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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/10/2026 has been entered.
Response to Arguments
Regarding the drawing objections, applicant’s arguments and the amendments to the specification have overcome these objections and they are hereby withdrawn.
Regarding the 112b rejection, applicant’s amendments and related arguments have overcome this rejection and it is hereby withdrawn.
Regarding the 103 rejection, applicant's amendments and related arguments have been fully considered but they are not persuasive. Applicant’s arguments focus solely on the Bukesov reference, while ignoring Weir and Deckelbaum. Specifically, applicant argues that Bukesov teaches a spectrometer and therefore fails to teach the claimed photodiode. First, the examiner contends that the current claim language does not necessarily distinguish or differentiate from a spectrometer, as many spectrometers include photodiodes. Stated differently, claiming a photodiode does not preclude the use of a spectrometers; This is made clear in Bukesov which teaches a spectroscopic system that uses photodiodes, i.e. CCD or CMOS sensors (Pars 0108, 0131, 0154, 0166, 0171 and 0174). Specifically, CCD or CMOS sensors inherently include photodiodes. Furthermore, as previously pointed out, Bukesov explicitly teaches an embodiment with both a spectrometer and photodiodes, i.e. imaging sensors (144, Fig. 5) from CCD or CMOS camera (Pars 0078). Therefore, in either interpretation, Bukesov clearly teaches the use of photodiodes, i.e. CCD or CMOS imaging sensors. What Bukesov fails to explicitly teach (as previously pointed out), is the claimed configuration/arrangement of photodiodes and narrow bandpass optical filters. However, this arrangement is clearly taught and made obvious by Wier and Deckelbaum, as detailed in the previous 103 rejection, which applicant fails to address/mention in their remarks. Based on these lack of arguments, the examiner substantially maintains the previous 103 rejection with updated claim mapping to address applicant’s amendments.
The examiner reiterates the arguments/position discussed in the response to arguments section in the final rejection mailed 5/26/26, where the examiner explained that applicant’s themselves disclose both a spectrometer and a photodiode as equivalent options. In fact “spectrometer” is mentioned 23 times in applicant’s specification, while “photodiode” is mentioned 13 times. So applicant’s arguments that attempt to make a patentable distinction between a spectrometer and photodiode or provide a benefit/advantage to the currently claimed photodiode arrangement is simply not supported by applicant’s own specification, as applicant themselves recognize these two options as equivalents.
MPEP 2145: One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Where a rejection of a claim is based on two or more references, a reply that is limited to what a subset of the applied references teaches or fails to teach, or that fails to address the combined teaching of the applied references may be considered to be an argument that attacks the reference(s) individually.
Regarding claim 47, applicant argues that Brinkmann fails to teach the claim language. Again, applicant’s arguments fail to take into account the fact that the rejection is a combination of Bukesov, Weir and Deckelbaum. Specifically, the reflected light detected by at least two photodiodes at two different selected wavelength bands is explicitly taught by Weir and Deckelbaum, while Brinkmann discloses that it’s known to use a ratio of this detected light, i.e. reflected intensities in different wavelength ranges, for human stone detection. Therefore, the examiner maintains the rejection.
Priority
It is noted that the provisional application 63/062118 does not provide sufficient support for the claimed “at least two photodetectors… each photodetector configured to receive the portion of light in a different selected wavelength band” and/or “a computing device configured to simultaneously analyze the optical data from each photodetector relative to characteristic criteria, and based on a comparison of the optical data to the characteristic criteria, determine whether the treatment target is a target material or a non- target material”. Therefore, the effective filing date for the current application is 5/6/2021.
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.
Claims 29, 32, 34, 35, 37, 39 and 41-46 are rejected under 35 U.S.C. 103 as obvious over US 2021/0044079 to Bukesov in view of US 2008/0226029 to Weir and further in view of US 5,350,375 to Deckelbaum.
*As described above, the effective filing date of the current application is 5/6/2021, which would make Bukesov a 102(a)(2) reference, i.e. filed before.
