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
Applicant’s arguments with respect to the independent claims have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
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 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 1-6, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Zerfas et al (US 8,419,293 B2) in view of Griffin (US 9,122,009 B1).
Zerfas teaches:
1. A laser delivery device (Fig. 5), comprising:
a connector portion (570) at a proximal end of the laser delivery device (at 507), wherein the connector portion (570) includes a ferrule (572) and a glass capillary (500) (C12 L44-45); and
an optical fiber (552) connecting the connector portion (570) to a distal end of the laser delivery device (20, Fig. 1);
wherein the capillary (500) at least partially surrounds a proximal portion (any portion surrounded by 500) of the optical fiber (552), and
wherein at least a portion of the ferrule (572) is spaced away from the capillary (500) to form a hollow portion (525) between the capillary (500) and the ferrule (572) in the connector portion (570).
9. The laser delivery device of claim 1, wherein a proximal end (at 507) of the optical fiber (552) is configured to be directly coupled to a laser source (20) (C3 L60 – C4 L7).
10. The laser delivery device of claim 9, wherein the proximal end (at 507) of the optical fiber (552) is configured to be coupled to a holmium laser (20) (C3 L60 – C4 L7).
Zerfas does not teach expressly wherein the capillary includes a plurality of textured portions including one or more of dimples, bumps, or internally dispersed particles, the plurality of textured portions having at least one smooth portion therebetween that is free of dimples, bumps, and internally dispersed particles, wherein the optical fiber is configured to receive laser energy and the one or more dimples, bumps, or internally dispersed particles are configured to scatter portions of the laser energy that escape the optical fiber; and
wherein the capillary includes a proximal smooth portion that is free of dimples, bumps, and internally dispersed particles, wherein the proximal smooth portion is at a proximal portion of the capillary.
Griffin teaches a laser delivery device (Figs. 12A-E), comprising a capillary (565) wherein the capillary (565) includes a plurality of textured portions (580, 595) including dimples (580) (C11 L53-62), the plurality of textured portions (580, 595) having at least one smooth portion therebetween that is free of dimples, bumps, and internally dispersed particles (the surface between each centro-symmetric profile and TIR profiles are free of these portions, see Fig. 12C), wherein an optical fiber (555) is configured to receive laser energy and the dimples are configured to scatter portions of the laser energy that escape the optical fiber (555) (C11 L48 – C12 L19), and
(claim 2) wherein the capillary (565) includes a proximal smooth portion (570) that is free of dimples, bumps, and internally dispersed particles, wherein the proximal smooth portion (570) is at a proximal portion of the capillary (565) (see Fig. 12B). The smooth portion can also be considered the areas between each dimple (580) or TIR profile (595).
Zerfas and Griffin are analogous art because they are from the same field of endeavor, laser delivery devices.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the capillary of Zerfas to include the capillary as taught by Griffin.
The motivation for doing so would have been for accepting desirable radiation since the boundary between acceptable and unacceptable radiation may be maintained within the core dimension such that unacceptable energy that may inadvertently drift into the transition region within the core diameter continues to be refracted to angles that are subject to redirection within the furrow features of the sleeve and/or the outer ferrule rather than coupling to the core (Griffin, C12 L25-33).
Zerfas further teaches:
3. The laser delivery device of claim 2, wherein the hollow portion (525) at least partially overlaps with the first portion of the capillary (500) (see Fig. 5). When combined with the capillary of Sanders is incorporated, a dimple/textured portion will overlap with the first portion.
4. The laser delivery device of claim 3, wherein the capillary (500) is fused to the optical fiber (552) over at least a portion of an overlap of the proximal portion of capillary (500) with the optical fiber (552) (C11 L24-41).
Concerning claim 5, Zerfas and Griffin do not state wherein the proximal portion of the capillary is fused to the proximal portion of the optical fiber with a CO2 laser, but this is a method of how the device is made "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
Concerning claim 6, Zerfas teaches a glass capillary as discussed and the scattering of light is a function of the structure and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); (In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[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). Further, the scattering is taught by Griffin, which has been combined with Zerfas above.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Zerfas and Griffin as applied to claim 1 above, and further in view of Appling et al (US 8,864,755 B2).
Zerfas and Griffin teach the laser delivery device previously discussed.
