phase aberrations in the wavefronts incident thereon (which are derived from retinal reflections of the wavefront sensing illumination source 51) and operates in a closed-loop fashion with controller 57 to control the phase compensator 53 to spatially modulate the phase of the image of the wavefronts incident thereon to compensate for such phase aberrations thereon to thereby restore the distorted wavefronts to phase-aligned wavefronts, which are directed to the wavefront sensor 55 (for further wavefront measurement and compensation if required)”).
Regarding claim 80, Wirth teaches the system of claim 79, as above.
Wirth further teaches that said beam splitting device (101) comprises a polarization beam splitter cube (103, 109) (See e.g. Figs. 3-6 and 27; C. 13, L. 27-44; C. 13, L. 63 – C. 15, L. 20).
Regarding claim 81, Wirth teaches the system of claim 80, as above.
Wirth further teaches a quarter wave plate (105, 111) that receives said received light from said input side (side of 103 facing illumination source) and directs said received light to said deformable mirror (53) (See e.g. Figs. 3-6 and 27; C. 13, L. 27-44; C. 13, L. 63 – C. 15, L. 20).
Claim(s) 79-81 is/are additionally rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Larichev et al. (U.S. PG-Pub No. 2008/0018855; hereinafter – “Larichev”).
Regarding claim 79, Larichev teaches an ophthalmic laser system, comprising:
a) a laser source (1) configured to generate a laser beam (See e.g. Fig. 4; Paragraph 0096);
b) an adaptive optic device (2, 24, 25, 26, 27) comprising:
i) a beam splitting device (2, 24, 25) comprising: an input side for receiving the laser beam; and an output side for transmitting the laser beam (See e.g. Fig. 4; Paragraphs 0133-0134); and
ii) a deformable mirror (27) that receives said received laser beam from said input side and directs said received laser beam to said output side (See e.g. Fig. 4; Paragraphs 0133-0134);
c) wherein the adaptive optic device corrects the laser beam thereby by reducing aberrations in the laser beam (See e.g. Fig. 4; Paragraphs 0133-0134).
Regarding claim 80, Larichev teaches the system of claim 79, as above.
Larichev further teaches that said beam splitting device (2, 24, 25) comprises a polarization beam splitter cube (2, 24) (See e.g. Fig. 4; Paragraphs 0133-0134).
Regarding claim 81, Larichev teaches the system of claim 80, as above.
Larichev further teaches a quarter wave plate (25) that receives said received light from said input side and directs said received light to said deformable mirror (27) (See e.g. Fig. 4; Paragraphs 0133-0134).
Claim(s) 79-80 is/are additionally rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Williams et al. (U.S. Patent No. 5,777,719; hereinafter – “Williams”).
Regarding claim 79, Williams teaches an ophthalmic laser system, comprising:
a) a laser source (102) configured to generate a laser beam (See e.g. Fig. 1; C. 4, L. 21-47);
an adaptive optic device (110, 112, 114, 116, 118, 120, 122, 124) comprising:
i) a beam splitting device (110) comprising: an input side (side facing 106) for receiving the laser beam; and an output side (side facing 112) for transmitting the laser beam (See e.g. Fig. 1; C. 4, L. 21-63); and
ii) a deformable mirror (118) that receives said received laser beam from said input side and directs said received laser beam to said output side (See e.g. Fig. 1; C. 4, L. 21-63; C. 5, L. 12-40);
c) wherein the adaptive optic device corrects the laser beam thereby by reducing aberrations in the laser beam (See e.g. Fig. 1; C. 4, L. 21-63; C. 5, L. 12-40).
Regarding claim 80, Williams teaches the system of claim 79, as above.
Williams further teaches that said beam splitting device (110) comprises a polarization beam splitter cube (See e.g. Fig. 1; C. 4, L. 21-63).
Response to Arguments
Applicant's arguments, see page 3, filed 10/21/2025, regarding the 35 U.S.C. 102 rejection in view of Abe have been fully considered but they are not persuasive.
Applicant argues that “the claims have been amended to avoid Abe. Abe relates to optical data systems such as DVDs and CDs. It does not relate to ophthalmic systems.” However, Examiner respectfully disagrees.
Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 1. When reading the preamble in the context of the entire claim, the recitation “an ophthalmic laser system” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). To be clear, “an ophthalmic laser system” imparts no additional structure on the claim and merely indicates a purpose or an intended use of the system including a laser and adaptive optic recited in the claim, namely as an ophthalmic laser system, rather than any distinct definition of any of the claimed invention’s limitations. As such, the recitation of “an ophthalmic laser system” is not considered a limitation and is of no significance in the claim construction, Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (See MPEP §2111.02). Thus, Examiner maintains that Abe anticipates the claims.
Additionally, Examiner notes that claims 79-81 were also rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Aoki et al. (U.S. PG-Pub No. 2007/0165312; hereinafter – “Aoki”). Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Nevertheless, and in the interest of compact prosecution, Examiner further submits references Werth, Larichev, and Williams. Applicant’s arguments are further moot upon further consideration and a new ground(s) of rejection made in view of each of Werth, Larichev, and Williams, as detailed above and necessitated by Applicant’s amendments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hammer et al. (U.S. Patent No. 7,758,189) teaches stabilized retinal imaging with adaptive optics reading on the claimed invention.
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 Nicholas R Pasko whose telephone number is (571)270-1876. The examiner can normally be reached M-F 8 AM - 5 PM.
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Nicholas R. Pasko
Primary Examiner
Art Unit 2896
/Nicholas R. Pasko/Primary Examiner, Art Unit 2896