DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/04/2026 has been entered.
Claim Objections
Claim 79 is objected to because of the following informalities:
Claim 79 recites “whereby the system is configured to provide a focused laser beam in the crystal[ine lens.” However, this limitation appears to include a typographical error and it appears that “the crystal[ine lens” should be “the crystalline lens.” Appropriate correction is required.
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 is configured to reduce aberrations in the laser beam.” However, it is unclear how such an adaptive optic can “reduce aberrations in the laser beam.” Specifically, it is unclear that the laser beam should include any aberrations, and as such, it is unclear how the adaptive optic device can be “configured to reduce aberrations in the laser beam.”
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 “reduce aberrations” in claim 1 is a relative term which renders the claim indefinite. The term “reduce” 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.
Claim 79 further recites “whereby the focused laser beam is capable of causing photodisruption of the crystalline lens.” However, it is unclear what structure is required such that the focused laser beam is “capable of causing photodisruption of the crystalline lens.” Specifically, it is unclear if this limitation is intended to require a specific power of the laser beam, a specific focusing structure, or some other structure that would make the system “capable of causing photodisruption of the crystalline lens.” As such, the metes and bounds of the claim are unclear. For the purposes of examination, any system that provides a focused laser beam to a crystalline lens will be interpreted as reading on the claimed limitation.
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 “the adaptive optic device of claim 79.” There is insufficient antecedent basis for this limitation in the claim. Specifically, claim 81 depends upon claim 79 which recites “an ophthalmic surgery laser system for generating a focused laser beam to provide incisions in a crystalline lens of an eye.” It is unclear if claim 81 is intended to refer to the “system” of claim 79, or if claim 81 is further detailing specifics of the adaptive optic within the system. For the purposes of examination, this limitation will be interpreted as “the system of claim 79.”
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 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Larsen (U.S. PG-Pub No. 2010/0292676).
Regarding claim 79, Larsen teaches an ophthalmic surgery laser system for generating a focused laser beam to provide incisions in a crystalline lens of an eye, the system comprising:
a) a laser source (4) configured to generate a laser beam (See e.g. Figs. 2 and 4-5; Paragraphs 0097-0111 and 0113-0114);
b) an adaptive optic device comprising:
i) a beam splitting device (1) comprising: an input side (5) for receiving the laser beam; and an output side (7) for transmitting the laser beam (See e.g. Fig. 2; Paragraphs 0103-0111); and
ii) a deformable mirror (14) that receives said received laser beam from said input side and directs said received laser beam to said output side (See e.g. Fig. 2; Paragraphs 0060-0061 and 0103-0111);
c) an x-y-z translation device (6, 15, 23, 24) (See e.g. Fig. 2; Paragraphs 0103-0111);
d) a patient interface (20) (See e.g. Figs. 2 and 6; Paragraphs 0103-0111 and 0115);
e) the system configured such that the laser beam enters the adaptive optic device before entering the x-y-z translation device; and enters the x-y-z translation device before entering the patient interface (See e.g. Fig. 2; Paragraphs 0060-0061 and 0103-0111);
f) whereby the adaptive optic device is configured to reduce aberrations in the laser beam (See e.g. Fig. 2; Paragraphs 0060-0061 and 0103-0111),
g) whereby the system is configured to provide a focused laser beam in the crystalline lens; wherein the focused laser beam is capable of causing photodisruption of the crystalline lens (See e.g. Fig. 2; Abstract; Paragraphs 0060-0061 and 0103-0111).
Claim(s) 79 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Rathjen et al. (U.S. Patent No. 7,597,444; hereinafter – “Rathjen”).
Regarding claim 79, Rathjen teaches an ophthalmic surgery laser system for generating a focused laser beam to provide incisions in a crystalline lens of an eye, the system comprising:
a) a laser source (4) configured to generate a laser beam (See e.g. Figs. 1-2; C. 5, L. 28-49);
b) an adaptive optic device comprising:
i) a beam splitting device (12, 14, 16) comprising: an input side for receiving the laser beam; and an output side for transmitting the laser beam (See e.g. Figs. 1-2; C. 7, L. 43 – C. 9, L. 5); and
ii) a deformable mirror (14) that receives said received laser beam from said input side and directs said received laser beam to said output side (See e.g. Figs. 1-2; C. 6, L. 22-64; C. 7, L. 43 – C. 9, L. 5);
c) an x-y-z translation device (16) (See e.g. Figs. 1-2; C. 5, L. 62 – C. 6, L. 21; C. 7, L. 43 – C. 9, L. 5);
d) a patient interface (11) (See e.g. Figs. 1-2; C. 5, L. 28-61);
e) the system configured such that the laser beam enters the adaptive optic device before entering the x-y-z translation device; and enters the x-y-z translation device before entering the patient interface (See e.g. Figs. 1-2; C. 5, L. 62 – C. 6, L. 64; C. 7, L. 43 – C. 9, L. 5);
f) whereby the adaptive optic device is configured to reduce aberrations in the laser beam (See e.g. Figs. 1-2; C. 5, L. 62 – C. 6, L. 64; C. 7, L. 43 – C. 9, L. 5),
g) whereby the system is configured to provide a focused laser beam in the crystalline lens; wherein the focused laser beam is capable of causing photodisruption of the crystalline lens (See e.g. Figs. 1-2; C. 5, L. 28 – C. 6, L. 64; C. 7, L. 43 – C. 9, L. 5).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 80-81 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Larsen in view of Bor et al. (U.S. PG-Pub No. 2010/0133246; hereinafter – “Bor”).
