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
This office action is responsive to the amendment filed on 11/4/2025. As directed by the amendment, the status of the claim(s) are:
Claim(s) 1, 3, 9-10, 12-15, 17-19 has/have been amended;
Claim(s) 1-20 is/are presently pending.
The amendment(s) to the specification is sufficient to overcome the specification objection(s) from the previous office action.
The amendment(s) to the claim(s) is sufficient to overcome the claim objection(s) from the previous office action.
The amendment(s) to the claim(s) is sufficient to overcome the 35 U.S.C. 112 rejection(s) from the previous office action.
Response to Arguments
Applicant argues on p. 11 of remarks that prior art of record does not teach the amended limitations of first and second end portions. After review, this is not persuasive. Guo teaches a first end portion configured to receive a near infra-red radiation excitation; and a second end portion, distal to the first end portion, configured to emit a visible light emission generated by the up-conversion nano-particles in response to the near-infra-red radiation excitation (Fig. 1e; Fig. 2e-2f; reference is teaching laser in near infra-red range of 980 nm is launched/coupled into fiber and result is up-conversion to visible light; see especially Fig. 2f in which near-infra-red laser is coupled into fiber on left and visible light emitted on right distal to where laser enters fiber; this reads on the instant limitations.).
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.
Claim(s) 1-3, 5-6, 8, 11-12, 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guo (Stretchable and temperature‐sensitive polymer optical fibers for wearable health monitoring; Published 6/17/2019; cited in IDS; cited in previous office action)
Regarding claim 1, Guo teaches an implantable light delivery device comprising:
a core portion cladded in a cladding (Fig. 1), the core portion comprising up-conversion nano-particles encapsulated in an encapsulation material (Fig. 2);
a first end portion configured to receive a near infra-red radiation excitation; and
a second end portion, distal to the first end portion, configured to emit a visible light emission generated by the up-conversion nano-particles in response to the near-infra-red radiation excitation (Fig. 1e; Fig. 2e-2f; reference is teaching laser in near infra-red range of 980 nm is launched/coupled into fiber and result is up-conversion to visible light; see especially Fig. 2f in which near-infra-red laser is coupled into fiber on left and visible light emitted on right distal to where laser enters fiber; this reads on the instant limitations.).
Regarding claim 2, Guo teaches wherein the core portion and the cladding are flexible (Fig. 1-2).
Regarding claim 3, Guo teaches wherein a refractive index of the core portion is greater than a refractive index of the cladding (Fig. 1e; p. 2 paragraph 1; paragraph 2 “reflective index…enable total internal reflection at the core-cladding interface”; optical fiber is depicted as light guiding which means it meets the claim limitation since instant claim is describing properties of optical fiber).
Regarding claim 5, Guo teaches wherein the cladding forms a tube (Fig. 1a).
Regarding claim 6, Guo teaches wherein at least one of end of the tube is closed by the cladding (Fig. 1-2).
Regarding claim 8, Guo teaches wherein the core portion is elongate (Fig. 1-2).
Regarding claim 11, Guo teaches wherein a concentration of the up-conversion nano-particles in the core portion is substantially uniform along the core portion (Fig. 1e).
Regarding claim 12, Guo teaches wherein a concentration of the up-conversion nano-particles in the core portion varies along the core portion (Fig. 2e-f).
Regarding claim 18, Guo teaches a method of manufacturing an implantable light delivery device, the method comprising:
molding a mixture of an encapsulation material and up-conversion nano- particles (Fig. 1-2; p. 3 paragraph 2);
causing the encapsulation material to polymerize (Fig. 1) to form an implantable light delivery device (Note that this claim is a product-by-process claim and so the structure of the reference meets the instant limitations; MPEP 2113). comprising:
a core portion cladded in a cladding (Fig. 1), the core portion comprising up-conversion nano-particles encapsulated in an encapsulation material (Fig. 2);
a first end portion configured to receive a near infra-red radiation excitation; and
a second end portion, distal to the first end portion, configured to emit a visible light emission generated by the up-conversion nano-particles in response to the near-infra-red radiation excitation (Fig. 1e; Fig. 2e-2f; reference is teaching laser in near infra-red range of 980 nm is launched/coupled into fiber and result is up-conversion to visible light; see especially Fig. 2f in which near-infra-red laser is coupled into fiber on left and visible light emitted on right distal to where laser enters fiber; this reads on the instant limitations.).
