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 .
Claims 1-20 are pending for examination.
Applicant’s election without traverse of Invention I, claims 1-13, in the reply filed on 12/08/2025 is acknowledged.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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: “an output portion configured to output” in claim 1.
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. Supports can be found in at least paragraphs [0115-0116]; [0126]; [0129]; [0141]; ]0205]; element 34 in Fig. 2 of the PGPUB.
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 § 112
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.
Claims 1-13 are 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. Claims that depend directly or indirectly from claim 1 is/are also rejected due to said dependency.
In regard to claim 1, the claim recites “at least one laser, the laser having a laser output”, wherein “the laser” lacks of sufficient antecedent basis. It is unclear whether “the laser” refers to the “at least one laser” or an additional laser. Clarification is requested by amendments. If the first, it is suggested that “the at least one laser” should be set forth.
In regard to claim 3, the claim recites “ n lasers”. It is unclear whether the PIC comprises “at least one laser and n additional lasers” or “the least one laser comprises n lasers”. Clarification is requested by amendments.
In regard to claim 4, the claim recites “each optical splitter is coupled to one input port, one first output port, and one second output port and wherein the output portion includes n output channels, each output channel being coupled to one second output port”. Claim 3, which claim 4 depends from, recites “a splitting/combining portion including n input ports, a first output port, and a second output port”. First of all, it is unclear whether “one input port, one first output port, and one second output port” refer to the “n input ports, a first output port, and a second output port” or additional input/ output ports. Clarification is requested by amendments. If the first, it is suggested that “one of the n input ports, the first output port, and the second output port” should be set forth. Secondly, it is unclear whether the second appearance of “one second output port” is the same or different as the recited first appearance of “one second output port”. Clarification is requested by amendments.
In regard to claim 5, the claim recites “the first input port, and the second input port, which lack of sufficient antecedent bases. It is unclear whether the first/ second input ports are the same or different as the “ n input ports” as recited in claim 3 or they are additional input ports. Clarification is requested by amendments. If the first, it is suggested that “a first/ second of the n input ports” or similar language should be set forth.
In regard to claim 6, the claim recites “each optical splitter is coupled to one input port”. It is unclear whether the “one input port” is one of the “n input ports” recited in claim 3 or an additional input ports. Clarification is requested by amendments. If the first, it is suggested that “one of the n input ports” should be set forth. In addition, “the optical combiner” lacks of sufficient antecedent basis. It is unclear whether “the optical combiner” refers to the “one optical combiner” or an additional optical combiner. Clarification is requested by amendments. If the first, it is suggested that “the one optical combiner” should be set forth.
In regard to claim 8, the claim recites “at least one of the n tunable lasers” lacks of sufficient antecedent basis. The relationship(s) between “at least one of the n tunable lasers” and “a tunable laser” recited in claim 2 is not clearly defined in the claims.
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 1-4, 6, 10-11, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horstmeyer et al. (USPGPUB 2019/0336006 – applicant cited). In regard to claim 1, Horstmeyer discloses a photonic integrated circuit (PIC) (Figs. 1-2, 5-6 and 9 and associated descriptions), the photonic integrated circuit comprising: at least one laser (elements 68, Figs. 6-7 and 9 and associated descriptions; laser, [0017] and [0083-0084]), the laser having a laser output (each of the PICs comprises an output port configured for emitting the respective sample light into the anatomical structure, [0017]), a measuring portion (element 100, Figs. 6 and 9 and associated descriptions) including a measuring port (elements 54b, Figs. 6 and 9 and associated descriptions) and configured to measure an intensity and/or wavelength of light input at the measuring port (elements 104a and 104b, Figs. 6 and 9 and associated descriptions; [0096-0099]), and an output portion configured to output light from the photonic integrated circuit to a portion of a tissue of a user (each PIC comprises element 54a and associated output portions and/or the output portion(s) under element 20 for emitting light to a brain of the user, Figs. 1-2, 5-6 and 9 and associated descriptions), wherein the laser generates light having wavelength below 1200 nm ([0068-0070]).
In regard to claim 2, Horstmeyer discloses the laser includes a ring resonator laser, a laser generating light having a fixed wavelength, a laser being constructed using hybrid integration, and/or a tunable laser ([0068-0070]; [0083-0087]).
