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 Amendment
The amendment filed September 26, 2025 has been entered. Claims 1-4, 12 have been amended. Currently, claims 1-15 are pending for examination.
Response to Arguments
Applicant's arguments filed September 26, 2025 with regard to the 35 U.S.C. 102 rejection have been fully considered but they are not persuasive. Applicant argues (p. 9-11) the operating configuration recited in claim 1 enables to make sure that the device is working properly and that each time the laser intensity is controlled even in case the device has a failure, and that Godfried et al. (US 2017/0293229) does not disclose the operating configuration. Godfried et al. discloses multiple orientations of the optical system’s reflective elements ([0081], [0083], [0093]), one of which can be interpreted as the claimed “control configuration” as claim 1 has not yet defined the control configuration to be any specific configuration of the optical system except for the added limitation of the “control configuration in which the photodiode receives light emitted by the light source and measures a light intensity representative of an abnormal operating of the device”. In response to this added limitation, Godfried et al. discloses a controller that is configured to determine a fault with a reflective element of the array of reflective elements, reflecting light emitted by a light source (“radiation source” [0075]), from measurements made by an array of detector elements ([0026]), regarded as a photodiode. Godfried et al. discloses the array of detector elements 24 may be used to diagnose faulty reflective elements that become stuck in a particular orientation ([0155]), therefore meeting the claimed language of being in a control orientation in which the photodiode receives light emitted by the light source and measures a light intensity representative of an abnormal operating of the device.
Claim 12 recites similar claim language to claim 1 and is rejected to for the same reasons stated above.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the following as described in the specification:
Para. [0072] of the published application states, “In the first position (see FIG. 2), the reflector 30 reflects the incident beam towards the object 12.” but no object 12 is provided in Figure 2.
Para. [0073] states, “In the second position (see FIG. 3), the reflector 30 reflects the incident beam towards the photodiode 16.” but no photodiode 16 is provided in Figure 3.
Para. [0074] states, “In a third position (see FIG. 4), the reflector 30 reflects the incident beam neither to the object 12 nor to the photodiode 16.” but neither object 12 nor photodiode 16 is provided in Figure 4.
Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 5 is objected to because of the following informalities: line 4 recites, “a photodiode” and should be amended to recite “the photodiode” to reference the photodiode recited in claim 1. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: it appears that claim 15 should be directly dependent on claim 14 as it further defines the photoreactive proteins introduced in claim 14.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,400,311. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons below.
Application Claim
Patent Claim
Reason
1-5
2
The application claim is merely broader in scope than the patented claim.
6
2
The application claim is merely broader in scope than the patented claim.
7
3
The application claim is merely broader in scope than the patented claim.
8
4
The application claim is merely broader in scope than the patented claim.
9
5
The application claim is merely broader in scope than the patented claim.
10
6
The application claim is merely broader in scope than the patented claim.
11
7
The application claim is merely broader in scope than the patented claim.
12
2, 8
The application claim is merely broader in scope than the patented claim.
13
9
The application claim is merely broader in scope than the patented claim.
14
10
The application claim is merely broader in scope than the patented claim.
15
11
The application claim is merely broader in scope than the patented claim.
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 1-15 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 1 recites, “a first condition relative to the intensity at a given time” (lines 3-4) and “a second condition relative to a light dose received by the object during a time period” (lines 4-5). An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). In this instance, (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. For example, while there is support for specific conditions C1: the light intensity at any given time be inferior or equal to a maximum intensity; C2: the light intensity at any given time be superior or equal to a minimum intensity; and C3: the dose during the period of time be inferior or equal to a maximum value in paragraphs [0044-0046], [0054] (of the published application), there is no support for other conditions related to light intensity or dosage outside of the C1, C2 and C3 conditions.
Claim 1 recites, “a light source adapted to produce a beam whose intensity does not fulfill the first condition or the second condition” (lines 6-7). As stated above, a broad genus claim is presented with the claim limitation ““a first condition relative to the intensity at a given time” (lines 3-4) and “a second condition relative to a light dose received by the object during a time period” (lines 4-5). The specification lacks support with the use of these broad genus conditions by the controller to control the value of the first portion. Paragraph [0054] states, “In the remainder of the specification, it is assumed that the plurality of conditions to be fulfilled by the device 10 is the three conditions C1, C2 and C3.”. Then in para. [0056], the specification states, “The light source 14 is adapted to produce a beam whose intensity does not fulfill at least one of the conditions to the fulfilled.”, thus suggesting the “conditions” pertain to C1, C2 or C3. Paragraph [0057] sets forth an example where the light source 14 does not fulfill the first condition C1. Therefore, the above identified limitation is directed to a light source adapted to produce a beam whose intensity does not fulfill the three specific conditions C1, C2 and C3. No support is provided in the specification for the light source being adapted to produce a beam whose intensity does not fulfill the first condition and the second condition as currently broadly defined by the claims.