Zerfas and Griffin do not teach expressly a crimp, wherein the crimp radially surrounds a portion of the optical fiber and a portion of the capillary, wherein the crimp includes a cup-like shape in a proximal portion of the crimp, wherein the cup-like shape of the crimp surrounds both the optical fiber and the capillary, and wherein the crimp extends longitudinally in a distal direction surrounding the optical fiber.
Appling teaches a laser delivery device (Fig. 4-5) comprising a crimp (33), wherein the crimp (33) radially surrounds a portion of an optical fiber (3) and a portion of a capillary (9), wherein the crimp (33) includes a cup-like shape (tube with an open end is considered cup-like) in a proximal portion of the crimp (33) (see Fig. 5A), wherein the cup-like shape of the crimp (33) surrounds both the optical fiber (3) and the capillary (9), and wherein the crimp extends longitudinally in a distal direction surrounding the optical fiber (3) (see Fig. 4-5).
Zerfas, Griffin and Appling are analogous art because they are from the same field of endeavor, laser delivery devices.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the device of Zerfas and Griffin to include a crimp as taught by Appling.
The motivation for doing so would have been to securely secure the fiber to the device.
Claims 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zerfas and Griffin.
Zerfas teaches:
11. A laser delivery device (Fig. 5), comprising:
a connector portion (570) at a proximal end of the laser delivery device (at 507), wherein the connector portion (570) includes a capillary (500) and a ferrule (572) at least partially surrounding the capillary (500); and
an optical fiber (552) connecting the connector portion (570) to a distal end of the laser delivery device (20, Fig. 1);
wherein the capillary (500) at least partially surrounds a proximal portion (any portion surrounded by 500) of the optical fiber (552),
wherein the ferrule (572) abuts the capillary (500) over at least a portion of the second portion of the capillary (500) (a portion that abuts the capillary can be considered a portion of the second portion, see Fig. 5).
12. The laser delivery device of claim 31, wherein a portion of the ferrule (572) is spaced away from the capillary (500) to form a hollow portion (525) radially outside of the capillary (500) in the connector portion (570) (Fig. 5).
13. The laser delivery device of claim 32, wherein the hollow portion (525) at least partially overlaps with the first portion of the capillary (500) (see Fig. 5).
14. The laser delivery device of claim 31, wherein the capillary is formed of glass (C12 L44-45).
16. A connector for a laser delivery device (Fig. 5), comprising:
an optical fiber (552);
a capillary (500) that surrounds a portion of the optical fiber (552), wherein the capillary (500);
a ferrule (572), wherein a first portion of the ferrule is spaced away the first portion of the capillary (500) to form a hollow portion (525), and wherein a second portion of the ferrule (572) abuts a second portion of the capillary (500) (Fig. 5).
17. The laser delivery device of claim 36, wherein the hollow portion (525) at least partially overlaps with the first portion of the capillary (500) (Fig. 5).
18. The laser delivery device of claim 36, wherein the capillary is formed of glass (C12 L44-45).
Zerfas does not teach wherein the capillary includes a first textured portion that includes one or more of dimples, bumps, or internally dispersed particles and a second smooth portion at a proximal portion of the capillary that is free of dimples, bumps, and internally dispersed particles, wherein the plurality of dimples, bumps, or internally dispersed particles are configured to scatter portions of energy being delivered through the optical fiber from the energy source, or wherein the first portion of the capillary includes the dimples, wherein the dimples are circular dimples on at least a portion of an outer circumferential surface of the first portion, and wherein the second portion of the capillary is fused to a proximal portion of the optical fiber with a C02 laser, and wherein the first portion of the capillary includes the dimples, and wherein the dimples are circular dimples on at least a portion of an outer circumferential surface of the first portion.
Griffin teaches a laser delivery device (Figs. 12A-E), comprising a capillary (565) wherein the capillary (565) includes a plurality of textured portions (580, 595) including circular dimples (580) (C11 L53-62), the plurality of textured portions (580, 595) having at least one smooth portion therebetween that is free of dimples, bumps, and internally dispersed particles (the surface between each centro-symmetric profile and TIR profiles are free of these portions, see Fig. 12C), wherein an optical fiber (555) is configured to receive laser energy and the dimples are configured to scatter portions of the laser energy that escape the optical fiber (555) (C11 L48 – C12 L19), and
wherein the capillary (565) includes a proximal smooth portion (570) that is free of dimples, bumps, and internally dispersed particles, wherein the proximal smooth portion (570) is at a proximal portion of the capillary (565) (see Fig. 12B). The smooth portion can also be considered the areas between each dimple (580) or TIR profile (595).