Regarding claim 80, Larsen teaches the system of claim 79, as above.
Larsen fails to explicitly disclose that said beam splitting device comprises a polarization beam splitter cube.
However, Bor teaches a system and method for multibeam scanning comprising a laser source (4) configured to generate a laser beam; an adaptive optic device comprising: a beam splitting device (50) comprising: an input side for receiving the laser beam; and an output side for transmitting the laser beam; and a deformable mirror (58, 62) that receives said received laser beam from said input side and directs said received laser beam to said output side; an x-y-z translation device (20); a patient interface (28); the system configured such that the laser beam enters the adaptive optic device before entering the x-y-z translation device; and enters the x-y-z translation device before entering the patient interface, wherein said beam splitting device comprises a polarization beam splitter cube (54) (See e.g. Figs. 1 and 3; Paragraphs 0024-0026 and 0041-0046).
Bor teaches this polarization beam splitter cube “to provide a system and method for photoaltering a material that increases the effective repetition rate of the pulsed laser beam” and “to provide a system and method for photoaltering a material with a pulsed laser beam that improves dissection quality and while reducing scanning speed associated with the photoalteration” (Paragraph 0007).
Therefore, it would have been obvious to one having ordinary skill in the art before the time of the invention to modify the system of Larsen with the polarization beam splitter cube of Bor “to provide a system and method for photoaltering a material that increases the effective repetition rate of the pulsed laser beam” and “to provide a system and method for photoaltering a material with a pulsed laser beam that improves dissection quality and while reducing scanning speed associated with the photoalteration,” as taught by Bor (Paragraph 0007), and pursuant to In re Fout, 213 USPQ 532 (CCPA 1982), and/or In re O'Farrell, 7 USPQ2d 1673 (Fed. Cir. 1988), as it would have been obvious to an ordinarily skilled artisan at the time of invention to substitute the polarization beam splitter of reference Bor for the generic beam splitter of reference Larsen, since the result would have been predictable.
Regarding claim 81, Larsen teaches the adaptive optic device of claim 79, as above.
Larsen fails to explicitly disclose a quarter wave plate that receives said received laser beam from said input side and directs said received light to said deformable mirror.
However, Bor teaches a system and method for multibeam scanning comprising a laser source (4) configured to generate a laser beam; an adaptive optic device comprising: a beam splitting device (50) comprising: an input side for receiving the laser beam; and an output side for transmitting the laser beam; and a deformable mirror (58, 62) that receives said received laser beam from said input side and directs said received laser beam to said output side; an x-y-z translation device (20); a patient interface (28); the system configured such that the laser beam enters the adaptive optic device before entering the x-y-z translation device; and enters the x-y-z translation device before entering the patient interface, and a quarter wave plate (52, 56, 60) that receives said received laser from said input side and directs said received light to said deformable mirror (See e.g. Figs. 1 and 3; Paragraphs 0024-0026 and 0041-0046).
Bor teaches this quarter wave plate “to provide a system and method for photoaltering a material that increases the effective repetition rate of the pulsed laser beam” and “to provide a system and method for photoaltering a material with a pulsed laser beam that improves dissection quality and while reducing scanning speed associated with the photoalteration” (Paragraph 0007).
Therefore, it would have been obvious to one having ordinary skill in the art before the time of the invention to modify the system of Larsen with the quarter wave plate “to provide a system and method for photoaltering a material that increases the effective repetition rate of the pulsed laser beam” and “to provide a system and method for photoaltering a material with a pulsed laser beam that improves dissection quality and while reducing scanning speed associated with the photoalteration,” as taught by Bor (Paragraph 0007), and pursuant to In re Fout, 213 USPQ 532 (CCPA 1982), and/or In re O'Farrell, 7 USPQ2d 1673 (Fed. Cir. 1988), as it would have been obvious to an ordinarily skilled artisan at the time of invention to substitute the quarter wave plate and polarization beam splitter of reference Bor for the generic beam splitter of reference Larsen, since the result would have been predictable.
Claim(s) 80-81 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Rathjen in view of Bor.
Regarding claim 80, Rathjen teaches the system of claim 79, as above.
Rathjen further teaches that the beam splitting device comprises a polarization plate (C. 6, L. 31-59) but fails to explicitly disclose that said beam splitting device comprises a polarization beam splitter cube.