Claim 1 recites, “a controller adapted to control the value of the first portion based on the intensity measured on the photodiode when the device is in the control configuration and based on the first condition and the second condition” (lines 18-20). As stated above, a broad genus claim is presented with the claim limitation “a first condition relative to the intensity at a given time” (lines 3-4) and “a second condition relative to a light dose received by the object during a time period” (lines 4-5). The specification lacks support with the use of these broad genus conditions by the controller to control the value of the first portion. Paragraph [0084] and [0086] clearly sets forth the value of the first portion is based on the intensity measured on the photodiode when the device is in the control configuration and based on the three specific conditions C1, C2 and C3. No support is provided in the specification for the value of the first portion based on the first condition and the second condition as currently broadly defined by the claims.
Claim 1 recites, “deduce the first portion of light to be emitted in the operating configuration based on the determined light intensity and on the conditions to be fulfilled” (lines 24-25). As stated above, a broad genus claim is presented with the claim limitation ““a first condition relative to the intensity at a given time” (lines 3-4) and “a second condition relative to a light dose received by the object during a time period” (lines 4-5). The specification lacks support with the use of these broad genus conditions by the controller to deduce the first portion of light to be emitted in the operating configuration. Paragraph [0101] clearly sets forth deducing the first portion of light to be emitted in the operating configuration is based on the determined light intensity and on the three specific conditions C1, C2 and C3. No support is provided in the specification for the deduced portion of light to be emitted in the operating configuration based on the first condition and the second condition as currently broadly defined by the claims.
Claims 2-4 further define the first condition and the second condition. However, as explained above for claim 1, “a controller adapted to control the value of the first portion based on the intensity measured on the photodiode when the device is in the control configuration and based on the first condition and the second condition” (lines 18-20) and “deduce the first portion of light to be emitted in the operating configuration based on the determined light intensity and on the conditions to be fulfilled” (lines 24-25) requires all three conditions C1, C2, C3. Therefore individually reciting the limitations of claims 2, 3 and 4 do not clear up all the deficiencies of claim 1.
Claims 2-11 are rejected to for being dependent on and for failing to remedy the deficiencies of claim 1.
Claim 12 is rejected to for reciting the same deficient limitations as explained above for claim 1:
“a first condition relative to the intensity at a given time” (lines 3-4)
“a second condition relative to a light dose received by the object during a time period” (lines 4-5)
“a light source adapted to produce a beam whose intensity does not fulfill the first condition or the second condition” (lines 8-9)
“deducing the first portion of light to be emitted in the operating configuration based on the determined light intensity and on the conditions to be fulfilled” (lines 25-26).
Claims 13-15 are rejected to for being dependent on and for failing to remedy the deficiencies of claim 12.
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 1-15 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 1 recites, “deduce the first portion of light to be emitted in the operating configuration based on the determined light intensity and on the conditions to be fulfilled” (lines 24-25). There is insufficient antecedent basis for this limitation in the claim. The limitation, “conditions to be fulfilled” is no longer recited in claim 1. Additionally, confusion is likely given that lines 6-7 recite, “a light source adapted to produce a beam whose intensity does not fulfill the first condition or the second condition” and one in the art would be unsure if the “conditions to be fulfilled” is referencing what is recited in lines 6-7.
Claim 1 recites, “a photodiode adapted to measure the intensity of an incident beam” (line 8) and then states, “the photodiode receives light emitted by the light source and measures a light intensity” (lines 14-15). It is unclear if “the intensity of an incident beam” should be considered equivalent to the light intensity of the light emitted by the light source. For purposes of examination these limitations will be regarded as equivalent.
Claim 1 recites, “an abnormal operating of the device” (line 22). There is insufficient antecedent basis for this limitation in the claim. It is unclear of this “abnormal operating of the device” is the same or a different abnormal operating of the device as “the photodiode receives light emitted by the light source and measures a light intensity representative of an abnormal operating of the device” as recited in lines 14-15.
Claim 5 recites, “a third position in which the reflector reflects the incident beam neither to the object nor to the photodiode” and states that each reflector is commanded to be in the third position in the “control configuration”. However claim 1 has been amended to define the control configuration as “in which the photodiode receives light emitted by the light source and measures a light intensity representative of an abnormal operation of the device”. As stated above for claim 1, “intensity of an incident beam” is regarded as equivalent to the light intensity of the light emitted by the light source. Therefore the wording makes it unclear how claim 5 can recite an incident beam is not reflected to the photodiode in the control configuration when claim 1 recites the photodiode receives light in the control configuration.
