DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-4, 6-11, and 14-25 are pending.
Claims 5 and 12-13 are cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/9/2026 has been entered.
Response to Arguments
First, Applicant argues that the finality of the last Office Action (4/14/2026) is improper. See Remarks at 6.
Applicant’s argument has been fully considered but it is not persuasive.
As the Advisory Action (7/22/2026) explains:
The MPEP states: "For an application in which an RCE has been filed, claims may be finally rejected in the first action following the filing of the RCE (with a submission and fee under 37 CFR 1.114) when all the claims in the application after the entry of the submission under 37 CFR 1.114 and any entered supplemental amendments (A) are identical to, patentably indistinct from, or have unity of invention with the claims in the application prior to the entry of the submission under 37 CFR 1.114 (in other words,
restriction (including lack of unity of invention) would not have been proper if the new or amended claims had been entered prior to the filing of the RCE), and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114. Note that applicants cannot use an RCE to obtain continued examination on the basis of claims that are independent and distinct from, or lack unity of invention with,
the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145 and MPEP § 706.07(h), subsection VI. Therefore, condition (A) is always met where the RCE is accompanied by a submission that will be entered as a matter of right." See MPEP 706.07(b).
So, the question is not whether the claims are "sufficiently different" (so as to require further consideration and/or search), as argued by Applicant. Rather, the pivotal question is whether conditions (A) and (B) above are satisfied. And because these two conditions are satisfied, the finality of the Office Action is proper. Note that even though the amendments are not commensurate with the scope of the previously presented claims, the amendments would have been properly finally rejected on the grounds and art of
record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114.
Accordingly, the Advisory Action (7/22/2026) is entirely consistent with the finality of the Office Action (4/14/2026). After “further consideration,” Examiner concluded that conditions (A) and (B) above are satisfied. Therefore, the finality of the Office Action (4/14/2026) is proper.
Second, Applicant argues that the prior art references do not teach or suggest the limitation “wherein one or more mirrors and/or one or more filters are configured to suppress the set of wavelength components of the laser beam generated by the treatment light source having wavelengths within the first and/or second suppressing wavelength ranges prior to output of the treatment laser beam,” as recited in the claims as amended. See Remarks at 7-9. Applicant elaborates:
Claim 1 further requires one or more mirrors and/or one or more filters configured to suppress, before output of the treatment laser beam, wavelength components of the laser beam generated by the treatment light source within suppressing wavelength ranges on respective sides of the first target wavelength range. Thus, the amended claim does not merely recite a wavelength-selective optical element. It require selective removal from the treatment-source beam itself before the resulting treatment laser beam is output.
. . .
Accordingly, Charles describes reflection of the outgoing alignment and therapeutic light and transmission of different light returning from the target for visualization. Charles does not disclose using mirror 52 to suppress selected wavelength components of the therapeutic-source output before the treatment beam is output.
Id. at 7-8.
Applicant’s argument has been fully considered but it is not persuasive.
Contrary to Applicant’s argument, Charles (US 20090093798 A1, 2009-04-09) teaches that mirrors can be coated to spectrally match the therapeutic light while allowing for visualization.
See, e.g., [0020] (“Mirror 52 includes a high reflective coating that spectrally matches the outputs of the alignment and therapeutic light, yet allows visualization light coming from the target to pass through so that target area can be visualized through mirror 52.”) (emphasis added).
Note that when a mirror is described as “spectrally matched” to the laser, it means the mirror’s optical coating is designed to operate optimally at the “exact” wavelength (and sometimes polarization and angle) of the laser light. This ensures the mirror’s reflectivity, transmission, and damage threshold are tailored to the laser’s spectral characteristics. In practice, because laser beams are not exactly of a single wavelength, the mirror is matched to a specific spectral range rather than a single wavelength, to handle slight broadening from the laser source or environmental effects.
