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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/6/26 has been entered.
Notice of Amendment
In response to the amendment(s) filed on 1/6/26, amended claim(s) 1 is/are acknowledged. The following new and/or reiterated ground(s) of rejection is/are set forth:
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a collection device configured to collect a predetermined tissue portion ejected onto the collection device by the formed annular converging beam,” in claim 1, which corresponds to “a cover slip” (see page 10, lines 24-26 of Applicant’s specification as originally filed).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2016/0271419 to Varghese et al. (hereinafter “Varghese”) in view of U.S. Patent Application Publication No. 2019/0170646 to Fiolka.
For claim 1, Varghese discloses a tissue excision apparatus (Abstract) comprising:
a laser (105) (Fig. 2) (para [0026]) configured for (Examiner’s Note: functional language, i.e., capable of) emission of a beam of electromagnetic energy (106) (Fig. 2) (para [0026]);
optical components (109a, 109b, 112, and/or 124) (Fig. 2) (para [0026]-[0028]) configured to (Examiner’s Note: functional language, i.e., capable of) modify the beam of electromagnetic energy to form an annular converging beam (as can be seen in Fig. 3B) (also see para [0037] and [0043]); and
a control system (123) (Fig. 2) (para [0026]) configured to (Examiner’s Note: functional language, i.e., capable of) limit the emission of the beam of electromagnetic energy to a duration between 10 picoseconds and 10 milliseconds (para [0026]).
Varghese does not expressly disclose a collection device configured to collect a predetermined tissue portion ejected onto the collection device by the formed annular converging beam.
However, Fiolka teaches a collection device configured to collect a predetermined tissue portion ejected onto the collection device by the formed annular converging beam (Examiner’s Note: interpreted in view of the 112(f) invocation above) (170) (Fig. 1) (para [0050]).
It would have been obvious to a skilled artisan to modify Varghese to include a collection device configured to collect a predetermined tissue portion ejected onto the collection device by the formed annular converging beam, in view of the teachings of Fiolka, for the obvious advantage of providing a means to capture the sample so that it may be later analyzed/interrogated so that an analysis of the sample may be had.
For claim 3, Varghese further discloses wherein the emission of the beam of electromagnetic energy has a pulse energy between 10 mJ and 10 J (para [0034]).
Claim(s) 2, 4, and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Varghese in view of Fiolka, and further in view of U.S. Patent Application Publication No. 2019/0101748 to Hiereth et al. (hereinafter “Hiereth”).
For claim 2, Varghese and Fiolka do not expressly disclose wherein the laser is configured to emit the beam of electromagnetic energy at a wavelength between 1.2 µm and 2.5 µm.
However, Hiereth teaches wherein the laser is configured to emit the beam of electromagnetic energy at a wavelength between 1.2 µm and 2.5 µm (para [0037]).
It would have been obvious to a skilled artisan to modify Varghese wherein the laser is configured to emit the beam of electromagnetic energy at a wavelength between 1.2 µm and 2.5 µm, in view of the teachings of Hiereth, for the obvious advantage of using a wavelength that is highly absorbed by water.
For claim 4, Varghese and Fiolka do not expressly disclose wherein the laser is a Ho: YAG laser.
However, Hiereth teaches wherein the laser is a Ho: YAG laser (para [0037]).
It would have been obvious to a skilled artisan to modify Varghese wherein the laser is a Ho: YAG laser, in view of the teachings of Hiereth, for the obvious advantage of using a laser that is highly absorbed by water.
For claim 10, Varghese and Fiolka do not expressly disclose wherein the beam of electromagnetic energy is directed through an optical fiber.
However, Hiereth teaches wherein the beam of electromagnetic energy is directed through an optical fiber (para [0013]).
It would have obvious to a skilled artisan to modify Varghese wherein the beam of electromagnetic energy is directed through an optical fiber, in view of the teachings of Hiereth, for the obvious advantage of being able to direct and control the application of the laser energy to the target.
For claim 11, Varghese and Fiolka do not expressly disclose wherein the optical fiber is a multimode fiber.
However, Hiereth teaches wherein the optical fiber is a multimode fiber (para [0013]).
It would have been obvious to a skilled artisan to modify Varghese wherein the optical fiber is a multimode fiber, in view of the teachings of Hiereth, for the obvious advantage of reducing manufacturing costs (as opposed to a monomode fiber).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Varghese in view of Fiolka, and further in view of U.S. Patent No. 5,613,965 to Muller.
For claim 12, Varghese and Fiolka do not expressly disclose wherein the annular converging beam comprises a peripheral portion and a central portion and wherein the central portion of the annular converging beam has lower electromagnetic energy fluence than the peripheral portion.