Claim 6 recites, “wherein the controller is further adapted to deduce the number of reflectors to be moved in the control configuration and based on the conditions to be fulfilled and commanding the deduced number of mirrors to move in the first position”. With the amendments to claim 1, “conditions to be fulfilled” is no longer recited. Additionally, confusion is likely given that lines 6-7 recite, “a light source adapted to produce a beam whose intensity does not fulfill the first condition or the second condition” and one in the art would be unsure if the “conditions to be fulfilled” is referencing what is recited in lines 6-7. It is also unclear if the number of reflectors to be moved in the first position is based on three conditions: (1) on the intensity measured on the photodiode when the device is in the control configuration, (2) on the conditions to be fulfilled and (3) commanding the deduced number of mirrors to be moved in the first position or if it is based on two conditions: (1) on the intensity measured on the photodiode when the device is in the control configuration, and (2) on the conditions to be fulfilled, and there being a subsequent step of commanding the deduced number of mirrors to move in the first position. Furthermore, “the number of reflectors”, “the deduced number of mirrors” and “the first position” lack antecedent basis for this limitation in the claim.
Claims 2-11 are rejected to for being dependent on and for failing to remedy the deficiencies of claim 1.
Claim 12 is rejected to for reciting the same deficient limitations as explained above for claim 1:
“deducing the first portion of light to be emitted in the operating configuration based on the determined light intensity and on the conditions to be fulfilled” (lines 25-26).
Claim 12 recites, “a photodiode adapted to measure the intensity of an incident beam” (line 10) and then states, “the photodiode receives light emitted by the light source and measures a light intensity” (lines 16-17). It is unclear if “the intensity of an incident beam” should be considered equivalent to the light intensity of the light emitted by the light source. For purposes of examination these limitations will be regarded as equivalent.
Claim 12 recites, “an abnormal operating of the device” (line 23). There is insufficient antecedent basis for this limitation in the claim. It is unclear of this “abnormal operating of the device” is the same or a different abnormal operating of the device as “the photodiode receives light emitted by the light source and measures a light intensity representative of an abnormal operating of the device” as recited in lines 16-18.
Claims 13-15 are rejected to for being dependent on and for failing to remedy the deficiencies of claim 12.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 5-6, 8 is/are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Godfried et al. (US PG Pub 2017/0293229).
Regarding claims 1 and 12, Godfried et al. discloses a device and method for illuminating an object with a light intensity fulfilling, a first condition condition relative to the intensity at a given time and a second condition relative to a light dose received by the object during a period of time (the first condition and second condition are so broadly recited, it does not limit the interpretation of the claim), the device comprising: a light source (“radiation source” [0075]) adapted to produce a beam whose intensity does not fulfill the first condition or the second condition, a photodiode 25 adapted to measure the intensity of an incident beam ([0098]), an optical system IL adapted to convey the light from an entrance to at least one exit, the light source, the photodiode and the optical system being arranged so that the device has two distinct configurations, an operating configuration in which a first portion of the light emitted by the light source is conveyed to the object, and a second portion of the light emitted by the light source is conveyed to the photodiode (fig. 2) and a control configuration ([0081], [0083], [0093]) in which the photodiode receives light emitted by the light source and measures a light intensity representative of an abnormal operating of the device ([0026], [0155]), and a controller ([0145]) adapted to control the value of the first portion based on the intensity measured on the photodiode when the device is in the control configuration and based on the first condition and the second condition, wherein the controller is adapted to determine an intensity illuminating the object due to an abnormal operating of the device in the control configuration based on the measured intensity ([0096], [0155]), deduce the first portion of light to be emitted in the operating configuration based on the determined light intensity and on the conditions to be fulfilled ([0146], [0155]), and command the device to be in the operating configuration with the value of the first portion being equal to the deduced first portion ([0146]).
Regarding claim 5, Godfried et al. discloses the optical system comprises a plurality of reflectors, each reflector having three positions, a first position in which the reflector reflects the incident beam towards the object (fig. 2, 5), a second position in which the reflector reflects the incident beam towards a photodiode (fig. 2, 5) and a third position in which the reflector reflects the incident beam neither to the object nor the photodiode (fig. 7), the controller being adapted to command the position of each reflector (“actuators” [0093]), the device being in the operating configuration when the controller commands each reflector to be in the first position or in the second position (fig. 2, 5) and the device being in control configuration when each reflector is commanded to be in the third position (fig. 7).