[Claim 29] Bukesov discloses a surgical laser system (best seen in Figs. 1, 5 and 9-11, with particular emphasis on Fig. 10B) comprising
a surgical fiber (150, Fig. 5; equivalent to laser fiber 912, Fig. 10A-B) configured to:
receive light reflected by a treatment target and surrounding area in a treatment area (feedback signals 130; at least Pars 0003 and 0076-80. Equivalent to reflected spectroscopic signal 1070 and/or imaging signal 1050, Figs. 10A-B; Par 0109-110), and
deliver laser radiation from a treatment laser source (1020) to the treatment target (“A reflected spectroscopic signal 1070 (which is an example of the feedback signals 130 of FIGS. 1 and 2) may travel back to the feedback-controlled laser treatment system 1010 through the same optical pathway, such as the laser fiber 912, that is used for transmitting the electromagnetic radiation from the light source 1030 to the target structure” Par 0109. Fig. 10B clearly shows a single fiber (not labelled in Fig. 10B, but clearly refers to element 912, as shown in Fig. 10A) that delivers the laser light from treatment light source 1020, and receives light reflected from the target 1070; see arrows going into and coming out of laser fiber);
a broad spectrum illumination light source (1030; Pars 0111 and Table 2, e.g. 360-2500 nm Tungsten Halogen lamp) that provides light to illuminate the treatment target and surrounding area;
at least two photodiodes (feedback analyzer 1012 in Fig. 10B, which is equivalent to feedback analyzer 140, Fig. 5 which includes spectrometers 142 and/or image sensor 144; specifically CCD or CMOS image sensors described in Pars 0078, 0108, 0131, 0154, 0166, 0171 and 0174 are/include photodiodes), each photodiode configured to receive a portion of the light reflected from the treatment area in a selected wavelength band of the broad spectrum illumination light source, and to generate optical data corresponding to the portion of the reflected light detected by the photodiode, each photodiode configured to receive the portion of light in a different selected wavelength band, the optical data comprising reflected light intensity at each different wavelength band (at least Pars 0077-79, 0110-111 and 0120-122; Figs. 12-16. Specifically, Par 0078 states “The feedback analyzer 140 may include optionally, an imaging sensor 144 (e.g., CCD or CMOS camera sensitive in ultraviolet (UV), visible (VIS) or infrared (IR) wavelengths) in an example. In some examples, the spectroscopic sensor 142 may include more than a single type of spectrometer or imaging camera listed herein to enhance sensing and detection of various features (e.g., carbonized and non-carbonized tissue, vasculature, and the like)”. Additionally or alternatively, each photodetector (142 and/or 144) is inherently capable of functioning in the claimed manner, as these are the exact same photodetectors disclosed by applicant; MPEP 2114. If applicant disagrees; see alternative 103 rejection in view of Weir below); and
a computing device (laser controller 160) configured to analyze the optical data from each photodetector relative to characteristic criteria, and based on a comparison of the optical data to the characteristic criteria, determine whether the treatment target is a target material or a non-target material a surgical fiber, at least two photodetectors and a computing device configured to simultaneously analyze the optical data from each photodetector relative to characteristic criteria, and based on a comparison of the optical data to the characteristic criteria, determine whether the treatment target is a target material or a non-target material (At least Pars 0058 and 0082-84. In particular, Par 0083 states “The laser controller 160 may determine one or more properties of the target tissue 122 based on the feedback signal(s), as will be described further herein. For instance, the laser controller 160 may compare the amplitude of the feedback signals to present minimum and maximum amplitudes, and determine a property (e.g., carbonized, coagulated, etc.) of the tissue” and Par 0058 states “For example, in laser lithotripsy that applies laser to break apart or dust calculi, automatic and in vivo recognition of calculi of a particular type (e.g., chemical composition of a kidney or pancreobiliary or gallbladder stone) and distinguishing it from surrounding tissue would allow a physician to adjust a laser setting (e.g., power, exposure time, or firing angle) to more effectively ablate the target stone, while at the same time avoiding irradiating non-treatment tissue neighboring the target stone.”), wherein the target material of the treatment target is a stone and the non-target material is soft tissue or a surgical component (Pars 0110, 0112, 0131, 0151-152 discuss identification and classification of a target structure as a stone/calculi or anatomical/soft tissue; “target structure 122 is identified as an intended treatment structure type (e.g., a specified soft tissue type or a specified calculus type” Par 0112)
Regarding the limitation “each photodiode configured to receive the portion of light in a different selected wavelength band”, as discussed above the examiner takes the position that Bukesov explicitly teaches these claimed photodiodes, but if applicant disagrees, such photodiodes are obvious. Specifically, in the same field of endeavor, Weir discloses the concept of using separate photodiodes for each detected wavelength (37, Fig. 4; at least Par 0022-28 and 0058, in particular Par 0028). Therefore, it would have been obvious to modify the multiple photodetectors/spectrometer taught by Bukesov to be specifically configured as a plurality of photodiodes that each analyze/detect a separate/different wavelength, as taught by Weir, as this is a known configuration of a similar laser endoscopic treatment device in order to detect multiple wavelengths reflected from tissue.
