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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/08/2026 has been entered.
Response to Arguments
Applicant’s arguments, see page 8, filed 12/17/2025, with respect to claim objections have been fully considered and are persuasive. The claim objection has been obviated by an amendment to claim 45. The objection of claim 45 has been withdrawn.
Applicant’s arguments, see page 8, filed 12/17/2025, with respect to 35 U.S.C. 112 rejections have been fully considered but they are not persuasive. The Applicant argues that claim 5 has been canceled to render these rejections moot, however claim 5 is still pending and has not been canceled. Therefore, the 35 U.S.C. 112 rejections to claim 5 are maintained.
Applicant’s arguments with respect to 35 U.S.C. 102 rejections of independent claims 1 and 23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see pages 10-12, filed 12/17/2025, with respect to the 35 U.S.C. 102 rejection of claim 44 and the 35 U.S.C. 103 rejection of claim 45 have been fully considered and are persuasive. The Applicant’s argument that the rotation of the deflection apparatus described in Bergt being a movement of scanning mirrors relative to the axis of the deflection apparatus was found persuasive, along with the Applicant’s argument that there is no disclosure that any components of Bergt’s machine device revolve around the axis of the optics assembly. The 35 U.S.C. 102 and 103 rejections to claims 44 and 45, respectively, have been withdrawn.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
The claim interpretation section from pages 3-9 of the 05/07/2025 Non-Final Rejection is maintained and carried over to this instant office action.
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.
Claim 5 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. The Applicant’s disclosure does not contain written description support for “a positioning mechanism mechanically coupled to the fiber-optic cable and configured to move the light-output end into alignment with the one of a plurality of first input axes” in claim 5 (lines 5-6). The Applicant’s specification merely recites this limitation at Par. [0069], and does not offer any further explanation as to what corresponds to a positioning mechanism. The Examiner determined that the original specification does not support or explain “a positioning mechanism”; thus raising doubt as to possession of the claimed invention at the time of filing.
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 limitation “a positioning mechanism mechanically coupled to the fiber-optic cable and configured to move the light-output end into alignment with the one of a plurality of first input axes” (Claim 5) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-4, 6-8, 10-12, and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Bergt, et al. (U.S. Patent No. 8,585,686 – cited on IDS) in view of Rol (U.S. Patent No. 4,664,490).
Regarding claim 1, Bergt teaches (Fig. 1) an integrated surgical system for accessing one of a plurality of target volumes of ocular tissue in an eye having an optical axis (Title; Abstract; Col. 1, lines 5-8 – the invention relates to a femtosecond laser system for the precise machining of material and tissue, in particular a laser apparatus for the precise, micrometer-accurate machining of organic material, preferably an eye; Col. 8., lines 3-5 and 22-40; Col. 10, lines 35-44 – the laser apparatus is suitable for a large number of applications (for example for refractive corrections of eyesight) in which cuts or structural transformations are to be undertaken within the transparent constituents of the eye (cornea, lens, vitreous body) and on the non-transparent parts such as sclera, iris, ciliary body.), the system comprising:
(Fig. 1, # 15’ – expanded laser beam, 21 – beam expansion lens system, i.e. part of first optical transmission subsystem, 23 – deflection apparatus, i.e. part of first optical transmission subsystem) a first optical transmission subsystem optically coupled to receive a first light beam (Col. 8, lines 22-40 – the laser beam 15 is decoupled via mirrors and a beam splitter 57 onto a beam-expansion lens system; Col. 8, line 63-Col.9, line 15 – The expanded laser beam 15’ is deflected perpendicular to the original beam direction through a deflection apparatus 23);