Regarding claim 6, Godfried et al. discloses wherein the controller is further adapted to deduce the number of reflectors to be moved in the first position based on the intensity measured on the photodiode when the device is in the control configuration and based on the conditions to be fulfilled and commanding the deduced number of mirrors to move in the first position ([0093]).
Regarding claim 8, Godfried et al. discloses a plane to be illuminated is defined for the object and wherein at least one of the light source and the optical system is such that several independent spatial areas illuminated by different levels of intensity of light can be defined in the plane to be illuminated when the device is in the operating condition ([0008], fig. 2).
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.
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.
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.
Claims 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godfried et al. (US PG Pub 2017/0293229) in view of Morton et al. (US PG Pub 2013/0129043).
Regarding claims 2-4, Godfried et al. does not expressly disclose wherein the first condition is that the light intensity at any given time be inferior or equal to a maximum intensity, the first condition is that the light intensity at any given time be superior or equal to a minimum intensity, and the second condition is that the dose during the period of time be inferior or equal to a maximum value. Morton et al. teaches an optical device where a condition to be fulfilled includes a light intensity that is inferior or equal to a maximum intensity ([0085]), superior or equal to a minimum intensity ([0071]), and that the dose during the period of time be inferior or equal to a maximum value ([0057]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Godfried et al. and to try to fulfill the conditions as taught by Morton et al. as they appear to be known conditions to take into consideration and further, 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 satisfying the claimed structural limitations.
Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godfried et al. (US PG Pub 2017/0293229) in view of Kennedy et al. (US Pat 5,521,392).
Regarding claim 7, Godfried et al. does not expressly disclose the light source is a matrix of light sources, each light source having two states, an unfed state in which the light source emits no light and a fed state in which the light source emits light, the controller being adapted to control the state of each light source. Kennedy et al. teaches it is known in the art for a single light source to be substituted with a multiple array device (col. 4, lines 54-60). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Godfried et al. to try and use the matrix of light sources as taught by Kennedy et al. as it appears to be a known equivalent for a light source in the art.
Claims 9-11, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godfried et al. (US PG Pub 2017/0293229) in view of Bille (US 2008/0009922).
Regarding claim 9, Godfried et al. does not expressly disclose the optical system comprises optical components ensuring that the point spread function be inferior to 25 μm at the system output. Bille teaches a high point spread function is undesirable as it can lead to killing of healthy tissue surrounding the diseased targeted tissue ([0005]), and to provide optical components that provide a point spread function of 2 μm x 2 μm x 20 μm ([0006]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Godfried et al. to reduce the point spread function to be inferior to 25 μm as taught by Bille in order to reduce the risk of killing healthy tissue adjacent the treatment site.
Regarding claim 10, Godfried et al. discloses the optical system comprises a system adapted for correcting optical aberrations, the system adapted for correcting optical aberrations being adjustable (“a focusing unit configured to focus the second portion of the illumination beam onto a detection plane such that an image is formed at the detection plane and wherein the image is an image of the plurality of sub-beams in a plane which lies upstream of the array of reflective elements and wherein the sub-beams do not overlap with each other in the image and an array of detector elements configured to measure the intensity of radiation which is incident on the detection plane.” [0006]).
Regarding claim 11, Godfried et al. discloses the system adapted for correcting optical aberrations is a liquid lens (“immersion fluid… projection lens” [0060]).
Regarding claim 13, Godfried et al. does not expressly disclose the object is an object which restores or improves the eyesight of a user of the device. Bille et al. teaches photodynamic therapy is known for treating macular degeneration, where the target object of photodynamic therapy improves the eyesight of a user ([0006]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try using the device of Godfried et al. for improving the eyesight of a user of the device as taught by Bille as it is a known treatment technique in the art, would not alter the overall operation of the device and the results of such a modification would have been reasonably predictable.
Claims 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godfried et al. (US PG Pub 2017/0293229) in view of Deisseroth et al. (US 2016/0279267).
Regarding claims 14-15, Godfried et al. does not expressly disclose wherein the object comprises at least one cell expressing photoreactive proteins chosen in the group consisting of light-gated ion channel. Deisseroth et al. teaches it is known in the art to target light-gated ion channels to modulate the activity of electrically-excitable cells through delivery of light ([0012-0013]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try using the device of Godfried et al. in the manner described by Deisseroth et al., specifically targeting light-gated ion channels in order to assist in modulating the activity of electrically-excitable cells as it is a known treatment technique in the art, would not alter the overall operation of the device and the results of such a modification would have been reasonably predictable.
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 ERICA S LEE whose telephone number is (571)270-1480. The examiner can normally be reached M-F 8-7pm, flex.
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/ERICA S LEE/Primary Examiner, Art Unit 3796