DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments with respect to the rejected claims have been considered but are moot because the new ground of rejection does not rely on the combination references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al (US 2017/0156581 A1) and Tearney et al (US 7,761,139 B2).
1, 10, 16. An ophthalmic illumination system (100, Fig. 2B), comprising:
a light source (122) configured to transmit a light beam output (162);
an optical fiber (170, Fig. 2B) for transmitting a light beam (127) by the light source (122), comprising:
a proximal portion (172) configured to receive the light beam (127) from the light source (122), the proximal portion (172) having a first tapered portion (210) with a proximal end (see Fig. 2B), a terminal end (see Fig. 2B), and a first numerical aperture (see 270);
a distal portion (174) configured to emit the light beam to illuminate a surgical field (162), the distal portion (174) having a second tapered portion (230) and a second numerical aperture (see 270);
a central portion (176) extending between the proximal portion (172) and the distal portion (174), the central portion (176) having a third numerical aperture (see 270); and
wherein the optical fiber (170) is configured to receive the light beam at the proximal portion (172) at the first numerical aperture (270) and output the light beam from the distal portion (174) at the second numerical aperture (270) (P0051).
2, 15. The optical fiber of claim 1, wherein the second numerical aperture is greater than the first numerical aperture (see 270, by the mathematical formula, the second NA is greater; P0051).
3, 17. The optical fiber of claim 1, wherein the proximal portion (172) of the optical fiber (170) has a numerical aperture of about 0.5 or less (P0051 states NAfiber can be different values and N can be different values – P0048, most values result in less than 0.5, for example NAfiber = 0.66/2 = 0.33).
4, 11, 18. The optical fiber of claim 1, wherein the distal portion (174) of the optical fiber (170) has a numerical aperture of about 0.6 or greater (270, P0051, greater than 0.5, 0.63, 0.66 for example).
5, 12. The optical fiber of claim 1, wherein the central portion (176) of the optical fiber (170) has a numerical aperture of about 0.5 or less (270, P0051, 0.12, 0.22, 0.26, 0.30, 0.37, 0.44, 0.48 for example).
6, 13. The optical fiber of claim 1, wherein the light source (122) emits a light beam having a numerical aperture of about 0.5 or less (P0050-0051).
7. The optical fiber of claim 1, wherein the proximal portion (172) further comprises a first tapered section (210) with a first proximal end and a first terminal end (Fig. 2B).
8. The optical fiber of claim 1, wherein the distal portion (174) further comprises a second tapered section (230) with a second proximal end and a second terminal end (Fig. 2B).
9, 14. The optical fiber of claim 1, wherein the central portion (176) includes a core diameter having a constant diameter over length of the central portion (P0046).
Note for the ranges in the claims, prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity. When the prior art discloses a range which touches, overlaps or is within the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with “sufficient specificity to constitute an anticipation under the statute.” See MPEP § 2131.02.
Smith does not teach expressly wherein the optical fiber is attached inside and traverses through a micro chandelier, the micro chandelier including a needle and a cannula hub, the cannula hub being positioned at a back side of the micro chandelier, the needle being positioned opposite the cannula hub, the optical fiber extending through the cannula hub and the needle, the optical fiber being movably attached to the cannula hub such that a tip of the distal portion of the optical fiber moves in and out of the needle, or
wherein the optical fiber includes a fiber stop, the fiber stop being positioned inside the micro chandelier and between the cannula hub and the needle of the micro chandelier, and the fiber stop being configured to move between the cannula hub and the needle.
Tearney teaches an optical fiber for transmitting a light beam by a light source (12) (Figs. 2-15), wherein the optical fiber (25) is attached inside and traverses through a micro chandelier (50), the micro chandelier (50) including a needle (52) and a cannula hub (200), the cannula hub (200) being positioned at a back side (not defined) of the micro chandelier (50), the needle (52) being positioned opposite the cannula hub (200) (Fig. 11), the optical fiber (25) extending through the cannula hub (200) and the needle (50), the optical fiber (25) being movably attached to the cannula hub (200) such that a tip of the distal portion of the optical fiber (25) moves in and out of the needle (52) (C6 L34-45),
wherein the optical fiber (25) includes a fiber stop (510), the fiber stop being positioned inside the micro chandelier (500 can be considered inside the overall system) and between the cannula hub (200) and the needle (52) of the micro chandelier (50), and the fiber stop (510) being configured to move between the cannula hub (200) and the needle (52) (the location of the hub and needle are not defined compared to other components so movement within the connector can be considered movement between the hub and needle since the fiber, which the stop is a part of moves between these components).
Smith and Tearney are analogous art because they are from the same field of endeavor, optical fibers for transmitting a light beam by a light source.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the fiber taught by Smith to include it in the chandelier taught by Tearney.