(Figs. 1-2, # 24 – focusing lens system, i.e. part of optics assembly, 32 – fixing device, i.e. part of optics assembly, 90) an optics assembly having an optical axis, the optics assembly configured to couple to the eye to align its optical axis with the optical axis of the eye, the optics assembly optically coupled with the first optical transmission subsystem to receive the first light beam along one of a plurality of first input axes and to direct the first light beam to a corresponding one of a plurality of first output axes aligned with a corresponding one of the plurality of target volumes of ocular tissue in the eye (Col. 8, lines 22-40 – the expanded laser beam 15’ is then deflected in XY direction onto a beam-focusing apparatus 24 via a beam-deflection apparatus, such as for example a scanner. The focused laser spot 16 is thus steered onto the material 90 to be machined which is held in position by a fixing device 32. Here, the material 90 is a contact lens to be machined; Col. 8, line 63-Col. 9, line 15 – the position of the focus 16 moves according to the focusing lens system 24 perpendicular to the original beam direction; Col. 9, line 58-Col. 10, line 10 – -the eye is pressed by a suction ring 32 onto a contact lens 31 which is either flat or preferably essentially adapted to the curvature of the cornea. The expanded femtosecond laser beam is focused into the cornea with a lens system 24. The focusing lens system 24 forms part of the microscope objective.); and
a control system configured to control the first optical transmission subsystem to direct the first light beam into alignment with a select one of the plurality of first input axes (Col. 5, lines 35-46 – in a particularly preferred version, the beam apparatuses, in particular the deflection apparatuses, are programmable. As a result of the matchability of the individual beam apparatuses and the control by corresponding programmers, the system of beam apparatuses together with the pulsed laser system can be set precisely to the material and the cutting requirements for which it is to be used; Col. 12, lines 33-51),
wherein (Fig. 2, # 24 – focusing lens system, i.e. part of optics assembly – please see annotated Fig. 2 below, 31 – contact lens, i.e. concave surface) the optics assembly comprises an exit lens having a concave surface (Col. 9, line 58-Col. 10, line 10 – -The eye is pressed by a suction ring 32 onto a contact lens which is either flat or preferably essentially adapted to the curvature of the eye (i.e., concave surface). The expanded femtosecond laser beam is focused into the cornea with a lens system 24 (i.e., part of exit lens).).
Bergt does not explicitly teach the limitations of instant claim 1, that is wherein the exit lens has a convex surface to which the first light beam is incident, a concave surface opposite the convex surface, a side region that extends between the convex surface and the concave surface, and a reflecting surface associated with the side region, which receives the first light beam and redirects the first light beam through the concave surface along the corresponding first output axis.
Rol is directed to analogous art and teaches a contact lens for observation or treatment by irradiation of the eye, in particular the anterior chamber, outside of the optical axis of the eye (Title, Abstract). Rol also teaches (Fig. 1, # 10 – exit lens, 11’ – spherical entrance face, i.e. convex surface) wherein the exit lens has a convex surface to which the first light beam is incident (Col. 3, line 29-Col. 4, line 2 – Roussel lens has an entrance face in the form of a portion of a sphere, as indicated at 11’, instead of being flat), (Fig. 1, # 12 – spherical exit face, i.e., concave surface) a concave surface opposite the convex surface (Col. 3, line 29-Col. 4, line 2 – spherical exit face 12 applied to the cornea 2), (Fig. 1, # 13 – face, i.e. side region including a reflection surface) a side region that extends between the convex surface and the concave surface, and a reflecting surface associated with the side region, which receives the first light beam and redirects the first light beam through the concave surface along the corresponding first output axis (Col. 3, line 61-Col. 4, line 21 – after entering the lens 10 perpendicularly to the face 11’, the light beam Y must undergo total reflection by the face 13 at a point 14 in order to pass into the eye 1 at an angle of incidence i).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented the features of Rol’s exit lens into Bergt’s exit lens, because doing so would be an example of using a known technique to improve similar devices in the same way. One of ordinary skill in the art would have desired implementing the non-flat entrance face of the Roussel lens of Rol (Fig. 1, # 11’) because of its ability to make it possible to reduce the aberration phenomena and to increase the degree of opening of the beam (Col. 2, lines 12-19 of Rol).
Therefore, claim 1 is unpatentable over Bergt, et al. and Rol.
Regarding claim 2, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 1, as indicated hereinabove. Bergt also teaches the limitation of instant claim 2, that is wherein (Figs. 1-2, # 23 – deflection apparatus) the first optical transmission subsystem comprises a means for aligning the first light beam with the one of the plurality of first input axes (Col. 8, line 63-Col. 9, line 15 – the expanded laser beam 15’ is deflected perpendicular to the original beam direction through a deflection apparatus 23; Col. 9, line 58-Col. 10, line 10 – the beam-deflection unit 23 deflects the expanded laser beam 15’ perpendicular to its propagation direction).
