DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Regarding the claim objections, applicant’s amendments have overcome this objection and it is hereby withdrawn. However, applicant’s amendments have created new claim objections; see below.
Regarding the Double Patenting rejection, applicant’s filing of a terminal disclaimer has overcome this rejection and it is hereby withdrawn.
Regarding the 112a written description rejection of claim 7, applicant’s arguments have been fully considered but are persuasive. Additionally, applicant’s specification states “while examples of the embodiments of the present disclosure have been described, all the embodiments may be combined with each other and arbitrary two or more embodiments may be combined with each other. The present disclosure is not limited to including all components of the above embodiments, some of the components of the above embodiments may be replaced with components of the other embodiments, and the components of the above embodiments may be replaced with the components of the other components. The components of some of the above-described embodiments may be added to, removed from, or replaced with the components of the other embodiments” which provides ample support for the inclusion/addition of the axis adjustment mechanism (300), as shown in the laser apparatus 1A of Fig. 5, in the embodiments shown in either Fig. 7, 10 or 11. Therefore, the written description rejection is withdrawn.
Regarding the 103 rejections, applicant’s amendments and related arguments have been fully considered but are not persuasive. It is emphasized that the examiner’s position regarding previous claims 2 and 3 has been made clear in the Non-Final rejection mailed 10/31/2025. The examiner contends that the cited portion of Schuele, specifically Par 0083 which discloses “An OCT scan of the eye will provide information about the axial location of the anterior and posterior lens capsule, the boundaries of the cataract nucleus, as well as the depth of the anterior chamber. This information is then be loaded into the control electronics 300, and used to program and control the subsequent laser-assisted surgical procedure. The information may also be used to determine a wide variety of parameters related to the procedure such as, for example, the upper and lower axial limits of the focal planes used for modifying the lens capsule, cornea, and synthetic intraocular lens implant, among others”. It is the examiner’s position that this disclosure implicitly/inherently requires comparison with the detection result of the normal area stored in the storage unit. For example, how else are the axial location, boundaries and depth for treatment determined if they aren’t compared with the location of normal tissue. Similarly, how can the upper and lower axial limits of the focal planes used for modifying the lens capsule, cornea and IOL be determined if it first isn’t compared to normal tissue. It’s well-understood that normal tissue is left alone, i.e. not treated, therefore in order to define the location/boundaries for treatment, normal versus not-normal, i.e. tissue needing treatment, must first be distinguished.
If applicant disagrees that what is taught in Par 0083 implicitly/inherently requires comparison with a detection result of the normal area, then the examiner made it clear that in the NF that “at the very least the storage unit and depth position detection device (OCT) includes all of the necessary structure in order to be capable of functioning in the claimed manner; MPEP 2114”. Applicant’s arguments fail to address this position and it is hereby maintained. Specifically, nothing in applicant’s arguments provide any evidence, reason or support for why/how Schuele does not teach the necessary structural components and configurations to be capable of such a function/operation. MPEP 2114 states: "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. It is emphasized that this functional limitation is NOT tied to a controller/processor configured in a specific manner, but instead is a functional limitation of a depth position detection device, i.e. sensor/detector. The examiner contends that Schuele teaches the exact same detector, i.e. an Optical Coherence Tomograph (OCT) which operates by analyzing an interference pattern due to an optical path difference to detect depth. It is the examiner’s position that the same detector is capable of operating in the same manner. Applicant’s remarks provide no clarity on why the OCT device of Schuele is incapable of functioning/operating in the claimed manner. Therefore, the examiner maintains that Schuele teaches all of the necessary structure to be inherently capable of such an intended functionality. Therefore, the previous 102 is maintained, with the previous rejection of claims 2 and 3 now being applicable to claim 1.
Regarding new claims 11-14, applicant’s amendments and related arguments have been fully considered but are not persuasive. While the examiner can appreciate the distinctions argued by applicant, these distinctions do not appear in the current claim language and therefore applicant’s arguments are not commensurate in scope with the current claim language. Specifically, applicant argues “in the present application, the optical path is branched by a reflecting plate 302 (see Fig. 5 of the application). The actual beam position on the incident surface of the electro-optic scanner (KTN scanner) 304 is directly observed (i.e., not in relation to the mirror, etc., as in Thumma), and feedback control is performed on the actual beam (e.g., by adjusting an up-down direction of the piezoelectric mirror 301).”. However, none of this is recited in the current claim language. Therefore, while a structural difference may be disclosed, the examiner maintains that the combination of Schuele and Thumma meet the BRI of the currently recited claim language, as previously mapped in the NF.
Regarding new claims 15-17, as pointed out by applicant, this claim recites allowable subject matter from parent application 16/912964 plus additional limitations. The examiner maintains that for the same reasons discussed in the parent application, there is no applicable prior art rejection for the current claims. Applicant’s filing of the terminal disclaimer prevents any double patenting rejections. Therefore, these claims are in condition for allowance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Focal length adjustment mechanism in claims 1-9 (see element 200 which includes elements 210, 212, 214, 220, 230, 240 and 250; Figs. 7, 10 and 11 of applicant’s specification for the corresponding structure).