Note further that Charles’s spectrally-matched mirror (e.g., 52, Fig. 1), in virtue of its bandpass filtering function, as discussed above, achieves a selective removal (of light outside of the abovementioned spectral range) from the treatment-source beam itself before the resulting treatment laser beam is output (to the eye 1, Fig. 1), as depicted below.
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This is precisely what is disclosed in the Instant Specification. See, e.g., [0076] (“The mirror 460 may be coated using a suitable coating such that the mirror has a high reflectivity coefficient in a narrow wavelength band around the treatment laser wavelength such that substantially all of the treatment laser light is reflected, while having high transmission of light in the spectral regions on either side of the treatment laser wavelength.”).
Accordingly, Charles teaches the set of wavelength components having wavelengths within a first and/or second suppressing wavelength range, the first and/or second suppressing wavelength ranges being located on respective sides of (and spectrally matches) the first target wavelength range, and wherein the laser apparatus is further configured to output the treatment laser beam to reduce an amount of flash-back light received by an operator of the laser apparatus (in order to allow for visualization).
Note that all claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-4, 6-11, and 14-25 are rejected under 35 U.S.C. 103 as being unpatentable over Sramek (US 20190224043 A1, 2019-07-25) in view of Charles (US 20090093798 A1, 2009-04-09) and Rubinfeld et al. (US 20150126921 A1, 2015-05-07) (hereinafter “Rubinfeld”).
Regarding claims 1-20, as discussed above (Response to Arguments incorporated by reference herein), Sramek teaches a laser apparatus for providing a treatment laser beam for photothermal ophthalmic treatment, the laser apparatus comprising: wherein the laser apparatus (e.g., [0003]-[0004], 110) is configured to selectively suppress a set of wavelength components of the laser beam generated by the treatment light source (e.g., [0018]), and wherein the laser apparatus is further configured to output the treatment laser beam. See, e.g., Fig. 1 and associated text. [S1]
Note that Sramek also teaches use of optical fibers (e.g., [0016]), coated mirrors (e.g., [0018]), slit-lamps (e.g., [0002], [0034]), head-mounted displays (e.g., [0015], [0035]), and microscope (e.g., [0002]). Sramek also teaches use of different laser parameters (e.g., [0026]). [S2]
Sramek does not expressly teach wherein the laser apparatus is configured to selectively suppress a set of wavelength components of the laser beam generated by the treatment light source to create a treatment laser beam. However, Sramek teaches use of filters (e.g., [0018]). [S3]
Charles teaches wherein the laser apparatus is configured to selectively suppress a set of wavelength components of the laser beam generated by the treatment light source to create a treatment laser beam. See, e.g., [0020]. Note that Charles teaches use of different laser wavelengths and power (e.g., [0016], [0030]), and various optical components such as high reflective coated mirrors and turning mirrors (e.g., [0017]-[0022]) and safety filters (e.g., [0016]). [C1]
Rubinfeld teaches use of band-pass filters. See, e.g., [0041]. [R1]
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Charles with the invention taught by Sramek such that the invention further comprises a treatment light source configured to generate a laser beam having a first target wavelength range and having a first output power; an optical system for providing the treatment laser beam and, optionally, the aiming light beam for delivery towards an eye of a subject to be treated; wherein the laser apparatus is configured to selectively suppress a set of wavelength components of the laser beam generated by the treatment light source to create a treatment laser beam, the set of wavelength components having wavelengths within a first and/or second suppressing wavelength range, the first and/or second suppressing wavelength ranges being located on respective sides of the first target wavelength range, and wherein the laser apparatus is further configured to output the treatment laser beam, and wherein one or more mirrors and/or one or more filters are configured to suppress the set of wavelength components of the laser beam generated by the treatment light source having wavelengths within the first and/or second suppressing wavelength ranges prior to output of the treatment laser beam (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 1); wherein the first output power is between 100 mW - 3 W (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 2); wherein the second output power of the aiming light source is between 1 µW and 1 mW (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 3); wherein the treatment light source comprises one or more direct diode lasers for generating the treatment laser beam (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 4); wherein the optical system comprises one or more mirrors, and at least one of the one or more mirrors are coated with a coating such that light having the first target wavelength is reflected by the at least one mirror, and light having wavelengths within the first and second suppressing wavelength