Zerfas and Griffin are analogous art because they are from the same field of endeavor, laser delivery devices.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the capillary of Zerfas to include the capillary as taught by Griffin.
The motivation for doing so would have been for accepting desirable radiation since the boundary between acceptable and unacceptable radiation may be maintained within the core dimension such that unacceptable energy that may inadvertently drift into the transition region within the core diameter continues to be refracted to angles that are subject to redirection within the furrow features of the sleeve and/or the outer ferrule rather than coupling to the core (Griffin, C12 L25-33).
Concerning claims 14 and 18, Zerfas teaches a glass capillary as discussed and the scattering of light is a function of the structure and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. >In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); (In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[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).
Regarding claims 15 and 20, Zerfas and Griffin do not state wherein the proximal portion of the capillary is fused to the proximal portion of the optical fiber with a C02 laser, but this is a method of how the device is made "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 8 and 10-12 of U.S. Patent No. 10,175,435 B2 in view of Zerfas et al (US 8,419,293 B2). The current claims include ferrule spaced away from the capillary to form a hollow portion between the capillary and the ferrule or the claimed crimp.
Zerfas teaches a ferrule (572, Fig. 5) spaced away from a capillary (500) to form a hollow portion (525) between the capillary (500) and the ferrule (572) wherein the hollow portion (525) at least partially overlaps with a first portion (front half) of the capillary (500) and abuts the capillary (500) over a portion (see Fig. 5), and wherein a crimp (872) includes a cup-like shape (see Fig. 8B) in a proximal portion of the crimp, wherein the cup-like shape of the crimp surrounds both the optical fiber (part of 876) and the capillary (871), and wherein the crimp extends longitudinally in a distal direction surrounding the optical fiber (see Fig. 8B).
The claims and Zerfas are analogous art because they are from the same field of endeavor, laser delivery devices.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the claims to include the ferrule and hollow portion as taught by Zerfas.
The motivation for doing so would have been to increase safety by providing an air gap between the capillary and ferrule.
Regarding the limitation regarding the dimples being configured to scatter portions of the laser energy that escapes the fiber. Scattering light is a function of the device and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. >In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[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).
Current claims
US 10175435
1. A laser delivery device, comprising: a connector portion at a proximal end of the laser delivery device, wherein the connector portion includes a ferrule and a capillary; and an optical fiber connecting the connector portion to a distal end of the laser delivery device; wherein the capillary at least partially surrounds a proximal portion of the optical fiber, and wherein at least a portion of the ferrule is spaced away from the capillary to form a hollow portion between the capillary and the ferrule in the connector portion.
wherein the capillary includes a first textured portion that includes one or more of dimples, bumps, or internally dispersed particles, and a second smooth portion that is free of dimples, bumps, and internally dispersed particles, wherein the second portion is at a proximal portion of the capillary.
1. A laser delivery device, comprising: a connector portion at a proximal end of the laser delivery device; and an optical fiber connecting the connector portion to a distal end of the laser delivery device; the connector portion including a capillary at least partially surrounding a proximal portion of the optical fiber, wherein the capillary includes a plurality of circular dimples on at least a portion of an outer circumferential surface thereof.
8. The laser delivery device of claim 1, wherein the dimples are not included on a distal outer circumferential surface portion of the capillary.
The dimples are textured and it is obvious that non-textured areas are smooth.
3. The laser delivery device of claim 22, wherein the hollow portion at least partially overlaps with the first portion of the capillary.
Taught by Zerfas above.
4. The laser delivery device of claim 23, wherein the capillary is fused to the optical fiber over at least a portion of an overlap of the proximal portion of capillary with the optical fiber.