Depth position detection device in claims 2-5 and 9 (see element 240, Fig. 7 of applicant’s specification for the corresponding structure).
Focus adjustment device in claims 2-3 (configuration/combination of elements 210, 212 and 214; Figs. 7, 10 and 11; see Pg 29 of applicant’s specification). It is noted that claim 4 recites sufficient structure (e.g. transmission medium) to take this limitation out of the 112, 6th consideration.
Optical axis adjustment mechanism in claim 7 (300, Fig. 5; including elements 301, 302, 303, 304 and 305)
Optical detection device in claim 7 (304, Fig. 5)
Optical axis adjuster in claim 7 (301, Fig. 5)
Adjust controller in claim 7 (304, Fig. 5)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Applicant is advised that should claim 7 be found allowable, claim 13 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102 or 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 4 and 10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2011/0172649 to Schuele (provided by applicant on their IDS submitted 7/20/2023), as evidenced by “What is Electro-Optic Deflector: Light’s Traffic Cop” to Conoptics.
[Claim 1] A laser treatment apparatus (system 2; Fig. 2B) that is configured to irradiate a laser beam to an affected area to treat the affected area, the laser treatment apparatus comprising:
a beam source (treatment light source 4; Par 0073) device that is configured to output a laser beam;
a scanning device (X-Y scanning device 50) that is configured to scan a therapeutic range including the affected area with the laser beam by irradiating the laser beam to the therapeutic range (at least Par 0080); and
a focal length adjustment mechanism (Z-adjust or Z scan device 40) that is configured to align a focal length of the laser beam output from the scanning device to a depth position of the affected area (at least Par 0079), wherein
the scanning device includes an optical element in which an output direction of the laser beam is changed according to an applied voltage (“Another means of scanning might be enabled by an electro optical deflector device (single axis or dual axis) in the optical path.”; Par 0045. See further explanation below);
the focal length adjustment mechanism includes:
a depth position detection (OCT 100) device that is configured to detect a depth position of the affected area (at least Pars 0032, 0069 and 0083); and
a focus adjustment device (two lens groups 42 and 44) that is configured to adjust a focal length of the laser beam on the basis of a detection result of the depth position of the affected area detected by the depth position detection device (at least Pars 0069, 0079 and 0083-86), and
the laser treatment apparatus further comprises a storage unit (computer Pars 0045 and 0074; which inherently has memory) that is configured to store a detection result of a normal area detected by the depth position detection device, wherein the depth position detection device is configured to detect the depth position of the affected area on the basis of a result of comparison with the detection result of the normal area stored in the storage unit (“An OCT scan of the eye will provide information about the axial location of the anterior and posterior lens capsule, the boundaries of the cataract nucleus, as well as the depth of the anterior chamber. This information is then be loaded into the control electronics 300, and used to program and control the subsequent laser-assisted surgical procedure. The information may also be used to determine a wide variety of parameters related to the procedure such as, for example, the upper and lower axial limits of the focal planes used for modifying the lens capsule, cornea, and synthetic intraocular lens implant, among others” Par 0083. At the very least the storage unit and depth position detection device (OCT) includes all of the necessary structure in order to be capable of functioning in the claimed manner; MPEP 2114).
Regarding the limitation “the scanning device includes an optical element in which an output direction of the laser beam is changed according to an applied voltage”, the examiner takes the position that Schuele’s explicit teaching of “another means of scanning might be enabled by an electro optical deflector device (single axis or dual axis) in the optical path.” (Par 0045) specifically applies to the X-Y scanning device (50, Fig. 2B) and therefore the scanning device 50 explicitly includes an electro-optical device. If applicant disagrees, then such a substitution of a mirror scanner for an electro-optical scanner is obvious as a simple substitution of one known element (one type of scanner, i.e. mirror scanner) for another (a different type of scanner, i.e. electro-optical scanner) to obtain predictable results. Regarding the “optical element in which an output direction of the laser beam is changed according to an applied voltage”, such an optical element is inherent to every electro-optical deflector; see “Key Components of Electro-optic Deflectors”, specifically “electro-optic crystals” and “voltage-controlled elements” by Conoptics.