However, Muller teaches wherein the annular converging beam comprises a peripheral portion and a central portion and wherein the central portion of the annular converging beam has lower electromagnetic energy fluence than the peripheral portion (as can be seen in Fig. 9) (col. 13, line 61 – col. 14, line 2).
It would have been obvious to a skilled artisan to modify Varghese wherein the annular converging beam comprises a peripheral portion and a central portion and wherein the central portion of the annular converging beam has lower electromagnetic energy fluence than the peripheral portion, in view of the teachings of Muller, for the obvious advantage of reducing energy consumption (which is what Muller already wants to do) by using less energy in the central portion, but still get a electromagnetic effect.
Claim(s) 14-15 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Varghese in view of Fiolka, and further in view of U.S. Patent Application Publication No. 2008/0119828 to Nelson et al. (hereinafter “Nelson”).
For claim 14, Varghese and Fiolka do not expressly disclose wherein the tissue excision apparatus further comprises a cooling device configured to direct a coolant toward the beam of electromagnetic energy.
However, Nelson teaches wherein the tissue excision apparatus further comprises a cooling device configured to direct a coolant toward the beam of electromagnetic energy (Abstract).
It would have been obvious to a skilled artisan to modify Varghese wherein the tissue excision apparatus further comprises a cooling device configured to direct a coolant toward the beam of electromagnetic energy, in view of the teachings of Nelson, for the obvious advantage of reducing pain.
For claim 15, Varghese and Fiolka do not expressly disclose wherein the control system is configured to synchronize an application of the coolant with the emission of the beam of electromagnetic energy.
However, Nelson teaches wherein the control system is configured to synchronize an application of the coolant with the emission of the beam of electromagnetic energy (Abstract).
It would have been obvious to a skilled artisan to modify Varghese wherein the control system is configured to synchronize an application of the coolant with the emission of the beam of electromagnetic energy, in view of the teachings of Nelson, for the obvious advantage of reducing pain.
For claim 18, Varghese and Fiolka do not expressly disclose wherein the cooling device is configured to direct 1,1,1,2-Tetrafluoroethane or CO2 toward the beam of electromagnetic energy.
However, Nelson teaches wherein the cooling device is configured to direct 1,1,1,2-Tetrafluoroethane or CO2 toward the beam of electromagnetic energy (para [0088] and [0092]).
It would have been obvious to a skilled artisan to modify Varghese wherein the cooling device is configured to direct 1,1,1,2-Tetrafluoroethane or CO2 toward the beam of electromagnetic energy, in view of the teachings of Nelson, for the obvious advantage of reducing pain.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Varghese in view of Fiolka and Nelson, and further in view of U.S. Patent No. 6,632,219 to Baranov et al. (hereinafter “Baranov”).
For claim 16, Varghese and Fiolka do not expressly disclose wherein the cooling device comprises a solenoid valve and a nozzle.
However, Nelson teaches wherein the cooling device comprises a nozzle (para [0018]).
Additionally, Baranov teaches wherein a cooling device comprises a solenoid valve (50).
It would have been obvious to a skilled artisan to modify Varghese wherein the cooling device comprises a solenoid valve and a nozzle, in view of the teachings of Nelson and Baranov, for the obvious advantage of controlling the application of coolant from the cooling device.
Response to Arguments
Applicant’s arguments filed 1/6/26 have been fully considered. They will be treated in the order they were presented.
With respect to the first argument, this argument is conclusory. Why does the combination of Barghese and Fiolka not teach the claim language? What is the rational underpinning? Applicant cites to the written description, but “a speed of 38.3 m/s” (see page 7 of the response) isn’t recited in the claims. The claim language at issue is being interpreted under 35 U.S.C. 112(f) and the corresponding structure is a cover slip, which Fiolka teaches.
With respect to the second argument, the motivation for the rejection is ”for the obvious advantage of providing a means to capture the sample so that it may be later analyzed/interrogated so that an analysis of the sample may be had.” Para [0050] of Fiolka explicitly states “the sample disposed on the cover slip 170.” Therefore, it is unclear how “Fiolka’s cover slip is not intended to collect a sample but to be analyzed” as argued on page 7 of the response. Does Applicant have evidence of this assertion?
With respect to the third argument, the examiner can see how the wording of the previous response to arguments may have been confusing. The skilled artisan would not have read Applicant’s specification to glean a roadmap by which to construct the claimed invention. That is not what was meant by the previous response. What was meant is that Applicant’s specification recognizes that energy levels as low as 10 mJ may be used to displace tissue (see page 5, lines 9-15 of Applicant’s specification as originally filed). So Applicant’s specification was being used as evidence as to what energy levels are capable of displacing tissue, not as a way to reconstruct the invention. The examiner apologizes for any confusion regarding this issue.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
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