11. The laser delivery device of claim 1, wherein the capillary includes a proximal end configured to be coupled to a laser source and a dimple free portion at the proximal end of the capillary; wherein the capillary is fused to the optical fiber at proximal ends of the capillary and the optical fiber such that the fused portion of the capillary at least partially overlaps with the dimple free portion at the proximal end of the capillary; and wherein at least a portion of the capillary is radially surrounded by a stainless steel ferrule.
5. The laser delivery device of claim 22, wherein the first portion of the capillary includes the dimples, wherein the dimples are circular dimples on at least a portion of an outer circumferential surface of the first portion, and wherein the proximal portion of the capillary is fused to the proximal portion of the optical fiber with a C02 laser.
The dimples are a part of claim 1 already and the method the capillary is fused to the fiber is the process in which it is connected and "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
6. The laser delivery device of claim 22, wherein the capillary is formed of glass, silica, or sapphire, and wherein the plurality of dimples, bumps, or internally dispersed particles are configured to scatter portions of energy being delivered through the optical fiber from the energy source.
4. The laser delivery device of claim 1, wherein the capillary is glass.
The scattering is a function of the claimed structure and where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
7. The laser delivery device of claim 21, further comprising: a crimp, wherein the crimp radially surrounds a portion of the optical fiber and a portion of the capillary.
10. The laser delivery device of claim 1, wherein the optical fiber includes a core surrounded by at least one cladding layer or one buffer layer; wherein a portion of the capillary is surrounded by a crimp; and wherein the optical fiber is at least partially surrounded by a jacket layer distal to the crimp.
8. The laser delivery device of claim 27, wherein the crimp includes a cup-like shape in a proximal portion of the crimp, wherein the cup-like shape of the crimp surrounds both the optical fiber and the capillary, and wherein the crimp extends longitudinally in a distal direction surrounding the optical fiber.
Zerfas teaches the crimp above.
9. The laser delivery device of claim 21, wherein a proximal end of the optical fiber is configured to be directly coupled to a laser source.
10. The laser delivery device of claim 29, wherein the proximal end of the optical fiber is configured to be coupled to a holmium laser.
12. The laser delivery device of claim 1, wherein the laser delivery device is coupled to a holmium laser.
11. A laser delivery device, comprising: a connector portion at a proximal end of the laser delivery device, wherein the connector portion includes a capillary and a ferrule at least partially surrounding the capillary; and an optical fiber connecting the connector portion to a distal end of the laser delivery device; wherein the capillary at least partially surrounds a proximal portion of the optical fiber, wherein the capillary includes a first textured portion that includes one or more of dimples, bumps, or internally dispersed particles and a second smooth portion at a proximal portion of the capillary that is free of dimples, bumps, and internally dispersed particles, and wherein the ferrule abuts the capillary over at least a portion of the second portion of the capillary.
1. A laser delivery device, comprising: a connector portion at a proximal end of the laser delivery device; and an optical fiber connecting the connector portion to a distal end of the laser delivery device; the connector portion including a capillary at least partially surrounding a proximal portion of the optical fiber, wherein the capillary includes a plurality of circular dimples on at least a portion of an outer circumferential surface thereof.
8. The laser delivery device of claim 1, wherein the dimples are not included on a distal outer circumferential surface portion of the capillary.
Zerfas teaches the ferrule above.
The dimples are textured and it is obvious that non-textured areas are smooth.
12. The laser delivery device of claim 31, wherein a portion of the ferrule is spaced away from the capillary to form a hollow portion radially outside of the capillary in the connector portion.
13. The laser delivery device of claim 32, wherein the hollow portion at least partially overlaps with the first portion of the capillary.
Taught by Zerfas above.
14. The laser delivery device of claim 31, wherein the capillary is formed of glass, silica, or sapphire, and wherein the plurality of dimples, bumps, or internally dispersed particles are configured to scatter portions of energy being delivered through the optical fiber from the energy source.
4. The laser delivery device of claim 1, wherein the capillary is glass.
The scattering is a function of the claimed structure and where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
15. The laser delivery device of claim 31, wherein the first portion of the capillary includes the dimples, wherein the dimples are circular dimples on at least a portion of an outer circumferential surface of the first portion, and wherein the second portion of the capillary is fused to a proximal portion of the optical fiber with a C02 laser.
