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
Regarding the 112f claim interpretation, applicant’s amendments have overcome this interpretation and it is no longer applicable.
Regarding the objections to the drawings, applicant’s submission of amendments to the specification have overcome this objection and it is no longer applicable; the substitute spec has been entered.
Regarding the 112b indefiniteness rejections of claims 7 and 8 for lack of antecedent basis, applicant’s amendments have overcome this rejection and it is hereby withdrawn.
Regarding the 101 rejection of claims 1, 2 and 4-10 for reciting an abstract idea without significantly more, applicant’s amendments that now require a controller configured to control the light source to irradiate the target based on the determined target position recite a practical application, specifically a particular prophylaxis, and therefore are patent eligible subject matter.
Regarding the 101 rejection of claim 3 for claiming a human organism, applicant’s amendments that make it clear that these are now functional limitations of the device have rendered this rejection moot and it is hereby withdrawn.
Regarding the 102 rejection of Zingaretti, applicant has two arguments: 1. The hair follicle disclosed by Zingaretti cannot be reasonably interpreted as the marking and 2. Zingaretti fails to teach a processor that combines the plurality of images into a combined image. These arguments have been fully considered but are not persuasive.
Regarding the claimed marking, it is applicant’s position that the claimed marking must be artificial and therefore the examiner’s interpretation of a hair follicle as the claimed marking is unreasonable. The examiner disagrees. First and foremost, it is emphasized that the claimed device does not actually require a marking, but instead requires imaging units, e.g. cameras, that are configured to capture images of a marking and a processor that performs image processing/analysis on this marking. Stated differently, this is merely a functional limitation of the claimed device; see MPEP 2114. Therefore, even if a hair follicle cannot be reasonably considered a marking, which the examiner disagrees with (see explanation below), it is the examiner’s position that the imaging unit and processor operate/function in the same exact manner. Specifically, whether the visible indicator is an artificial marking (as argued by applicant) or a hair follicle (as argued by the examiner), the camera and processor operate in the same/claimed manner, i.e. the camera is capable of capturing an image of a marking/hair follicle and is able to calculate the deviation amount of this marking/hair follicle in the image, as claimed. Applicant is reminded that… "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (MPEP 2114). Furthermore, it is emphasized that… a claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." (MPEP 2115).
Additionally, the examiner contends that any visually discernable characteristic, property or indicator which can be considered/interpreted as a marking, as applicant has provided no definition or indication that the marking has to be “artificial”, as argued. In fact, the word “artificial” appears nowhere in applicant’s specification. Therefore, applicant’s arguments are improperly narrow and not commensurate in scope with the claimed invention.
Regarding the argument related to combining images, the examiner has already pointed out in the NF mailed 10/10/2025 where/how Zingaretti teaches this feature. Applicant has provided no arguments refuting the examiner’s position other than a general allegation that the reference fails to teach the limitation. The examiner maintains the same/previous position, as clearly stated in the NF.
Therefore, regarding the 102 rejection to Zingaretti, applicant’s amendments and arguments are not persuasive in overcoming the previous rejection and the 102 is substantially maintained with updated claim mapping to address applicant’s amendments.
Claim Rejections - 35 USC § 102
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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0324586 to Zingaretti.