Therefore, claim 2 is unpatentable over Bergt, et al. and Rol.
Regarding claim 3, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 2, as indicated hereinabove. Bergt also teaches the limitation of instant claim 3, that is wherein (Figs. 1-2, # 23 – deflection apparatus) the means for aligning the first light beam comprises at least one adjustable reflecting surface optically aligned to receive the first light beam along an angle of incidence and to reflect the first light beam at an angle of reflection into alignment with the corresponding one of the plurality of first input axes (Col. 4, lines 57-59; Col. 8, lines 22-40 – beam-deflection apparatus, such as for example a scanner; Col. 8, line 63-Col. 9, line 15 – the expanded laser beam 15’ is deflected perpendicular to the original beam direction through a deflection apparatus 23. In the process, the position of the focus can move according to the focusing lens system 24 (i.e., part of optics assembly that receives the light from the deflection apparatus 23 (i.e. part of the first optical transmission subsystem)) perpendicular to the original beam direction; Col. 9, line 58-Col. 10, line 10 – the beam-deflection unit 23 deflects the expanded laser beam 15’ perpendicular to its propagation direction).
Therefore, claim 3 is unpatentable over Bergt, et al. and Rol.
Regarding claim 4, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 3, as indicated hereinabove. Bergt also teaches the limitation of instant claim 4, that is wherein (Figs. 1-2, # 23 – deflection apparatus) the adjustable reflecting surface comprises an actuated flip mirror or an actuated angular deflector (Col. 4, lines 57-59; Col. 8, lines 22-40 – beam-deflection apparatus, such as for example a scanner; Col. 8, line 63-Col. 9, line 15; Col. 9, line 58-Col. 10, line 10 – the beam-deflection unit 23 deflects the expanded laser beam 15’ perpendicular to its propagation direction).
Therefore, claim 4 is unpatentable over Bergt, et al. and Rol.
Regarding claim 6, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 1, as indicated hereinabove. Bergt also teaches the limitation of instant claim 6, that is wherein (Figs. 1-2, # 21, 27 – pilot laser) the first optical transmission subsystem is optically coupled to receive a plurality of different types of light beams and comprises a means for colinearly combining the plurality of different types of light beams into the first light beam (Col. 8, lines 25-27 – the laser beam 15 is decoupled via mirrors and a beam splitter 57 onto a beam-expansion lens system 21; Col. 9, lines 16-22 – A visible laser beam colinear with the machining laser beam 15, 15’, from a pilot laser 27 supports the alignment).
Therefore, claim 6 is unpatentable over Bergt, et al. and Rol.
Regarding claim 7, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 6, as indicated hereinabove. Bergt also teaches the limitation of instant claim 7, that is wherein (Figs. 1-2, # 22 and 57) the means for colinearly combining the plurality of different types of light beams into the first light beam comprises at least one beam splitter and fiber-optic equivalents thereof (Col. 8, lines 22-40 – laser beam 15 is decoupled via mirrors and a beam splitter 57 onto a beam-expansion lens system 21; Col. 9, lines 23-34 – mirrors or mirror pairs 22 are provided for beam guidance and for fine alignment of the beam position between the individual components; Col. 10, lines 26-34).
Therefore, claim 7 is unpatentable over Bergt, et al. and Rol.
Regarding claim 8, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 7, as indicated hereinabove. Bergt also teaches the limitation of instant claim 8, that is wherein (Figs. 1-2, # 21, 27 – pilot laser, 57 – beam splitter) the at least one beam splitter comprises at least one polarization beam splitter and fiber-optic equivalents thereof (Col. 8, lines 25-27 – the laser beam 15 is decoupled via mirrors and a beam splitter 57 onto a beam-expansion lens system 21; Col. 9, lines 16-22 – A visible laser beam colinear with the machining laser beam 15, 15’, from a pilot laser 27 supports the alignment).
Therefore, claim 8 is unpatentable over Bergt, et al. and Rol.
