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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 14, 2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on May 14, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 11,400,311 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
The amendment filed May 14, 2026 has been entered. Claims 1, 5-6, 12, 15 have been amended. Currently, claims 1-15 are pending for examination.
Response to Arguments
Applicant’s arguments, see page 6, filed May 14, 2026, with respect to Objections to the Drawings, Claim Objections and Double Patenting have been fully considered and are persuasive. The objections to the drawings of Figures 2-4, objections to claims 5 and 15, and double patenting rejections of claims 1-15 have been withdrawn.
Applicant's arguments filed May 14, 2026 with respect to the rejections under 35 U.S.C. 112(a) have been fully considered but they are not persuasive. With regard to applicant’s arguments (p. 7-8) that a plurality of additional conditions apart from C1, C2 and C3 are supported by the specification, and that it would “therefore by improper and unduly limiting to limit the claims based on the exemplary conditions” of C1-C3, it is noted that while the originally filed specification does briefly suggest additional conditions highlighted in the applicant’s response, the specification specifically relies on conditions C1 to C3 to determine the device’s operating configuration as described in paragraphs [0083-0086] of the published application. There is no support in the specification to use the conditions listed in page 7 of the response to alter the device’s configuration.
Applicant's arguments filed May 14, 2026 with respect to the rejections under 35 U.S.C. 112(b) have been fully considered and are persuasive except for the rejection of claim 5, see below.
Applicant’s arguments, see page 9, filed May 14, 2026, with respect to the 35 U.S.C. 102 rejections have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of an alternative interpretation of the prior art, see rejection below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 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” (line 2) and “a second condition relative to a light dose received by the object during a time period” (lines 2-3). 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 in combination with controlling the operation of the device.
Claim 1 recites, “a light source adapted to produce a beam whose intensity does not fulfill the first condition or the second condition” (lines 4-5). As stated above, a broad genus claim is presented with the claim limitation ““a first condition relative to the intensity at a given time” (line 2) and “a second condition relative to a light dose received by the object during a time period” (lines 2-3). 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 14-16). As stated above, a broad genus claim is presented with the claim limitation “a first condition relative to the intensity at a given time” (line 2) and “a second condition relative to a light dose received by the object during a time period” (lines 2-3). 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 the first condition or second condition” (lines 20-21). As stated above, a broad genus claim is presented with the claim limitation ““a first condition relative to the intensity at a given time” (line 2) and “a second condition relative to a light dose received by the object during a time period” (lines 2-3). 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 and 6 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 14-16) 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 20-21) requires all three conditions C1, C2, C3. Therefore individually reciting the limitations of claims 2, 3, 4 and 6 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” (line 2)
“a second condition relative to a light dose received by the object during a time period” (lines 2-3)
“a light source adapted to produce a beam whose intensity does not fulfill the first condition or the second condition” (lines 6-7)
“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 24-25).
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.
Claim 5 is 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 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 defines 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”. 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 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.
Claim(s) 1, 5-6, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over 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 relative to the intensity at a given time and a second condition relative to a light dose received by the object 18 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 (fig. 5) in which the photodiode receives light emitted by the light source and measures a light intensity (“The reflective elements 6a-6h may therefore be orientated…such a time any plane in the extended range of non-overlapping planes may be imaged on to the array of detectors 24 and the intensities of the sub-beams 4a-4h may be determined.” [0118]) representative of an abnormal operating of the device (“During the process of loading and unloading a substrate W from the substrate table WT” [0118]), 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 ([0118]), deduce the first portion of light to be emitted in the operating configuration based on the determined light intensity and the first condition or the second condition (“The determined intensities of the sub-beams 4a-4h may, for example, be used to determine a desired orientation of the reflective elements 6a-6h which brings about a desired illumination mode at the pupil plane 18.” [0118]), orient the device to be in the operating configuration with the value of the first portion being equal to the deduced first portion ([0118]), and orient the device to switch between the operating configuration and the control configuration ([0117-0118]). Godfried et al. does not expressly disclose the orienting the device to be in the operating configuration or switching between the operating configuration and the control configuration involves the controller adapted to “command the device”. However, Godfried et al. does disclose reflective elements 6a-6h that determine the claimed configurations of the device, the reflective elements independently change their orientation based on actuators so as to bring about a desired orientation ([0081], [0083], [0093], [0118]), these actuators controlled by a controller ([0017]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to consider the controller operable to control the actuators ([0017]) that are used to adjust the orientation of the reflective elements ([0015]) would necessarily “command” the reflective elements to switch between an operating configuration disclosed in Figure 2 and a control configuration disclosed in Figure 5 as required by the claim ([0118]).
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 18, a second position in which the reflector reflects the incident beam towards a photodiode 25 and a third position in which the reflector reflects the incident beam neither to the object nor the photodiode ([0144]), 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) 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 6a-6h 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 first condition or the second condition and commanding the deduced number of reflectors to move in the first position ([0093], [0118]).
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).
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 selected from 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
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
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