In regard to claim 3, Horstmeyer discloses n lasers, n being an integer greater than or equal to 2 and each laser has a laser output (rejected as best understood, see the 35 USC 112(b) rejection above; two-dimensional array of photonic integrated circuits (PICs) 30, Fig. 2 and associated descriptions; Figs. 5-6 and 9 and associated descriptions; [0075]; [0078]; each PIC comprises optical source 68, Fig. 6 and associated descriptions), and a splitting/combining portion (each PIC comprises elements 86a, 86b, 86c, and/or 98, Fig. 6 and associated descriptions) including n input ports (each PIC comprises an input port between elements 88a and 86a, Figs. 2 and 5-6 and associated descriptions), a first output port (ports between elements 98 and 88h, Fig. 6 and associated descriptions), and a second output port (ports between elements 86a and 88b, Fig. 6 and associated descriptions), each input port being coupled to a respective one of the laser outputs (Figs. 2 and 5-6 and associated descriptions), the first output port being coupled to the measuring port (Fig. 6 and associated descriptions), and the second output port being coupled to the output portion (Fig. 6 and associated descriptions).
In regard to claim 4, Horstmeyer discloses the splitting/combining portion includes n optical splitters (each PIC comprises at least one optical splitter 86a, Fig. 2 and 5-6 and associated descriptions), each optical splitter is coupled to one input port, one first output port, and one second output port (rejected as best understood, see the 35 USC 112(b) rejection above; input and output ports, referring to claim 3 above) and wherein the output portion includes n output channels, each output channel being coupled to one second output port (rejected as best understood, see the 35 USC 112(b) rejection above; each PIC comprises an output channel 88b/54a, Fig. 2 and 5-6 and associated descriptions).
In regard to claim 6, Horstmeyer discloses the splitting/combining portion includes n optical splitters (each PIC comprises splitters 86a, 86b, and/ or 86c, Fig. 6 and associated descriptions) and one optical combiner (each PIC comprises a combiner 98, Fig. 6 and associated descriptions), wherein each optical splitter is coupled to one input port (rejected as best understood, see the 35 USC 112(b) rejection above; splitter 86a or 86b or 86c, Fig. 6 and associated descriptions), the one optical combiner (rejected as best understood, see the 35 USC 112(b) rejection above; optically coupled to combiner 98, Fig. 6 and associated descriptions) and to the second output port for splitting the light received from the respective laser into the optical combiner and the second output port (Fig. 6 and associated descriptions), and wherein the optical combiner is coupled to the measuring portion for combining the light received from the n optical splitters (Fig. 6 and associated descriptions), and wherein the output portion includes n output channels, each output channel being coupled to a respective one of the optical splitters (each PIC comprises an output channel 88b/54a, Fig. 2 and 5-6 and associated descriptions).
In regard to claim 10, Horstmeyer discloses the laser output is split into a first optical component (element 48, Fig. 6 and associated descriptions) and a second optical component (elements 90, 90a, and/or 90b, Fig. 6 and associated descriptions), wherein the first optical component is arranged to be transmitted to and generate speckle at the portion of tissue of the user (element 48, Fig. 6 and associated descriptions; speckle, [0082] and [0096-0097); the photonic integrated circuit further comprising: one or more detectors (elements 104a and/ or 104b, Fig. 6 and associated descriptions), each detector configured to receive the speckle generated by the first optical component at the portion of tissue (elements 104a and/ or 104b, Fig. 6 and associated descriptions); and one or more optical splitters optically coupling the second optical component to one or more respective input(s) of the one or more detectors (elements 86b or 86c, Fig. 6 and associated descriptions); wherein the photonic integrated circuit is further adapted to measure interference at the one or more detectors between a sample arm formed by the first optical component (sample arm 62, Fig. 6 and associated descriptions) and a reference arm formed by the second optical component (reference arm 64, Fig. 6 and associated descriptions).
In regard to claim 11, Horstmeyer discloses the photonic integrated circuit is configured to execute diffuse correlation spectroscopy (DCS), and/or wherein the photonic integrated circuit executes a measurement of pulse oximetry (SpO2), oxygen saturation, carboxy haemoglobin, methaemoglobin, or fractional oxygen saturation ([0053]; [0069]; [0110]).
In regard to claim 13, Horstmeyer discloses a wearable device comprising a photonic integrated circuit according to claim 1 (element 20, Figs. 1-6 and associated descriptions).
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Horstmeyer as applied to claims 1-4, 6, 10-11, and 13 above, and further in view of Koch et al. (USPN 10,411,430). In regard to claim 7, Horstmeyer discloses all the claimed limitations except a control portion coupled to the n lasers and the measuring portion for tuning the n lasers based on the intensity and/or the wavelength measured by the measuring portion, wherein the control portion tunes all n tunable lasers using a common tuning algorithm.