Regarding claim 10, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 1, as indicated hereinabove. Bergt also teaches the limitation of instant claim 10, that is wherein (Figs. 1-2, # 21 – beam-expansion lens system, i.e. part of first optical transmission subsystem, 23) the first optical transmission subsystem comprises a focusing objective (Col. 8, lines 50-62) and the control system is configured to control the focusing objective to focus the first light beam at the corresponding one of the plurality of target volumes of ocular tissue (Col. 5, lines 36-46; Col. 9, line 58-Col. 10, line 10 – the laser focus can be directed to different points in the cornea; Col. 12, lines 33-51).
Therefore, claim 10 is unpatentable over Bergt, et al. and Rol.
Regarding claim 11, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 1, as indicated hereinabove. Bergt also teaches the limitation of instant claim 11, that is wherein (Figs. 1-2, # 15 and 15’) the first light beam is a laser beam (Col. 8, lines 22-40).
Therefore, claim 11 is unpatentable over Bergt, et al. and Rol.
Regarding claim 12, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 1, as indicated hereinabove. Bergt also teaches the limitation of instant claim 12, that is wherein the system is further comprising (Figs. 1-2, # 11 – beam source) a laser source configured to output the first light beam (Col. 8, lines 22-40).
Therefore, claim 12 is unpatentable over Bergt, et al. and Rol.
Regarding claim 22, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 1, as indicated hereinabove. Bergt also teaches the limitation of instant claim 22, that is wherein the plurality of target volumes of ocular tissue comprises an irido-corneal angle, a cornea, a lens capsule, and a crystalline lens (Col. 10, lines 35-44).
Therefore, claim 22 is unpatentable over Bergt, et al. and Rol.
Regarding claim 23, Bergt teaches (Fig. 1) a method of accessing one of a plurality of target volumes of ocular tissue in an eye having an optical axis (Title; Abstract; Col. 1, lines 5-8 – the invention relates to a femtosecond laser system for the precise machining of material and tissue, in particular a laser apparatus for the precise, micrometer-accurate machining of organic material, preferably an eye; Col. 8., lines 3-5 and 22-40; Col. 10, lines 35-44 – the laser apparatus is suitable for a large number of applications (for example for refractive corrections of eyesight) in which cuts or structural transformations are to be undertaken within the transparent constituents of the eye (cornea, lens, vitreous body) and on the non-transparent parts such as sclera, iris, ciliary body.; Claim 13 – A method…), the method comprising:
(Fig. 1, # 15’ – expanded laser beam, 21 – beam expansion lens system, i.e. part of first optical transmission subsystem, 23 – deflection apparatus, i.e. part of first optical transmission subsystem) receiving a first light beam at a first optical transmission subsystem (Col. 8, lines 22-40 – the laser beam 15 is decoupled via mirrors and a beam splitter 57 onto a beam-expansion lens system; Col. 8, line 63-Col.9, line 15 – The expanded laser beam 15’ is directed perpendicular to the original beam direction through a direction through a deflection apparatus 23);
(Figs. 1-2, # 24 – focusing lens system, i.e. part of optics assembly, 32 – fixing device, i.e. part of optics assembly, 90) directing, by the first optical transmission subsystem, the first light beam to a select one of a plurality of first inputs axes of an optics assembly coupled to the eye, wherein the optics assembly has an optical axis and is configured to couple to the eye to align its optical axis with the optical axis of the eye; and
directing, by the optics assembly, the first light beam along the select one of the plurality of first inputs axes to a corresponding one of a plurality of first output axes of the optics assembly aligned with a corresponding one of the plurality of target volumes of ocular tissue in the eye (Col. 8, lines 22-40 – the expanded laser beam 15’ is then deflected in XY direction onto a beam-focusing apparatus 24 via a beam-deflection apparatus 23, such as for example a scanner. The focused laser spot 16 is thus steered onto the material 90 to be machined which is held in position by a fixing device 32. Here, the material 90 is a contact lens to be machined; Col. 8, line 63-Col. 9, line 15 – the position of the focus 16 moves according to the focusing lens system 24 perpendicular to the original beam direction; Col. 9, line 58-Col. 10, line 10 – -the eye is pressed by a suction ring 32 onto a contact lens 31 which is either flat or preferably essentially adapted to the curvature of the cornea. The expanded femtosecond laser beam is focused into the cornea with a lens system 24. The focusing lens system 24 forms part of the microscope objective.),
wherein (Fig. 2, # 24 – focusing lens system, i.e. part of optics assembly – please see annotated Fig. 2 below) the optics assembly comprises an exit lens having a concave surface (Col. 9, line 58-Col. 10, line 10 – -The eye is pressed by a suction ring 32 onto a contact lens which is either flat or preferably essentially adapted to the curvature of the eye (i.e., concave surface). The expanded femtosecond laser beam is focused into the cornea with a lens system 24 (i.e., part of exit lens).).