Bukesov fails to the claimed optical filter, however in the same field of endeavor, Weir discloses the use of an optical filter (wavelength separator 35, Fig. 4) located upstream of the at least two detectors (37), the filters configured to pass only the selected wavelength band to the respective photodetector (“wavelength separator 35 separates the incoming radiation 29 into pathways 36. Such separation may be performed by filters, gratings, or other devices… Each separated wavelength of radiation is then sent to detectors 37 in the detector assembly 5.” Par 0028). Therefore, it would have been obvious to one of ordinary skill in the art to modify Bukesov to include the configuration of multiple photodetectors + filters, as taught by Weir, as this is a known configuration for detection of “selected wavelength bands” over a broad range of total wavelengths, i.e. each detector is responsible for a small/narrow band of wavelengths, but the total detection of all the detectors together is collectively responsible for a wide/broader band of wavelengths. This is the same desired detection/analysis taught by Bukesov, a wide/broad range of wavelengths being collectively detected, e.g. broad band light from light source 1030, and each specific narrow wavelength band of the broad wavelength spectrum being individually/separately detected for different purposes. The examiner contends that the claimed modification, i.e. to incorporate the photodetector + filter, configuration taught by Weir can either replace, i.e. a substitution, the photodetectors (142 and/or 144) of Bukesov or can be in addition, as Bukesov explicitly teaches that the use of multiple photodetectors can “enhance sensing and detection of various features” (Par 0078).
Bukesov and Weir fail to explicitly disclose a narrow bandpass optical filter, as Weir teaches a generic optical filter. While the examiner contends that such a filter would almost certainly have to be a narrow bandpass filter in order to perform the disclosed wavelength separation so that “each separated wavelength of radiation is then sent to detectors 37”, as disclosed by Weir in Par 0028, but it’s not necessarily clear what type of filter is being used. However, in the same field of endeavor, Deckelbaum discloses a similar laser treatment and detection system that uses narrow bandpass optical filters (52 and 56; Fig. 1) located upstream of individual/separate photodetectors (photomultiplier/PMT 54 and 58) in order to select a “desired wavelength” for detection (Col 4, line 47 to Col 5, line 3). Therefore, it would have been obvious to one of ordinary skill in the art to substitute the generic optical filter taught by Weir for the specific narrow bandpass filter taught by Deckelbaum, as this is a simple substitution of one known optical filter for another to obtain predictable results, i.e. selecting the desired wavelength for detection by a photodetector.
[Claims 32 and 34] As discussed above, the broad spectrum illumination light source (1030) can be any of the lights sources described in Par 0111 and Table 2, including lamps or LEDs, e.g. 360-2500 nm Tungsten Halogen lamp.
[Claims 35 and 37] It’s clear that the “different selected wavelength bands” that are detected by each of the photodetectors relate to the light being sent to the tissue/target by both treatment light source (1020) and broad spectrum illumination light from source (1030), as well as fluorescence based on this light interacting with the target. As made clear in Pars 0106-107, 0111 and Table 2, these light sources emit wavelengths that fall completely within or overlap with applicant’s claimed wavelengths; see MPEP 2131.03 and MPEP 2144.05 which states “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. Furthermore, Bukesov discloses “multiple narrow emitting” LEDs or laser diodes with a wavelength range in the UV, visible, infrared and fluorescent (Table 2). Therefore, it would have been obvious to choose/try/select any wavelength from 410-700 nm as the desired center wavelength. The bandwidth of the disclosed laser sources (Par 0107) fall within applicant’s claimed range. Fig. 13B and Par 0120 explicitly teach detecting light in the range of 400-700 nm.
