DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/11/2026 has been entered.
Response to Amendment
The Amendment to the claims filed on 9/11/2026 has been entered. Claims 5 and 13 were canceled and claim 15 was added new. Claims 1-4, 6-12 and 14-15 remain pending in the application.
The amendment to the drawings filed on 9/11/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The replacement sheets for the drawings filed on 9/11/2026 shows a pneumatic turbines located outside the laser ablation head 20 and connected to first prism 24 only. This amount of detail was not disclosed in the originally filed disclosure and therefore contains new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Response to Arguments
Applicant's arguments filed on 9/11/2026 regarding the drawing objection have been fully considered but they are not persuasive.
The drawing replacement sheets contained new matter not supported in the original disclosure and therefore was objected to (see response to amendment above). Additionally, there were several claimed elements even the replacement sheet was missing (see drawing objection below).
Applicant’s arguments filed on 9/11/2026, with respect to the 35 U.S.C. 103 rejections have been fully considered and are persuasive. The Examiner acknowledges that previously cited prior arts do not sufficiently teach the at least one motor rotor is located between at least one stator and the beam path, and a portion of the at least one motor is located between a bearing and the beam path. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Steimel (U.S. Patent No. 4,717,823) teaching this feature.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. The following claimed features are not shown in the drawings.
First and second motors mounted external to the laser ablation tool in claim 5.
Driveshafts in claim 5.
Separate pneumatic turbines connected to the first and second prisms in claims 7 and 8. Please note the drawing replacement sheet filed on 9/11/2026 shows only one pneumatic turbine connected to only one of the two prisms.
Therefore, the abovementioned features must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5-8 and 15 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 5-8 contain new matter because amendment to independent claim 1 is specific to the embodiment having at least one motor rotor is located between at least one stator and the beam path, and a portion of the at least one motor is located between a bearing and the beam path which is shown in figure 1.
Claim 5, which depends on claim 1, recites “wherein the at least one motor comprises a first and second motor that are mounted outside of a main housing of the laser ablation tool and are coupled to the first and second Risley prisms via respective driveshaft”. Claim 6, which depends on claim 1, recites wherein the at least one motor of the first and second Risley prism is piezoelectric drives. Claim 7-8 which depends on claim 1 recites “where the at least one motor comprises separate pneumatic turbines that are connected to the first and second prisms and are drive to rotate by directing a fluid to flow against the separate pneumatic turbines”. None of these features correspond to the embodiment of figure 1.
There is no disclosure that this arrangement of motor is a piezoelectric drives or pneumatic turbines or the arrangement of claim 1 can be used in combination with a piezoelectric drives or pneumatic turbines. Paragraph [0034] of the pre-grant publication teaches “there are a number of options for mechanisms for spinning the prisms within the laser ablation head” and paragraph [0035] teaches “an alternative to using motors is to utilize a fluid medium … and a further method of driving Risley prisms could utilise piezoelectrics drive connected to the prisms.” Therefore, the motor arrangement as recited in claim 1 and the motors recited in claims 5-8 are in different embodiments. The specification fails to teach a single embodiment having the different types of motors combined. For these reasons, claims 5-8 were found to contain new matter not disclosed in the originally filed disclosure.
Claim 15 recites wherein the at least one motor is configured to rotate the first Risley prism and the second Risley prism continuously at different speeds, a difference between a rotation speed of the first Risley prism and a rotation speed of the second Risley prism being no more than 10%, and a period of rotation of each of the first Risley prism and the second Risley prism being between 100 ms and 500 ms. The originally field disclosure fails to teach feature. There is no teaching in the disclosure there is a continuous rotation of the two prisms at different speeds.
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 1-4, 6-12 and 14-15 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.
Claim 1 recites “the at least one motor rotor” which lacks a proper antecedent basis. For purposes of this examination, this limitation is interpreted as “a motor rotor”.
Claims 2-4, 6-12 and 14-15 are also rejected under 35 U.S.C. 112(b) by virtue of their dependency on claim 1.
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.
Claim(s) 1, 4, 6, 10-12, 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toledo-Crow (U.S. Pre-Grant Publication No. 2018/01470139) in view of Steimel (U.S. Patent No. 4,717,823) and Axelrod (U.S. Pre-Grant Publication No. 2011/0282192).