Koch teaches a PIC (Fig. 1 and associated descriptions; PIC/ waveguides, Col 2 lines 19-34) comprises a control portion coupled to a laser (element 102, Fig. 1 and associated descriptions) and a measuring portion (elements 104/108, Fig. 1 and associated descriptions) for tuning the laser based on the intensity and/or the wavelength measured by the measuring portion (detector 108, Fig. 1 and associated descriptions; Col 3 line 42 – Col 4 line 18), wherein the control portion tunes the tunable laser using a common tuning algorithm (locks the peak wavelength of the tunable laser… apply a hill-climbing algorithm to set the laser wavelength to match the peak wavelength, Col 3 line 42 – Col 4 line 18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify each of the n lasers (Horstmeyer) to incorporate the control portion/ detector configurations and associated elements/ functions as taught by Koch, since both devices are PIC systems and one of ordinary skill in the art would have recognized that control portion/ detector configurations and associated elements/ functions as taught by Koch facilitate locking/ tuning the output of the tunable laser at a selectable wavelength (see Koch). The rationale would have been tune/ lock each of the laser’s output at selectable wavelength.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Horstmeyer as applied to claims 1-4, 6, 10-11, and 13 above, and further in view of Zilkie (USPGPUB 2017/0222398). In regard to claim 8, Horstmeyer discloses all the claimed limitations except the tunable laser includes a reflective semiconductor optical amplifier (RSOA) and a tuning element, wherein the tuning element includes a micro-ring reflector and/or a sampled Distributed Bragg Reflector (DBR) grating, and wherein at least one of the n tunable lasers includes phase control section coupled between the reflective semiconductor optical amplifier (RSOA) and the tuning element for determining the phase of light.
Zilkie teaches a discrete wavelength tunable laser (Figs. 1-5 and associated descriptions) comprises a reflective semiconductor optical amplifier (RSOA) ([0051]) and a tuning element (DBR grating, [0051]), wherein the tuning element includes a micro-ring reflector and/or a sampled Distributed Bragg Reflector (DBR) grating (DBR grating, [0051]), and wherein at least one of the n tunable lasers includes phase control section coupled between the reflective semiconductor optical amplifier (RSOA) and the tuning element for determining the phase of light (rejected as best understood, see the 35 USC 112(b) rejection above; phase tuner between RSOA and DBR grating, [0051]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the laser (Horstmeyer) with the laser configurations and associated elements/functions as taught by Zilkie, since both devices are tunable laser systems and one of ordinary skill in the art would have recognized that the laser configurations as taught by Zilkie is an alternative equivalent system for providing discrete wavelengths (see Zilkie). The rationale would have been the simple substitution of one known, equivalent element for another to obtain predictable results (obvious to substitute elements, devices, etc.), KSR, 550, U.S. at 417.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Horstmeyer as applied to claims 1-4, 6, 10-11, and 13 above, and further in view of Ivanov (USPGPUB 2017/0138789 – applicant cited). In regard to claim 9, Horstmeyer discloses the photonic integrated circuit includes a waveguide ([0017]; [0024]; [0084]) and the laser generates light having wavelength below 1000 nm ([0068-0070]) but does not specifically disclose a waveguide core made from silicon nitride (Si3N4).
Ivanov teaches a waveguide comprises a waveguide core made from silicon nitride (Si3N4) (higher-refractive index material of the waveguide… silicon nitride (Si3N4), [0040]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the material of the waveguide core (Horstmeyer) with the silicon nitride as taught by Ivanov to yield predictable results, since both waveguides are optical transmission devices and one of ordinary skill in the art would have recognized that silicon nitride is an alternative equivalent for making a waveguide (see Ivanov). The rationale would have been the simple substitution of one known, equivalent element for another to obtain predictable results (obvious to substitute elements, devices, etc.), KSR, 550, U.S. at 417.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Horstmeyer as applied to claims 1-4, 6, 10-11, and 13 above, and further in view of Setija et al. (WO 2021/058338 – applicant cited). In regard to claim 12, Horstmeyer discloses all the claimed limitations except a homogenizer, the homogenizer comprising a planar waveguide device which receives light from the laser and generates interference to produce multiple statistically uncorrelated speckle patterns that are combined to provide the optical output at the output portion.
Setija teaches a radiation system (Fig. 5 and associated descriptions; photonic integrated circuit (PIC), [0087]; PIC, [0093]) comprises a homogenizer (element 522, Fig. 5 and associated descriptions), the homogenizer comprising a planar waveguide device which receives light from the laser and generates interference to produce multiple statistically uncorrelated speckle patterns that are combined (adjust the amount of incoherence of beam of radiation 516 without moving element, [0099]; the spatial distribution of the speckle pattern is randomized… the spatial coherence of beam of radiation 516 is scrambled over time, [0100]) and overcoming a known issue when a laser is used as an illumination source ([0082]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the PIC (Horstmeyer) to incorporate the homogenizer and associated elements/functions as taught by Setija, since both devices are PICs with illumination sources and one of ordinary skill in the art would have recognized that the homogenizer and associated elements/functions as taught by Setija may overcome a known issue with using a laser as an illumination source (see Setija). The rationale would have been to overcome a known issue when a laser is used as an illumination source.
Conclusion
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/CHU CHUAN LIU/Primary Examiner, Art Unit 3791