Additionally, it’s clear from both Weir and Deckelbaum that the “selected wavelength bands” detected by the photodetector are narrow/small band of wavelengths and relate to individual wavelengths or very small wavelength ranges, making the claimed bandwidth either explicitly taught or obvious, as optimization of a result effective variable.
[Claims 39 and 41] Bukesov discloses distinguishing between soft tissue and hard tissue/stone, as well as the specific type of stone/calculus (at least Pars 0058-63, 0077 and 0120-122; Figs. 12-16). Bukesov additionally teaches determining the distance between the distal end of the laser fiber and the target structure (Par 0112)
[Claims 42 and 43] Bukesov discloses using the determination of tissue as feedback to adjust the laser parameters (at least Pars 0060-63 and 0133). Par 0133 states “Based on the spectroscopic system feedback, the signal analyzer detects target material composition, and suggests a laser operating mode (also referred to as a laser setup), such as operating parameters for at least one laser module, to achieve effective tissue treatments for the identified tissue composition. Examples of the operating parameters may include at least one laser wavelength, pulsed or continuous wave (CW) emission mode, peak pulse power, pulse energy, pulse rate, pulse shapes, and the simultaneous or sequenced emission of pulses from at least one laser module.”
[Claim 44] Bukesov discloses a laser source for lithotripsy (at least 0169). Bukesov is silent regarding a filter positioned upstream of the filters.
[Claim 45] Bukesov discloses a pulsed laser source (At least Par 0133), as well a computer device that performs real-time analysis (Pars 0131). The examiner contends that real-time analysis inherently/necessarily includes analysis between the pulses, as real-time would necessarily include before, during and after laser pulses; it is noted that before and after is the same as in between pulses. This is the same configuration disclosed by applicant “computing device controlled laser system can therefore be used to receive and analyze response signals corresponding to the probing source in real time before, during, and after laser pulses for purposes of distinguishing between contact with stone vs. soft tissue” (Par 0206 of applicant’s specification).
[Claim 46] Bukesov discloses that the optical data corresponds to at least an intensity value of the light (at least Pars 0083, 0087, 0104, 0134-135; Figs. 12 and 24-25). Additionally or alternatively, a photodetector by definition/inherently measures the intensity of light.
Claim 47 is rejected under 35 U.S.C. 103 as being unpatentable over Bukesov, Weir and Deckelbaum as applied to claim 29 above, and further in view of US 2016/0361120 to Brinkmann et al.
Bukesov, Weir and Deckelbaum are discussed above, but fail to explicitly detecting/analyzing a ratio of two different wavelengths. However, in the same field of endeavor, Brinkman discloses “the human stone detection technique includes evaluating multiple wavelength ranges. For instance, a ratio of a received intensity in a first wavelength range and a second wavelength range can be used for human stone detection.” (Par 0184). Therefore, it would have been obvious to one of ordinary skill in the art to modify the device of Bukesov, Weir and Deckelbaum to analyze/evaluate the ratio of two different wavelengths, as taught by Brinkmann, as a known technique for stone/calculi detection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The claimed configuration/arrangement of multiple photodiodes/photodetectors each having a narrowband filter so that each detector on receives reflected light intensities at certain wavelengths is known in the art:
US 5,071,417 to Sinofsky (Fig. 6)
US 5,197,470 to Helfer (Fig. 1A; detectors D1 to Dn and filters F1 to Fn)
US 2004/0167502 to Weckwerth (Par 0062)
US 2005/0165288 to Rioux (Par 0029)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lynsey C Eiseman whose telephone number is (571)270-7035. The examiner can normally be reached Monday-Thursday and alternating Fridays 7 to 4 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at 571-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796