As per claim 1, Toledo-Crow discloses a laser ablation tool comprising a laser source (140; figure 1) which produces a beam heaving a beam path (205; figure 2) and an ablation head (the assembly shown in figure 2), the ablation head comprising a housing (250) which on each side of the beam path is separated into a first half and second half portion, and at least a first Risley prism and a second Risley prism (Risley prism pair; paragraph [0063]; 210 and 225 in figure 2; 300 and 310 in figure 3) connected to the first half and second half portions of the housing (as shown; figure 2) the first and second Risley prisms being connected to a rotation mechanism (215, 230), so that the two Risley prisms can be moved relative to each other and the housing (servo control for each of elements 210 and 230; paragraphs [0068], [0069]; figure 2) so as to deflect the beam (as shown in beam path 205; figure 2) and wherein the laser ablation tool is connected to a borescope (connected to an endoscope; figure 1) or compliant robot with the head being connected to the distal end of the borescope or compliant robot, a first motor and a second motor are coupled to an electrical cable, the electrical cable being disposed inside of the borescope or the compliant robot (movement commands delivered via signal bus within the head 900; figure 9A; paragraph [0084]).
Toledo-Crow does not explicitly teach the at least one motor rotor is located between at least one stator and the beam path, and a portion of the at least one motor is located between a bearing and the beam path.
Steimel (U.S. Patent No. 4,717,823) is related prior art in that it deals with a laser device having a optical wedge/prism that rotates to steer the beam. Steimel teaches the at least one motor rotor (42; figures 3, 4) is located between at least one stator (60, 40) and the beam path (center axis shown; figures 3, 4), and a portion of the at least one motor is located between a bearing and the beam path (mount 42 which carries the rotor of the second driving motor 68 is in between bearings 46 and the center axis; figures 3, 4). This arrangement allows to drive the motors to rotate the optical wedge. Therefore, substituting or combining Toledo-Crow’s motor with Steimel’s motor arrangement that rotates the optical prism would obtain a predictable result of driving the optical prism and therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify Toledo-Crow’s motor to incorporate Steimel’s motor arrangement having the rotor between the stator and the beam path and a portion of the motor between a bearing and the beam path since such modification would only provide a predictable result of driving the prism as needed for Toledo-Crow.
Toledo-Crow also does not explicitly teach wherein: the laser source is nano-second or pico-second pulsed laser.
In the Non-Final Rejection dated 1/6/2026, the examiner made an Official Notice that it is well known to use nano-second or pico-second pulsed laser suitable for ablation or medical treatments. Axelrod (U.S. Pre-Grant Publication No. 2011/0282192) supports the prior common knowledge statement to use nano-second pulsed laser for medical application. Axelrod is related prior art to Toledo-Crow in that it deals with an endoscope that can be used for surgical use. Axelrod teaches using 10 nano-second pulsed laser to generate photoacoustic waves that is weakly focused into tissue to avoid tissue overheating (paragraph [0105]). Axelrod’s endoscope is a multimodal endoscope that uses optical switcher to use different modes of laser (abstract). Therefore, Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify Toledo-Crow’s laser source to incorporate Axelrod’s multimode laser source including 10-ns laser pulse for photoacoustic mode to allow both multispectral imaging and very short-pulsed laser surgery (Axelrod, paragraph [0091]).
As per claim 4, Toledo-Crow, in view of Steimel and Axelrod, discloses the laser ablation tool according to claim 1. Toledro-Crow further discloses wherein the at least one motor is a pair of motors mounted within the head, with a first motor connected to the first Risley prism and a second motor connected to the second Risley prism (motors 215 and 230 connected to elements 210 and 225; figure 2).
As per claim 6, Toledo-Crow, in view of Steimel and Axelrod, discloses the laser ablation tool according to claim 1. Toledro-Crow further discloses wherein the at least one motor of the first and second Risley prism is piezoelectric drives (via ultrasonic motor, which is inherently a piezeoelectric drive; paragraph [0084]). Note that claim 6 was rejected under 35 U.S.C. 112(a) above. For purposes of this examination, claim 6 was interpreted to not have the features of claim 1 wherein the at least one motor rotor is located between at least one stator and the beam path, and a portion of the at least one motor is located between a bearing and the beam path.
As per claim 10, Toledo-Crow, in view of Steimel and Axelrod, discloses the laser ablation tool according to claim 1. Toledro-Crow further discloses wherein the at least one motor is coupled to encoders to monitor a position of the first and second Risley prism (angular position sensors 220 and 235; figure 2).