The dimples are a part of claim 1 already and the method the capillary is fused to the fiber is the process in which it is connected and "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
16. A connector for a laser delivery device, comprising: an optical fiber; a capillary that surrounds a portion of the optical fiber, wherein the capillary includes a first textured portion that includes one or more of dimples, bumps, or internally dispersed particles and a second smooth portion at a proximal portion of the capillary that is free of dimples, bumps, or internally dispersed particles; and a ferrule, wherein a first portion of the ferrule is spaced away the first portion of the capillary to form a hollow portion, and wherein a second portion of the ferrule abuts a second portion of the capillary.
17. The laser delivery device of claim 36, wherein the hollow portion at least partially overlaps with the first portion of the capillary.
1. A laser delivery device, comprising: a connector portion at a proximal end of the laser delivery device; and an optical fiber connecting the connector portion to a distal end of the laser delivery device; the connector portion including a capillary at least partially surrounding a proximal portion of the optical fiber, wherein the capillary includes a plurality of circular dimples on at least a portion of an outer circumferential surface thereof.
8. The laser delivery device of claim 1, wherein the dimples are not included on a distal outer circumferential surface portion of the capillary.
Zerfas teaches the ferrule above.
The dimples are textured and it is obvious that non-textured areas are smooth.
18. The laser delivery device of claim 36, wherein the capillary is formed of glass, silica, or sapphire, and wherein the plurality of dimples, bumps, or internally dispersed particles are configured to scatter portions of energy being delivered through the optical fiber from the energy source.
4. The laser delivery device of claim 1, wherein the capillary is glass.
The scattering is a function of the claimed structure and where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
19. The laser delivery device of claim 36, wherein the first portion of the capillary includes the dimples, and wherein the dimples are circular dimples on at least a portion of an outer circumferential surface of the first portion.
The dimples are a part of claim 1 already and the method the capillary is fused to the fiber is the process in which it is connected and "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
20. The laser delivery device of claim 39, wherein the dimples on the first portion of the capillary are formed by melting with a CO2 laser in a pulsed mode, and wherein the second portion of the capillary is fused to a proximal portion of the optical fiber with the CO2 laser.
The dimples are a part of claim 1 already and the method the capillary is fused to the fiber is the process in which it is connected and "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3 and 6-8 of U.S. Patent No. 10,649,162 B2 in view of Zerfas et al (US 8,419,293 B2). The current claims include ferrule spaced away from the capillary to form a hollow portion between the capillary and the ferrule or the claimed crimp.
Zerfas teaches a ferrule (572, Fig. 5) spaced away from a capillary (500) to form a hollow portion (525) between the capillary (500) and the ferrule (572) wherein the hollow portion (525) at least partially overlaps with a first portion (front half) of the capillary (500) and abuts the capillary (500) over a portion (see Fig. 5), and wherein a crimp (872) includes a cup-like shape (see Fig. 8B) in a proximal portion of the crimp, wherein the cup-like shape of the crimp surrounds both the optical fiber (part of 876) and the capillary (871), and wherein the crimp extends longitudinally in a distal direction surrounding the optical fiber (see Fig. 8B).
The claims and Zerfas are analogous art because they are from the same field of endeavor, laser delivery devices.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the claims to include the ferrule and hollow portion as taught by Zerfas.
The motivation for doing so would have been to increase safety by providing an air gap between the capillary and ferrule.
Regarding the limitation regarding the dimples being configured to scatter portions of the laser energy that escapes the fiber. Scattering light is a function of the device and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. >In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[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).
Current claims
US 10649162
1. A laser delivery device, comprising: a connector portion at a proximal end of the laser delivery device, wherein the connector portion includes a ferrule and a capillary; and an optical fiber connecting the connector portion to a distal end of the laser delivery device; wherein the capillary at least partially surrounds a proximal portion of the optical fiber, and wherein at least a portion of the ferrule is spaced away from the capillary to form a hollow portion between the capillary and the ferrule in the connector portion,
wherein the capillary includes a first textured portion that includes one or more of dimples, bumps, or internally dispersed particles, and a second smooth portion that is free of dimples, bumps, and internally dispersed particles, wherein the second portion is at a proximal portion of the capillary.