However, Bor teaches a system and method for multibeam scanning comprising a laser source (4) configured to generate a laser beam; an adaptive optic device comprising: a beam splitting device (50) comprising: an input side for receiving the laser beam; and an output side for transmitting the laser beam; and a deformable mirror (58, 62) that receives said received laser beam from said input side and directs said received laser beam to said output side; an x-y-z translation device (20); a patient interface (28); the system configured such that the laser beam enters the adaptive optic device before entering the x-y-z translation device; and enters the x-y-z translation device before entering the patient interface, wherein said beam splitting device comprises a polarization beam splitter cube (54) (See e.g. Figs. 1 and 3; Paragraphs 0024-0026 and 0041-0046).
Bor teaches this polarization beam splitter cube “to provide a system and method for photoaltering a material that increases the effective repetition rate of the pulsed laser beam” and “to provide a system and method for photoaltering a material with a pulsed laser beam that improves dissection quality and while reducing scanning speed associated with the photoalteration” (Paragraph 0007).
Therefore, it would have been obvious to one having ordinary skill in the art before the time of the invention to modify the system of Rathjen with the polarization beam splitter cube of Bor “to provide a system and method for photoaltering a material that increases the effective repetition rate of the pulsed laser beam” and “to provide a system and method for photoaltering a material with a pulsed laser beam that improves dissection quality and while reducing scanning speed associated with the photoalteration,” as taught by Bor (Paragraph 0007), and pursuant to In re Fout, 213 USPQ 532 (CCPA 1982), and/or In re O'Farrell, 7 USPQ2d 1673 (Fed. Cir. 1988), as it would have been obvious to an ordinarily skilled artisan at the time of invention to substitute the polarization beam splitter of reference Bor for the generic beam splitter and spatial polarization plate of reference Rathjen, since the result would have been predictable.
Regarding claim 81, Rathjen teaches the adaptive optic device of claim 79, as above.
Rathjen further teaches that the adaptive optic comprises a polarization plate (C. 6, L. 31-59) but fails to explicitly disclose a quarter wave plate that receives said received laser beam from said input side and directs said received light to said deformable mirror.
However, Bor teaches a system and method for multibeam scanning comprising a laser source (4) configured to generate a laser beam; an adaptive optic device comprising: a beam splitting device (50) comprising: an input side for receiving the laser beam; and an output side for transmitting the laser beam; and a deformable mirror (58, 62) that receives said received laser beam from said input side and directs said received laser beam to said output side; an x-y-z translation device (20); a patient interface (28); the system configured such that the laser beam enters the adaptive optic device before entering the x-y-z translation device; and enters the x-y-z translation device before entering the patient interface, and a quarter wave plate (52, 56, 60) that receives said received laser from said input side and directs said received light to said deformable mirror (See e.g. Figs. 1 and 3; Paragraphs 0024-0026 and 0041-0046).
Bor teaches this quarter wave plate “to provide a system and method for photoaltering a material that increases the effective repetition rate of the pulsed laser beam” and “to provide a system and method for photoaltering a material with a pulsed laser beam that improves dissection quality and while reducing scanning speed associated with the photoalteration” (Paragraph 0007).
Therefore, it would have been obvious to one having ordinary skill in the art before the time of the invention to modify the system of Rathjen with the quarter wave plate “to provide a system and method for photoaltering a material that increases the effective repetition rate of the pulsed laser beam” and “to provide a system and method for photoaltering a material with a pulsed laser beam that improves dissection quality and while reducing scanning speed associated with the photoalteration,” as taught by Bor (Paragraph 0007), and pursuant to In re Fout, 213 USPQ 532 (CCPA 1982), and/or In re O'Farrell, 7 USPQ2d 1673 (Fed. Cir. 1988), as it would have been obvious to an ordinarily skilled artisan at the time of invention to substitute the quarter wave plate and polarization beam splitter of reference Bor for the generic spatial polarization plate of reference Rathjen, since the result would have been predictable.
Response to Arguments
Applicant's arguments, see page 4, filed 06/04/2026, regarding the 35 U.S.C. 112(b) rejections have been fully considered but they are not persuasive.
Applicant argues that “the term ‘configured to reduce aberrations’, as now used in the claim, when the claim is read as a whole in view of the specification, would be readily understood by one of skill in the art.” However, Examiner respectfully disagrees and maintains that is unclear how such an adaptive optic can “reduce aberrations in the laser beam,” as detailed above. Specifically, it is unclear that the laser beam should include any aberrations, and as such, it is unclear how the adaptive optic device can be “configured to reduce aberrations in the laser beam. Further, 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.
Applicant’s arguments, see page 5, filed 06/04/2026, with respect to the rejection(s) of claim(s) 79 under 35 U.S.C. 102 have been fully considered but are moot upon further consideration and a new ground(s) of rejection made in view of Larsen or Rathjen, as detailed above.
Conclusion
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.
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, William Kraig can be reached at 571-272-8660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Nicholas R. Pasko
Primary Examiner
Art Unit 2896
/Nicholas R. Pasko/Primary Examiner, Art Unit 2896
Prosecution Insights