[Claims 4 and 10] As discussed above, in relation to claim 1, Schuele discloses that “another means of scanning might be enabled by an electro optical deflector device (single axis or dual axis) in the optical path”. The examiner interprets this as explicitly teaching that either or both of the X-Y scanner (50) and Z-scanner (40) can be electro-optical scanners (instead of mirror scanners). If applicant disagrees, then such a substitution of a mirror scanner for an electro-optical scanner is obvious as a simple substitution of one known element (one type of scanner, i.e. mirror scanner) for another (a different type of scanner, i.e. electro-optical scanner) to obtain predictable results. As discussed above, and as evidenced by Conoptics, every/all electro-optical deflectors inherently include a transmission medium, i.e. crystal, that is controlled by applying voltage to the transmission medium. At the very least Schuele discloses all of the necessary structural elements and configuration to be capable of performing the claimed function; MPEP 2114. As seen in Fig. 2B, the focal adjustment mechanism (40), and therefore the inherent transmission medium, is located upstream of/before the scanning device (50). Regarding the limitation that the transmission medium is located downstream of the scanning device, the examiner considers this an obvious rearrangement of parts; MPEP 2144.04. Therefore, it would have been obvious to try placing the transmission medium (of the focus adjustment device) in either position, i.e. upstream or downstream, of the scanning device, as there are only two possible positions and neither is critical/unexpected, as the laser device would function the same regardless of the position, making this purely design/engineering choice.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Schuele as applied to claim 1 above, and further in view of US 2017/0340483 to Rill et al.
Schuele is discussed above, including teaching optics (mirrors 28, 30 and 32) to guide the light from the beam source (4) to the scanning device (50), and therefore fails to teach an optical fiber that guides the beam. However, in the same field of endeavor, Rill discloses that an optical fiber can be substituted for mirrors in order to guide along a path in a laser medical device (at least Pars 0221-222). Therefore, it would have been obvious to substitute the mirrors taught by Schuele for the optical fiber taught by Rill as this is a simple substitution of one known light-guiding element (mirrors) for another (optical fiber) to obtain predictable results (guide light along a path in a medical laser device).
Claims 7 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Schuele as applied to claim 1 above, and further in view of US 2018/0132936 to Thumma.
[Claim 7] Schuele is discussed above, but fails to teach an optical axis adjustment mechanism, as recited in claim 7. However, in the same field of endeavor, Thumma discloses such an optical axis adjustment mechanism (optical system 1, Figs. 1-2) including an optical detection device (sensors 4 or 5; at least Par 0076), an optical axis adjuster (lens 11) and an adjuster controller (6); see at least Pars 0022-26 and 0032-34. Therefore, it would have been obvious to one of ordinary skill in the art to modify the device taught by Schuele to include the optical axis adjustment mechanism taught by Thumma as a known optical configuration to ensure the light travels along the correct optical path and correct any misalignment, as taught by Thumma.
[Claims 11-13] All of these claimed limitations have been addressed in the rejections of claims 1 and 7, above.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Schuele as applied to claim 1 above, and further in view of US 2008/0299783 to Bruland et al.
Schuele discloses a pulse repetition rate of 500 Hz to 500 kHz (Par 0066; which overlaps applicant’s claimed range) and a pulse width of 400 picoseconds to 700 picoseconds (Par 0014; which falls completely within applicant’s claimed range.). MPEP 2144.05 states “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. Therefore, it would have been obvious to try/choose any pulse repetition rate taught by Schuele, including 1kHz to 500 KHz, as this is routine engineering choice to provide the most effective treatment and/or this is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
While the electro-optic scanner of Schuele inherently includes a crystal element, it does not necessarily include one of the crystal elements claimed. Furthermore, it is noted that Conoptics explicitly discloses “Common types of electro-optic crystals include: Lithium niobate”, but since this reference doesn’t necessarily qualify as prior art it can’t properly be used as a secondary reference in a 103 rejection. However, in the field of electro-optical scanners, Bruland teaches “a high speed, electro-optical beam scanner is used such as a KTN (KTal-xNbxO3, Potassium Tantalate Niobate) crystal available from Nippon Telegraph and Telephone Corp. of Tokyo, Japan” (Par 0053). Therefore, it would have been obvious to one of ordinary skill in the art to substitute the generic/non-specific crystal inherently taught by Schuele/Conoptics with the specific and common crystal, i.e. KTN, taught by Bruland, as this is a simple substitution of one known crystal for another to obtain predictable results, as it relates to the operation of an electro-optical scanner.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Schuele and Thumma as applied to claim 11 above, and further in view of US 2017/0340483 to Rill et al.
Schuele and Thumma are discussed above, with Schuele explicitly teaching optics (mirrors 28, 30 and 32) to guide the light from the beam source (4) to the scanning device (50), and therefore fails to teach an optical fiber that guides the beam. However, in the same field of endeavor, Rill discloses that an optical fiber can be substituted for mirrors in order to guide along a path in a laser medical device (at least Pars 0221-222). Therefore, it would have been obvious to substitute the mirrors taught by Schuele for the optical fiber taught by Rill as this is a simple substitution of one known light-guiding element (mirrors) for another (optical fiber) to obtain predictable results (guide light along a path in a medical laser device).
Allowable Subject Matter
Claims 15-17 are allowed. See reasons for allowance in parent application 16/912964.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lynsey C Eiseman whose telephone number is (571)270-7035. The examiner can normally be reached Monday-Thursday and alternating Fridays 7 to 4 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at 571-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796
Prosecution Insights