Regarding claim 19, Guo teaches wherein molding the mixture comprises molding the mixture in the cladding (Fig. 1).
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.
Claim(s) 4, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo as applied to claim 1 above.
Regarding claim 4, Guo does not teach wherein the encapsulation material comprises hydrogel. However, Guo does teach it is known in the field to use hydrogels for creating flexible waveguides and that hydrogels are substitutable with elastomers (p. 1 paragraph 2 “stretchable polymers such as hydrogels and elastomers have been employed for the fabrication of optical waveguides that could endure large strain deformations”). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Guo to include this feature as taught by Guo because this enables flexible optical fiber (p. 1 paragraph 2).
Regarding claim 13, Guo does not teach wherein the second end portion comprises a plurality of fiber portions. Note that as explained above regarding claim 1, Guo teaches a singular version of the recited structures. It would be an obvious duplication of parts to have a plurality of fiber portions as recited; MPEP 2144.04.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo as applied to claim 1 above, in view of Kaplitt (US 20150360050 A1; 12/17/2015; cited in previous office action).
Regarding claim 7, Guo does not teach wherein the cladding comprises fluorinated ethylene propylene. However, Kaplitt teaches in the same field of endeavor (Abstract) wherein the cladding comprises fluorinated ethylene propylene ([0179]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Guo to include this feature as taught by Kaplitt because this material is biocompatible and suitable for use in optical fiber for implants ([0179]).
Claim(s) 9-10, 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo as applied to claim 1 above, in view of Hu (Near-infrared rechargeable “optical battery” implant for irradiation-free photodynamic therapy; Published 2/12/2018; cited in IDS; cited in previous office action).
Regarding claim 9, Guo does not teach wherein the up-conversion nano-particles are selected to absorb near infra-red radiation having a wavelength in the range 700nm to 1400nm and to emit an emission spectrum in the having a wavelength in the visible range 300nm to 700nm in response to the near infra-red radiation. Note that as discussed above regarding claim 1, Guo teaches 980 nm laser to excite and convert to visible light (Fig. 2e-2f). However, Hu teaches in the same field of endeavor (Abstract) wherein the up-conversion nano-particles are selected to absorb near infra-red radiation having a wavelength in the range 700nm to 1400nm and to emit an emission spectrum in the having a wavelength in the visible range 300nm to 700nm in response to the near infra-red radiation (Fig. 1; 3.1 paragraph 1). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Guo to include this feature as taught by Hu because this enables treatment of tissue from implant upconverting light (Fig. 1).
Regarding claim 10, Guo does not teach wherein the emission spectrum overlaps with an absorption spectrum of a photosensitizer. However, Hu teaches in the same field of endeavor (Abstract) wherein the emission spectrum overlaps with an absorption spectrum of a photosensitizer (Fig. 1). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Guo as taught by Hu because this enables treatment of tissue from implant upconverting light (Fig. 1).
Regarding claim 14, Guo does not teach wherein the second end portion is configured as a deformable cup or a deformable hollow sphere. However, Hu teaches in the same field of endeavor (Abstract) that implant can be shaped to meet the requirement of the tissue treatment (Fig. 5E; p. 160 left column paragraph 1). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Guo to include this feature as taught by Hu because this is suitable for treating tissue via implant (Fig. 5E; p. 160 left column paragraph 1). It would have been obvious to modify Guo and Hu to use the shapes as recited because the prior art teaches that the implant can be shaped to fit treatment as needed.