1. A laser delivery device, comprising: an optical fiber, including a proximal portion configured to be coupled to an energy source and a distal portion opposite the proximal portion; and a capillary surrounding at least a portion of the optical fiber and including a proximal portion and a distal portion, wherein the capillary includes a dimpled portion and a dimple free portion, wherein the dimple free portion is at the proximal portion of the capillary, and wherein the capillary is fused to the optical fiber over at least a portion of an overlap of the dimple free portion of the capillary and the optical fiber.
Zerfas teaches the ferrule above.
The dimples are textured and it is obvious that non-textured areas are smooth.
3. The laser delivery device of claim 22, wherein the hollow portion at least partially overlaps with the first portion of the capillary.
Taught by Zerfas above.
4. The laser delivery device of claim 23, wherein the capillary is fused to the optical fiber over at least a portion of an overlap of the proximal portion of capillary with the optical fiber.
Already in claim 1 above.
5. The laser delivery device of claim 22, wherein the first portion of the capillary includes the dimples, wherein the dimples are circular dimples on at least a portion of an outer circumferential surface of the first portion, and wherein the proximal portion of the capillary is fused to the proximal portion of the optical fiber with a C02 laser.
3. The laser delivery device of claim 1, wherein the dimpled portion includes a plurality of circular dimples on at least a portion of an outer circumferential surface thereof.
6. The laser delivery device of claim 3, wherein the dimples are formed by melting with a CO.sub.2 laser in a pulsed mode, and wherein the dimple free portion of the capillary is fused to the proximal end of the optical fiber with the CO.sub.2 laser.
6. The laser delivery device of claim 22, wherein the capillary is formed of glass, silica, or sapphire, and wherein the plurality of dimples, bumps, or internally dispersed particles are configured to scatter portions of energy being delivered through the optical fiber from the energy source.
2. The laser delivery device of claim 1, wherein the capillary is formed of glass.
The scattering is a function of the claimed structure and where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
7. The laser delivery device of claim 21, further comprising: a crimp, wherein the crimp radially surrounds a portion of the optical fiber and a portion of the capillary.
Zerfas teaches the crimp above.
8. The laser delivery device of claim 27, wherein the crimp includes a cup-like shape in a proximal portion of the crimp, wherein the cup-like shape of the crimp surrounds both the optical fiber and the capillary, and wherein the crimp extends longitudinally in a distal direction surrounding the optical fiber.
Zerfas teaches the crimp above.
9. The laser delivery device of claim 21, wherein a proximal end of the optical fiber is configured to be directly coupled to a laser source.
10. The laser delivery device of claim 29, wherein the proximal end of the optical fiber is configured to be coupled to a holmium laser.
7. The laser delivery device of claim 1, wherein the proximal portion of the optical fiber is configured to be coupled to a laser source.
8. The laser delivery device of claim 7, wherein the proximal portion of the optical fiber is configured to be coupled to a holmium laser.
11. A laser delivery device, comprising: a connector portion at a proximal end of the laser delivery device, wherein the connector portion includes a capillary and a ferrule at least partially surrounding the capillary; and an optical fiber connecting the connector portion to a distal end of the laser delivery device; wherein the capillary at least partially surrounds a proximal portion of the optical fiber, wherein the capillary includes a first textured portion that includes one or more of dimples, bumps, or internally dispersed particles and a second smooth portion at a proximal portion of the capillary that is free of dimples, bumps, and internally dispersed particles, and wherein the ferrule abuts the capillary over at least a portion of the second portion of the capillary.
1. A laser delivery device, comprising: an optical fiber, including a proximal portion configured to be coupled to an energy source and a distal portion opposite the proximal portion; and a capillary surrounding at least a portion of the optical fiber and including a proximal portion and a distal portion, wherein the capillary includes a dimpled portion and a dimple free portion, wherein the dimple free portion is at the proximal portion of the capillary, and wherein the capillary is fused to the optical fiber over at least a portion of an overlap of the dimple free portion of the capillary and the optical fiber.
Zerfas teaches the ferrule above.
The dimples are textured and it is obvious that non-textured areas are smooth.
12. The laser delivery device of claim 31, wherein a portion of the ferrule is spaced away from the capillary to form a hollow portion radially outside of the capillary in the connector portion.
13. The laser delivery device of claim 32, wherein the hollow portion at least partially overlaps with the first portion of the capillary.
Taught by Zerfas above.