Bergt does not explicitly teach the limitations of instant claim 1, that is wherein the exit lens has a convex surface to which the first light beam is incident, a concave surface opposite the convex surface, a side region that extends between the convex surface and the concave surface, and a reflecting surface associated with the side region, which receives the first light beam and redirects the first light beam through the concave surface along the corresponding first output axis.
Rol is directed to analogous art and teaches a contact lens for observation or treatment by irradiation of the eye, in particular the anterior chamber, outside of the optical axis of the eye (Title, Abstract). Rol also teaches (Fig. 1, # 10 – exit lens, 11’ – spherical entrance face, i.e. convex surface) wherein the exit lens has a convex surface to which the first light beam is incident (Col. 3, line 29-Col. 4, line 2 – Roussel lens has an entrance face in the form of a portion of a sphere, as indicated at 11’, instead of being flat), (Fig. 1, # 12 – spherical exit face, i.e., concave surface) a concave surface opposite the convex surface (Col. 3, line 29-Col. 4, line 2 – spherical exit face 12 applied to the cornea 2), (Fig. 1, # 13 – face, i.e. side region including a reflection surface) a side region that extends between the convex surface and the concave surface, and a reflecting surface associated with the side region, which receives the first light beam and redirects the first light beam through the concave surface along the corresponding first output axis (Col. 3, line 61-Col. 4, line 21 – after entering the lens 10 perpendicularly to the face 11’, the light beam Y must undergo total reflection by the face 13 at a point 14 in order to pass into the eye 1 at an angle of incidence i).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented the features of Rol’s exit lens into Bergt’s exit lens, because doing so would be an example of using a known technique to improve similar devices in the same way. One of ordinary skill in the art would have desired implementing the non-flat entrance face of the Roussel lens of Rol (Fig. 1, # 11’) because of its ability to make it possible to reduce the aberration phenomena and to increase the degree of opening of the beam (Col. 2, lines 12-19 of Rol).
Therefore, claim 23 is unpatentable over Bergt, et al. and Rol.
Regarding claim 24, Bergt, in view of Rol, renders obvious the method of claim 23, as indicated hereinabove. Bergt also teaches the limitation of instant claim 24, that is wherein (Figs. 1-2, # 23 – deflection apparatus) directing, by the first optical transmission subsystem, the first light beam to a select one of a plurality of first inputs axes of an optics assembly comprises controlling a position of an alignment mechanism of the first optical transmission subsystem (Col. 8, line 63-Col. 9, line 15 – the expanded laser beam 15’ is deflected perpendicular to the original beam direction through a deflection apparatus 23; Col. 8, lines 22-40 – beam-deflection apparatus, such as for example a scanner; Col. 9, line 58-Col. 10, line 10 – the beam-deflection unit 23 deflects the expanded laser beam 15’ perpendicular to its propagation direction).
Therefore, claim 24 is unpatentable over Bergt, et al. and Rol.
Regarding claim 25, Bergt, in view of Rol, renders obvious the method of claim 23, as indicated hereinabove. Bergt also teaches the limitation of instant claim 25, that is wherein (Figs. 1-2, # 15 and 15’) the first light beam is one of a laser beam, an OCT beam, a visual observation beam, and dual aiming beams (Col. 8, lines 22-40).
Therefore, claim 25 is unpatentable over Bergt, et al. and Rol.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bergt, et al. (U.S. Patent No. 8,585,686 – cited on IDS) and Rol (U.S. Patent No. 4,664,490), in view of Massow, et al. (U.S. Patent No. 9,441,946 – cited on IDS).