[Claim 1] Zingaretti discloses a phototherapy device (Figs. 1 and 1A), comprising:
a barrel (tool assembly 30 including power unit 22 and energy delivery device/tool 40, Figs. 1 and 1A);
a light source which is installed inside the barrel and which emits light (energy delivery device 40, Fig 1A. At least Pars 0014 and 0042);
a plurality of imaging units configured to capture images of a marking arranged on a body (pair of cameras 28A and 28B; Par 0045. It is noted that the claimed markings are not positively recited/required and any camera is capable of imaging a marking; see MPEP 2114 and 2115);
a processor configured to execute a program stored in a storage unit to (Zingaretti makes it clear that all of the imaging processing is done by a computer or processor; at least Par 0046):
calculate a deviation amount between a plurality of images of the marking included in a plurality of images captured by the plurality of imaging units (see Fig. 9 and Par 0075 "the locations of the centers of the hair follicles are identified and matched in both the left and right rectified images." The hair follicles being interpreted as the claimed markings. See also Pars 0054-56. Specifically, in order to align or match the two images, a deviation amount must be implicitly accounted for/determined in order to correct it.);
combine, to a combined image, the plurality of images of the marking based on the calculated deviation amount (It’s clear from Pars 0054-56 and 0075-76, specifically in terms of aligning or matching the images, that combining is inherent or implicit to the image processing of stereo imaging. Furthermore, Par 0047 explicitly discloses combining images during image processing. See also Par 0117 and claim 19); and
determine a target position in the combined image corresponding to an irradiation region of light from the light source (Par 0008 "the processor is configured to register respective reference coordinate systems of the cameras with each other and with a tool frame reference coordinate system of the robotic arm." By registering the respective reference coordinates of the cameras and the tool (i.e. the laser), the position of a target (i.e. the treatment location) is implicitly determined. See also at least Pars 0011 and 0016 which discloses automatically aligning the laser with the target); and
a display unit for overlaying and displaying an image of a target on the combined image of the marking (Pars 0015 and 0101: "the images and treatment location data may be displayed on the user interface")
a controller configured to control the light source to irradiate the target based on the determined target position (“The tool assembly 30 attached to the robotic arm 27 of the image-guided robotic system 25 may comprise an energy delivery device or tool 40 and a corresponding control module responsible for controlling the energy delivery device 40 to deliver a pre-determined energy value to a treatment location (e.g., a particular area of the body surface) at a selected orientation” Par 0042; see also Abstract and Pars 0011-16 which discuss automatically aligning the laser with the target and delivering a laser beam to this target).
[Claim 2] Zingaretti discloses that the processor calculates the deviation amount from a center position of the plurality of images of the marking (Par 0075 "the locations of the centers of the hair follicles are identified and matched in both the left and right rectified images.").
[Claim 3] Zingaretti discloses wherein the plurality of imaging units are arranged behind a barrel tip (distal-most tip/end of tool assembly 30), the barrel tip configured to contact the body and the plurality of imaging units are installed outside of the barrel (see positions of cameras 28A and 28B in Figs. 1A-2).
[Claims 4-5] Zingaretti discloses cameras that are capable of imaging any number of targets or sizes thereof. Similarly, the deviation amount calculation unit taught by Zingaretti is capable of such a calculation. MPEP 2115 states… A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). It is noted that the claimed markings are not positively required/recited, as they are related to a functional limitation of the imaging units; therefore as long as the imaging unit is capable of imaging the claimed markings, then the claim language is met. MPEP 2114 states… "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.
[Claim 6] Zingaretti discloses that processor calculates a target deviation amount between the target position and a position of the markings (Par 0011: “identifying position offsets of the location or the object of interest from the at least two cameras; automatically moving the moveable arm to align the tool with the location or the object of interest on the skin based, at least in part, on the identified offsets and on maintaining while aligning the tool the fixed relationship between the at least two cameras and the tool”. See also Pars 0016, 0054-63 and 0075).
[Claim 7] Zingaretti discloses a processor to judge whether or not a position of the irradiation region is a predetermined irradiation region position based on whether or not a position of the combined image of the marking and the position of the image of the target are aligned (As discussed in relation to claim 6 above, Zingaretti discloses determining the location of the marking/hair follicle and aligning the energy/laser to specifically target/irradiate the identified marking.).
[Claim 8] Zingaretti discloses that the processor judges whether or not a center position the irradiation region of the light from the light source and a center position of the target are aligned based on the deviation amount of the target. Similar to claims 6 and 7 above, the examiner contends that aligning the laser beam to specifically target/irradiate the identified marking inherently or implicitly includes aligning the center of the light with the center of the target, as this is what is meant by “align”.
[Claim 9] Zingaretti discloses a filter which is installed in front of the plurality of imaging units and which filters emitted light of the light source (Par 0047).
[Claim 10] Zingaretti discloses wherein the wavelength of the emitted light of the light source does not overlap with an absorption wavelength of the marking (Par 0047)
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 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LYNSEY C Eiseman/ Primary Examiner, Art Unit 3796