The motivation for doing so would have been to allow the fiber to be used in the field for surgical procedures.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-18, 22-28 and 30-31 of copending Application No. 18/571,828 in view of Horvath et al (US 9,055,885 B2) and over claims 19-21 and 29 in view of Kusukame et al (US 8,767,783 B2).
Current claims
18/571,828
1/10/16. An optical fiber for transmitting a light beam by a light source, comprising:a proximal portion configured to receive the light beam from the light source, the proximal portion having a first numerical aperture;a distal portion configured to emit the light beam to illuminate a surgical field, the distal portion having a second numerical aperture;anda central portion extending between the proximal portion and the distal portion, the central portion having a third numerical aperture; andwherein the optical fiber is configured to receive the light beam at the proximal portion at the first numerical aperture and output the light beam from the distal portion at the second numerical aperture, and wherein the optical fiber is attached inside and traverses through a micro chandelier, the micro chandelier including a needle and a cannula hub, the cannula hub being positioned at a back side of the micro chandelier, the needle being positioned opposite the cannula hub, the optical fiber extending through the cannula hub and the needle, the optical fiber being movably attached to the cannula hub such that a tip of the distal portion of the optical fiber moves in and out of the needle.
10. An illumination system, comprising: a light source having an array of laser diodes configured to emit a combined light beam;
a despeckling mechanism to reduce speckling in the light beam; and
an optical fiber receiving and transmitting the light beam, the optical fiber including a proximal portion configured to receive the light beam from the light source, the proximal portion having a first numerical aperture, the optical fiber including a distal
portion configured to emit the light beam to illuminate a surgical field, the distal portion having a second numerical aperture, and the optical fiber including a central portion extending between the proximal portion and the distal portion, the central
portion having a third numerical aperture, wherein the optical fiber is configured to receive the light beam at the proximal portion at the first numerical aperture and output the light beam from the distal portion at the second numerical aperture, and a micro chandelier, the micro chandelier including a needle and a cannula hub, the cannula hub being positioned at a back side of the micro chandelier, the needle being positioned opposite the cannula hub,
wherein the optical fiber is attached inside and traverses through the micro chandelier, the optical fiber extending through the cannula hub and the needle, the optical fiber being movably attached to the cannula hub such that a tip of the distal portion of the optical fiber moves in and out of the needle.
2/15. The optical fiber of claim 1, wherein the second numerical aperture is greater than the first numerical aperture.
11. The illumination system of claim 10, wherein the second numerical aperture is greater than the first numerical aperture.
3/17.The optical fiber of claim 1, wherein the proximal portion of the optical fiber has a numerical aperture of about 0.5 or less.
12. The illumination system of claim 10, wherein the proximal portion of the optical fiber has a numerical aperture of about 0.5 or less.
4/11/18. The optical fiber of claim 1, wherein the distal portion of the optical fiber has a numerical aperture of about 0.6 or greater.
13. The illumination system of claim 10, wherein the distal portion of the optical fiber has a numerical aperture of about 0.6 or greater.
5/12. The optical fiber of claim 1, wherein the central portion of the optical fiber has a numerical aperture of about 0.5 or less.
14. The illumination system of claim 10, wherein the central portion of the optical fiber has a numerical aperture of about 0.5 or less.
6/13. The optical fiber of claim 1, wherein the light source emits a light beam having a numerical aperture of about 0.5 or less.
15. The illumination system of claim 10, wherein the light source emits a light beam having a numerical aperture of about 0.5 or less.
7. The optical fiber of claim 1, wherein the proximal portion further comprises a first tapered section with a first proximal end and a first terminal end.
16. The illumination system of claim 10, wherein the proximal portion further comprises a first tapered section with a first proximal end and a first terminal end.
8. The optical fiber of claim 1, wherein the distal portion further comprises a second tapered section with a second proximal end and a second terminal end.
17. The illumination system of claim 10, wherein the distal portion further comprises a second tapered section with a second proximal end and a second terminal end.
9/14. The optical fiber of claim 1, wherein the central portion includes a core diameter having a constant diameter over length of the central portion.
18. The illumination system of claim 10, wherein the central portion includes a core diameter having a constant diameter over length of the central portion.
19. The ophthalmic illumination system of claim 10, wherein the optical fiber includes a fiber stop, the fiber stop being positioned inside the micro chandelier and between the cannula hub and the needle of the micro chandelier, and the fiber stop being configured to move between the cannula hub and the needle.
30. The illumination system of claim 10, wherein the optical fiber includes a fiber stop, the fiber stop being positioned inside the micro chandelier and between the cannula hub and the needle of the micro chandelier, and the fiber stop being configured to move between the cannula hub and the needle.