Regarding claim 5, Bergt, in view of Rol, renders obvious the integrated surgical system of claim 2, as indicated hereinabove. Bergt does not explicitly teach the limitation of instant claim 5, that is wherein the means for aligning the first light beam comprises: a fiber-optic cable configured to transmit light and having a light-input end coupled to receive the first light beam and a light-output end configured to output the first light beam; and a positioning mechanism mechanically coupled to the fiber-optic cable and configured to move the light-output end into alignment with the one of the plurality of first input axes.
However, Bergt does teach (Fig. 2) an embodiment of the present laser machining device with a surgical microscope (Col. 9, lines 35-47). Bergt teaches that in this embodiment, a beam splitter reflects the laser beam into the beam path of a surgical microscope which serves to observe the center of the eye (Col. 9, line 58-Col. 10, line 10). Bergt teaches (Fig. 2, # 80 – stereo eyepiece) that together with a bundling lens system, a real intermediate image of the cornea can be produced which can be viewed three-dimensionally with the stereo eyepiece (Col. 9, line 58-Col. 10, line 10).
Massow teaches an imaging technique for optical coherence tomography (Title, Abstract). Massow teaches that (Fig. 1, # 35) the imaging device may comprise an optical fiber coupler connectable to an optical fiber of a fiber optic beam splitter (Col. 5, lines 32-37; Col. 7, lines 8-13). Massow teaches that the optical fiber coupler may be configured to guide light exiting the optical fiber to the scanning member (Col. 5, lines 32-37; Col. 7, lines 8-13). Massow teaches that the optical fiber coupler may be configured to collimate light exiting the optical fiber to a collimated beam of imaging radiation (Col. 5, lines 32-37; Col. 7, lines 8-13).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented the optical fiber and optical fiber coupler teachings of Massow’s imaging device into Bergt’s device, as modified, that can be used for viewing a patient’s eye, because doing so would be an example of simple substitution of one known element for another to obtain predictable results. One of ordinary skill in the art would recognize that a bundling lens system, as taught by Bergt, often involves optical fibers in applications of imaging.
Therefore, claim 5 is unpatentable over Bergt, et al., Rol, and Massow, et al.
Allowable Subject Matter
Claims 44-45 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record (namely Bergt and Rol) does not disclose or fairly suggest either singly or in combination the claimed invention of claim 44 when taken as a whole, comprising, in addition to the other recited claim elements, wherein the integrated surgical system is further comprising a housing having a non-rotatable portion and a rotatable portion configured to rotate about the optical axis of the optics assembly, wherein:
one or more components of the first optical transmission subsystem are mechanically coupled to the rotatable portion,
the optics assembly is symmetric and is mechanically coupled to the non-rotatable portion,
the control system is configured to rotate the rotatable portion of the housing about the optical axis of the optics assembly such that the one or more components of the first optical transmission subsystem revolve around the optical axis of the optics assembly. No other prior art reference could be found that teaches or renders obvious the limitations of instant claim 44.
The prior art of record (namely Bergt and Rol) does not disclose or fairly suggest either singly or in combination the claimed invention of claim 45 when taken as a whole, comprising, in addition to the other recited claim elements, wherein the integrated surgical system is further comprising a housing configured to rotate about the optical axis of the optics assembly, wherein:
one or more components of the first optical transmission subsystem are mechanically coupled to the housing,
the optics assembly is asymmetric and is mechanically coupled to the housing,
the control system is configured to rotate the housing about the optical axis of the optics assembly such that the one or more components of the optics assembly rotates about the optical axis of the optics assembly and the one or more components of the first optical transmission subsystem revolve around the optical axis of the optics assembly.
No other prior art reference could be found that teaches or renders obvious the limitations of instant claim 45.
Therefore, in view of the prior art and its deficiencies, the claimed invention as a whole is rendered novel and non-obvious, and thus, is allowable as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Volk (U.S. Patent No. 6,164,779) – Fig. 8
Kurwa (U.S. Patent No. 4,568,157)
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/MICHAEL T. HOLTZCLAW/Primary Examiner, Art Unit 3796