14. The laser delivery device of claim 31, wherein the capillary is formed of glass, silica, or sapphire, and wherein the plurality of dimples, bumps, or internally dispersed particles are configured to scatter portions of energy being delivered through the optical fiber from the energy source.
2. The laser delivery device of claim 1, wherein the capillary is formed of glass.
The scattering is a function of the claimed structure and where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
15. The laser delivery device of claim 31, wherein the first portion of the capillary includes the dimples, wherein the dimples are circular dimples on at least a portion of an outer circumferential surface of the first portion, and wherein the second portion of the capillary is fused to a proximal portion of the optical fiber with a C02 laser.
The dimples are a part of claim 1 already and the method the capillary is fused to the fiber is the process in which it is connected and "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
16. A connector for a laser delivery device, comprising: an optical fiber; a capillary that surrounds a portion of the optical fiber, wherein the capillary includes a first textured portion that includes one or more of dimples, bumps, or internally dispersed particles and a second smooth portion at a proximal portion of the capillary that is free of dimples, bumps, or internally dispersed particles; and a ferrule, wherein a first portion of the ferrule is spaced away the first portion of the capillary to form a hollow portion, and wherein a second portion of the ferrule abuts a second portion of the capillary.
17. The laser delivery device of claim 36, wherein the hollow portion at least partially overlaps with the first portion of the capillary.
1. A laser delivery device, comprising: an optical fiber, including a proximal portion configured to be coupled to an energy source and a distal portion opposite the proximal portion; and a capillary surrounding at least a portion of the optical fiber and including a proximal portion and a distal portion, wherein the capillary includes a dimpled portion and a dimple free portion, wherein the dimple free portion is at the proximal portion of the capillary, and wherein the capillary is fused to the optical fiber over at least a portion of an overlap of the dimple free portion of the capillary and the optical fiber.
Zerfas teaches the ferrule above.
The dimples are textured and it is obvious that non-textured areas are smooth.
18. The laser delivery device of claim 36, wherein the capillary is formed of glass, silica, or sapphire, and wherein the plurality of dimples, bumps, or internally dispersed particles are configured to scatter portions of energy being delivered through the optical fiber from the energy source.
2. The laser delivery device of claim 1, wherein the capillary is formed of glass.
The scattering is a function of the claimed structure and where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
19. The laser delivery device of claim 36, wherein the first portion of the capillary includes the dimples, and wherein the dimples are circular dimples on at least a portion of an outer circumferential surface of the first portion.
The dimples are a part of claim 1 already and the method the capillary is fused to the fiber is the process in which it is connected and "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
20. The laser delivery device of claim 39, wherein the dimples on the first portion of the capillary are formed by melting with a CO2 laser in a pulsed mode, and wherein the second portion of the capillary is fused to a proximal portion of the optical fiber with the CO2 laser.
The dimples are a part of claim 1 already and the method the capillary is fused to the fiber is the process in which it is connected and "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6-11, 15, 16 and 20 of U.S. Patent No. 11,054,596 B2 in view of Zerfas et al (US 8,419,293 B2). The current claims include ferrule spaced away from the capillary to form a hollow portion between the capillary and the ferrule or the claimed crimp.
Zerfas teaches a ferrule (572, Fig. 5) spaced away from a capillary (500) to form a hollow portion (525) between the capillary (500) and the ferrule (572) wherein the hollow portion (525) at least partially overlaps with a first portion (front half) of the capillary (500) and abuts the capillary (500) over a portion (see Fig. 5), and wherein a crimp (872) includes a cup-like shape (see Fig. 8B) in a proximal portion of the crimp, wherein the cup-like shape of the crimp surrounds both the optical fiber (part of 876) and the capillary (871), and wherein the crimp extends longitudinally in a distal direction surrounding the optical fiber (see Fig. 8B).
The claims and Zerfas are analogous art because they are from the same field of endeavor, laser delivery devices.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the claims to include the ferrule and hollow portion as taught by Zerfas.
The motivation for doing so would have been to increase safety by providing an air gap between the capillary and ferrule.
Regarding the limitation regarding the dimples being configured to scatter portions of the laser energy that escapes the fiber. Scattering light is a function of the device and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. >In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[A]pparatus claims cover what a device is