As per claim 11, Toledo-Crow, in view of Steimel and Axelrod, discloses the laser ablation tool according to claim 10. Toledro-Crow further discloses wherein the encoders are coupled to a controller that is coupled to an output of the laser so that the beam is only outputted at certain positions of the two respective Risley prisms (rotation angles are controlled in a servo control positioning arrangement by the motors 215 and 230 and angular position sensors 220 and 235 to deliver the light beam 205 to desired angles; paragraphs [0068], [0069]; motor rotation commands are sent to a motor controller; [0108]).
As per claim 12, Toledo-Crow, in view of Steimel and Axelrod, discloses the laser ablation tool according to claim 10. Toledro-Crow further discloses wherein the encoders are coupled to a gate on the output of the laser (via scanner control 135 activating laser and control laser light intensity, i.e., inherently having a gate; paragraph [0066]) such that the output of the laser and the position of the Risley prisms is controlled to direct the beam to fixed known point (the wedges can be rotated to direct the light beam to every point in the circular area defined by two pairs of angles; paragraph [0111]).
As per claim 14, Toledo-Crow, in view of Steimel and Axelrod, discloses a method of ablating a component comprising: coupling a laser to the ablation head according to claim 1, positioning the laser ablation head in proximity to an area that requires ablation (establishing a position relative to the target tissue in step 1730; figure 17), starting the laser along with initiating the at least one motor for driving the prisms (controlling at least one optical element in the housing with at least one actuating arrangement in step 1770; figure 17), using the laser and passing the beam through a cavity containing spinning Risley prisms (as shown; figure 2) and scanning a laser beam across the a surface of the component to be scanned (scanner control 135 activating laser 140; paragraph [0066]).
As per claim 15, Toledo-Crow, in view of Steimel and Axelrod, discloses the laser ablation tool according to claim 1, and further discloses wherein the at least one motor is configured to rotate the first Risley prism and the second Risley prism continuously at different speeds, a difference between a rotation speed of the first Risley prism and a rotation speed of the second Risley prism being no more than 10% (the variables for motors 0 and 1 are separately defined and the speed parameters for motors 0 and 1 are the same, i.e., capable of rotating at different speeds or the same speed (within 10% difference); APPENDIX II). Toledo-Crow does not explicitly teach a period of rotation of each of the first Risley prism and the second Risley prism being between 100 ms and 500 ms. However, Applicant’s disclosure also fails to teach any criticality with regards to the claimed period of rotation between 100ms and 500ms. Toledo-Crow teaches using appropriate speed of wedge movements for scanning (paragraph [0064]). Therefore, Toledo-Crow recognizes the speed of wedge movement (period of rotation) as a result effective variable. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP 2144.05). Therefore, in order to provide an adequate scanning speed, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify Toledo-Crow’s rotation speed or period to be between 100 ms and 500ms as such modification only requires routine optimization.
Claim(s) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toledo-Crow in view of Steimel, Axelrod and Diwinsky (U.S. Pre-Grant Publication No. 2020/0246912).
As per claims 2 and 3, Toledo-Crow, in view of Steimel and Axelrod, discloses the laser ablation tool according to claim 1 and further teaches wherein the ablation tool further comprises a lens and an aperture (focusing element 240 and distal end of housing 250 to allow light beam 205 to discharge). Toledo-Crow does not explicitly teach wherein the ablation tool further comprises an angled mirror. Diwinsky (U.S. Pre-Grant Publication No. 2020/0246912) is a related prior art in that it deals with a laser ablation tool. Diwinsky teaches the ablation tool having a lens (320; figure 3), an angled mirror (324) and an aperture (312) to direct the laser beam (paragraphs [0004], [0007]). In order to further provide steering of the laser beam path, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify Toledo-Crow’s device to incorporate Diwinsky’s angled mirror to allow further steering of the laser beam path.
Claim(s) 5 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toredo-Crow in view of Steimel, Axelrod and Chu (U.S. Pre-Grant Publication No. 2004/0057656).