20. The ophthalmic illumination system of claim 19, wherein the cannula hub has a first plug facing the needle and the needle has a second plug facing the cannula hub, the fiber stop being configured to fit into the first plug thereby fixing the optical fiber on the micro chandelier with the tip of the optical fiber being recessed inside the needle, and the fiber stop being further configured to fit into the second plug thereby fixing the optical fiber on the micro chandelier with the tip of the optical fiber being extended out of the needle.
31. The illumination system of claim 30, wherein the cannula hub has a first plug facing the needle and the needle has a second plug facing the cannula hub, the fiber stop being configured to fit into the first plug thereby fixing the optical fiber on the micro chandelier with the tip of the optical fiber being recessed inside the needle, and the fiber stop being further configured to fit into the second plug thereby fixing the optical fiber on the micro chandelier with the tip of the optical fiber being extended out of the needle.
The current claims do not include a despeckling mechanism in the source or other details of the source, but Horvath teaches an illumination system (100, Fig. 6) comprising a despeckling mechanism to reduce speckling in a light beam in the system (C6 L57 - C7 L3); and a light source (54) that includes at least one control element (122) configured to be adjusted to control the spectral range of the combined light beam (C6 L37-56); and the light source includes control elements (62, 58) associated with each of the laser diodes (104, 106, 108, 110) to independently control output from each of the laser diodes to control the spectral output of the combined light beam (C4 L27-46, C6 L39-56); and wherein the despeckling mechanism is a vibratory despeckling mechanism configured to physically vibrate at least one of the optical fiber and the array of laser diodes (C7 L1-3); wherein a source optical fiber (coil of fiber) extends between the laser diodes (104, 106, 108, 110) and the optical fiber (50) to transmit the combined light beam to the optical fiber, the despeckling mechanism operably coupled to the source optical fiber to reduce speckling in the light beam transmitted through the source optical fiber (C7 L1-3); and wherein the despeckling mechanism includes rotating diffusers arranged in the optical path of the light beam to disrupt the spatial coherence of the emitted light beam (C6 L64 - C7 L3); and wherein the despeckling mechanism includes lenses arranged in the optical path of the light beam to disrupt the spatial coherence of the emitted light beam (C6 L64 - C7 L3). The claims and Horvath are analogous art because they are from the same field of endeavor, illumination systems so at the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the system of the claims to include a despeckling mechanism and control element to adjust the spectral range as taught by Horvath. The motivation for doing so would have been to ensure that the multiple light waves having different phases to not interfere with one another (Horvath, C6 L57 - C7 L3) and to increase the bandwidth of the system by providing multiple wavelength ranges.
Kusukame teaches an illumination system (Fig. 9), comprising: an array of laser diodes (301a-c) includes a red laser diode, a green laser diode, and a blue laser diode (C16 L13-21); wherein the red laser diode operates in a spectral range having a wavelength of between 650 nm to 670 nm, the green laser diode operates in a spectral range having a wavelength of between 510 nm to 530 nm, and the blue laser diode operates in a spectral range having a wavelength of between 440 nm to 460 nm; these ranges overlap with the wavelength ranges of these colors and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); and wherein the combined light beam emitted from the array of laser diodes (301a-c) is modulated to produce a predetermined spectral range (C16 L1-12); and wherein the light source includes a backlight element (701) configured to emit a backlight beam, the backlight beam combined into the combined light beam (C19 L65 - C20 L10). The claims, Horvath and Kusukame are analogous art because they are from the same field of endeavor, illumination systems so at the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the light source of the claims and Horvath to use any of the ones taught by Kusukame including modulated RGB lasers or backlight. The motivation for doing so would have been to reduce cost and complexity by using well known and widely used light source types.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and the double patenting rejection is overcome.
The following is a statement of reasons for the indication of allowable subject matter:
These claims would be allowable over the prior art of record if rewritten in independent form including all of the limitations of the base claim and any intervening claims because the latter, either alone or in combination, does not disclose nor render obvious an ophthalmic illumination system with the claimed source, fiber, micro chandelier, needle and cannula hub wherein the optical fiber includes a fiber stop positioned between the cannula hub and the needle of the micro chandelier configured to move between the cannula hub and the needle and the cannula hub has a first plug facing the needle and the needle has a second plug facing the cannula hub, the fiber stop being configured to fit into the first plug thereby fixing the optical fiber on the micro chandelier with the tip of the optical fiber being recessed inside the needle, and the fiber stop being further configured to fit into the second plug thereby fixing the optical fiber on the micro chandelier with the tip of the optical fiber being extended out of the needle,
in combination with the rest of the claimed limitations.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN A LEPISTO whose telephone number is (571)272-1946. The examiner can normally be reached on 8AM-5PM EST M-F.
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/RYAN A LEPISTO/Primary Examiner, Art Unit 2874