ranges is transmitted by the at least one mirror (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 6); wherein the reflectivity coefficient of the at least one coated mirror at the first target wavelength is more than 97%, and the reflectivity coefficient of the at least one coated mirror within the first and second suppressing wavelength ranges is 20% or less (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 7); wherein the one or more coated mirrors is a turning mirror (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 8); wherein the laser apparatus comprises one or more filters to suppress light within the first and/or second wavelength ranges (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 9); wherein the first target wavelength range is between 512-580nm (as recited in claim 10); wherein the first target wavelength range is between 512-535 nm (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 11); wherein the laser apparatus is an ophthalmic apparatus that is configured to be attachable to a slit lamp or slit-lamp adapter (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 14); wherein the laser apparatus is configured to be attachable to, or integrated in, a head-mounted ophthalmic treatment device (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 15); wherein the coated mirror(s) or filter is placed as part of the delivery optics that directs the treatment laser light towards the eye of the patient (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 16); a photothermal ophthalmic treatment system comprising: a laser apparatus comprising a treatment light source configured to generate a laser beam having a first target wavelength and having a first output power, an aiming light source configured to generate an aiming light beam having a second target wavelength and having a second output power lower than the first output power; a microscope; and a safety filter placed in the optical path of the treatment beam; one or more mirrors and/or one or more filters; wherein the laser apparatus is configured to selectively suppress a set of wavelength components of the laser beam generated by the treatment light source to create a treatment laser beam, the set of wavelength components having wavelengths within a first and/or second suppressing wavelength range, the system further comprising an optical system for providing the treatment laser beam and, optionally, the aiming light beam for delivery towards an eye of a subject to be treated the first and/or second suppressing wavelength ranges being located on respective sides of the first target wavelength, wherein the one or more mirrors and/or the one or more filters being configured to suppress the set of wavelength components of the laser beam generated by the treatment light source having wavelengths within the first and/or second suppressing wavelength ranges prior to output of the treatment laser beam, thereby reducing an amount of flash-back light received by an operator of the laser apparatus, and wherein the laser apparatus is further configured to output the treatment laser beam (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 17); wherein the safety filter blocks light within a wavelength range of between 25-35nm and a center wavelength between 515-535nm (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 18); wherein the microscope is part of a slit lamp (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 19); wherein the microscope is part of a head-mounted device (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 20); wherein the first suppressing wavelength range is located on a first side of the sides of the first target wavelength range toward an end thereof and/or wherein the second suppressing wavelength range is located on a second side toward of the sides of the second target wavelength range toward an end thereof (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 21); wherein the laser apparatus comprises a coated mirror and/or a filter, the coated mirror and/or the filter being configured to selectively block the set of wavelength components of the laser beam generated by the treatment light source (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 22); wherein the one or more mirrors and/ or one or more filters are positioned as part of delivery optics that direct the treatment laser beam toward an eye of a patient (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 23); wherein the one or more mirrors and/or one or more filters suppress the set of wavelength components by at least a factor of 5 (e.g., [S1], [S2], [S3], [C1], [R1]) (as recited in claim 24); wherein the set of wavelength components is suppressed by at least a factor of 5 (as recited in claim 25) in order to satisfy the particular requirements of various procedures with a more integrated device.
Conclusion
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 extension fee 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 SCOTT T LUAN whose telephone number is (571)270-1860. The examiner can normally be reached on 9am-5pm, M-F (generally).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Thomson, can be reached on 571-272-3718. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Scott Luan
/SCOTT LUAN/Primary Examiner, Art Unit 3792
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