As per claim 5, Toledo-Crow, in view of Steimel and Axelrod, discloses the laser ablation tool according to claim 1. Toledo-Crow does not explicitly teach wherein the rotation mechanism comprises a first and second motors that are mounted external to the laser ablation tool and are coupled to the first and second Risley prisms via respective driveshafts. Chu (U.S. Pre-Grant Publication No. 2004/0057656) is a related prior art in that it deals with a rotation mechanism for a Risley prism pair. Chu teaches wherein the rotation mechanism comprises a first and second motors that are mounted external to the laser ablation tool and are coupled to the first and second Risley prisms via respective driveshafts (motors 342 and 344 are connected to prisms 346 and 348 through hollow shafts 358, 360 and motors 342, 344 are located outside of the laser system tool head (laser ablation tool) within hollow shaft 360 that contains the Risley prisms 346, 348; figure 5). Chu teaches the drive motors located external to the hollow shaft containing the laser system allows to independently transmit actuator rotation without blocking optical path (paragraph [0065]) and achieve sufficient mechanical precision while still having a diameter less than 1.0 cm (paragraph [0066]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify Toledo-Crow’s rotation mechanism to incorporate Chu’s coaxial motors coupled with hollow shafts to drive the Risley prism because they allow to independently transmit actuator rotation without blocking optical path (paragraph [0065]) and achieve sufficient mechanical precision while still having a diameter less than 1.0 cm (paragraph [0066]).
Note that claim 5 was rejected under 35 U.S.C. 112(a) above. For purposes of this examination, claim 5 was interpreted to not have the features of claim 1 wherein the at least one motor rotor is located between at least one stator and the beam path, and a portion of the at least one motor is located between a bearing and the beam path.
As per claim 9, Toledo-Crow, in view of Steimel and Axelrod, discloses the laser ablation tool according to claim 1. Toledo-Crow does not explicitly teach wherein the rotation mechanism is coupled to a gearing system. Chu (U.S. Pre-Grant Publication No. 2004/0057656) is a related prior art in that it deals with a rotation mechanism for a Risley prism pair. Chu teaches wherein the rotation mechanism is coupled to a gear to independently transmit actuator rotation of drive motors to rotation of prisms about central axis without blocking the optical path (paragraph [0061]). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify Toledo-Crow’s rotation mechanism to incorporate Chu’s gearing system because as Chu teaches, the gearing mechanism can independently transmit actuator rotation of drive motors to rotation of prisms about central axis without blocking the optical path (paragraph [0061]).
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toledo-Crow in view of Steimel, Axelrod and Toyosawa (U.S. Pre-Grant Publication No. 2017/0252862).
As per claims 7-8, Toledo-Crow, in view of Steimel and Axelrod, discloses the laser ablation tool according to claim 1. Toledo-Crow does not explicitly teach wherein the rotation mechanism comprises separate pneumatic turbines that are connected to the first and second prisms and are driven to rotate by directing a fluid to flow against them (claim 7) and wherein the pneumatic turbines are supplied with separate fluid supplies to drive each turbine (claim 8).
Toyosawa (U.S. Pre-Grant Publication No. 2017/0252862) is a related prior art in that it deals with a drive system for a wedged prism, i.e., Risley prism. Toyosawa teaches an air turbine to drive the wedged prism which drives a turbine by directing fluid against them (paragraph [0165]). Toyosawa teaches the air turbine allows the deflection optical system to be made small and lightweight (paragraph [0014]) and cope with heat generation of the optical system (paragraph [0039]). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify Toledo-Crow’s each of the drive motors to incorporate Toyosawa’s air turbine as it allows the deflection optical system to be made small and lightweight (paragraph [0014]). It should be noted that each of Toledo-Crow’s two motors has servo control and a person of ordinary skill in the art would make the modification to have two separate pneumatic turbines supplied with separated air to allow such servo control.
Note that claims 7-8 were rejected under 35 U.S.C. 112(a) above. For purposes of this examination, claims 7-8 were interpreted to not have the features of claim 1 wherein the at least one motor rotor is located between at least one stator and the beam path, and a portion of the at least one motor is located between a bearing and the beam path.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fujita (U.S. Pre-Grant Publication No. 2019/0047083) teaches a laser beam steering system having a motor having the at least one motor rotor is located between at least one stator and the beam path, and a portion of the at least one motor is located between a bearing and the beam path.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANG K KIM whose telephone number is (571)272-1324. The examiner can normally be reached Monday - Friday 8:30 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Courtney Heinle can be reached at (571)270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANG K KIM/Primary Examiner, Art Unit 3745
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