Regarding claim 15, Guo does not teach wherein the second end portion is configured as a solid sphere. However, Hu teaches in the same field of endeavor (Abstract) that implant can be shaped to meet the requirement of the tissue treatment (Fig. 5E; p. 160 left column paragraph 1). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Guo to include this feature as taught by Hu because this is suitable for treating tissue via implant (Fig. 5E; p. 160 left column paragraph 1). It would have been obvious to modify Guo and Hu to use the shape as recited because the prior art teaches that the implant can be shaped to fit treatment as needed.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo as applied to claim 1 above, in view of Lai (An upconversion nanoparticle with orthogonal emissions using dual NIR excitations for controlled two‐way photoswitching; Published 10/27/2014; cited in IDS; cited in previous office action).
Regarding claim 16, Guo does not teach wherein the up-conversion nano-particles are configured to emit a first visible light emission in response to a first near infra-red radiation excitation and to emit a second visible light emission in response to a second near infra-red radiation excitation. However, Lai teaches in the same field of endeavor (Abstract) wherein the up-conversion nano-particles are configured to emit a first visible light emission in response to a first near infra-red radiation excitation and to emit a second visible light emission in response to a second near infra-red radiation excitation (Scheme 1). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Guo to include this feature as taught by Lai because this enables using multiple wavlelengths for upconverting in therapy (Abstract; p. 14419 paragraph 1).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo (Stretchable and temperature‐sensitive polymer optical fibers for wearable health monitoring; Published 6/17/2019; cited in IDS; cited in previous office action) in view of Hu (Near-infrared rechargeable “optical battery” implant for irradiation-free photodynamic therapy; Published 2/12/2018; cited in IDS; cited in previous office action).
Regarding claim 17, Guo teaches a photodynamic therapy method comprising:
the implantable light delivery device comprising:
a core portion cladded in a cladding (Fig. 1), the core portion comprising up-conversion nano-particles encapsulated in an encapsulation material (Fig. 2);
a first end portion configured to receive a near infra-red radiation excitation; and
a second end portion, distal to the first end portion, configured to emit a visible light emission generated by the up-conversion nano-particles in response to the near-infra-red radiation excitation (Fig. 1e; Fig. 2e-2f; reference is teaching laser in near infra-red range of 980 nm is launched/coupled into fiber and result is up-conversion to visible light; see especially Fig. 2f in which near-infra-red laser is coupled into fiber on left and visible light emitted on right distal to where laser enters fiber; this reads on the instant limitations.).
Guo does not teach implanting an implantable light delivery device into a subject;
administering a photosensitizer to the subject; and
illuminating the implantable light delivery device with near infra-red radiation having excitation spectra corresponding to the up-conversion nano-particles.
However, Hu teaches in the same field of endeavor (Abstract) implanting an implantable light delivery device into a subject (Fig. 1; Fig. 5);
administering a photosensitizer to the subject (Fig. 1); and
illuminating the implantable light delivery device with near infra-red radiation having excitation spectra corresponding to the up-conversion nano-particles (Fig. 1).
Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Guo to include this feature as taught by Hu because this enables treatment of tissue from implant upconverting light with photosensitizer (Fig. 1).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo as applied to claim 18 above, in view of Pham (US 20140322512 A1;10/30/2014; cited in previous office action).
Regarding claim 20, Guo does not teach wherein causing the encapsulation material to polymerize comprises irradiating the encapsulation material with ultra-violet radiation. However, Pham teaches in the same field of endeavor ([0004]) wherein causing the encapsulation material to polymerize comprises irradiating the encapsulation material with ultra-violet radiation ([0070] “two-part PDMS systems can be cured by exposure to UV-light”). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Guo to include this feature as taught by Pham because this is a suitable method to cure the material ([0070]).
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 Jonathan T Kuo whose telephone number is (408)918-7534. The examiner can normally be reached M-F 10 a.m. - 6 p.m. PT.
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/JONATHAN T KUO/Primary Examiner, Art Unit 3792