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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/22/2026 has been entered.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1 - 5 and 8 - 11 are objected to because of the following informalities:
Claim 1 is objected to because “lager” in line 14 appears to be a misspelling of the word “laser”.
Claims 2, 3, 4, 5, 8, 9, 10, and 11 are objected to because each instance of the term “through hole” should be amended to recite “through-hole”.
Claim 11 is objected to because “rotates” should be amended to recite “is configured to rotate” or “is rotatable”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 - 12 and 14 - 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 - 12 and 14 - 16 are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. For example, the claims generally include narratives of activities that do not clearly set forth the required structural features. Examiner suggests re-phrasing the claims to use “configured to” language as needed to avoid narration and conform with current U.S. practice.
Claim 1 is indefinite for the following reasons:
It is unclear what is meant by “a first ultrasonic probe … configured to receive a first ultrasonic input from the to-be-examined object by the laser output” (4th paragraph). The text appears to be missing words and/or comprise a logical error. It is unclear what must be “by the laser output”. Does the claim intend that the first ultrasonic input is generated as a result of the laser output?
It is unclear what “with a predetermined distance” (5th paragraph) attempts to modify. Does the claim intend that the second ultrasonic probe is “at” a predetermined distance from the laser probe?
It is unclear what is meant by “a second ultrasonic probe … configured to receive a second ultrasonic input emitted from the to-be-examined object by the ultrasonic output” (6th paragraph). The text appears to be missing words and/or comprise a logical error. It is unclear how an ultrasonic input may be “emitted from the to-be-examined object by the ultrasonic output”. Does the claim intend that the second ultrasonic input is generated as a result of the ultrasonic output?
It is unclear what structural features of the claimed device are required. The claim improperly attempts to define structural features of the claimed device by recitation of function in the form of actively recited method steps, activities, and/or characterizations thereof as follows:
“… which simultaneously acquires” (line 2)
“… and move together during scanning of the to-be-examined object” (6th paragraph)
“a first position at which the laser output is focused on the to-be-examined object and a second position at which the ultrasonic output is focused are spatially separated by a set separation distance during scanning” (2nd to last paragraph)
“… are generated simultaneously while maintaining the spatial separation distance” (last paragraph)
The claim is therefore a hybrid apparatus/method claim, which the Federal Circuit has held are indefinite under §112, second paragraph. See Rembrandt Data Techs., LP v. AOL, LLC, 641F.3d 1331, 1339 (Fed. Cir. 2011) (holding apparatus claim reciting active transmitting step indefinite). This is a critical defect because it is unclear whether the claim covers a device that is merely capable of performing the recited function or if the function must actually be performed. Examiner suggests re-phrasing the claim to use “configured to” language as needed to avoid recitation of active steps.
Claims 2, 3, 4, 5, 6, 10, and 12 are indefinite because it is unclear if “is provided” or “are provided” attempts to require a method step of ‘providing’. If so, the claims are hybrid claims, which are indefinite. Examiner suggests re-phrasing the claims using conventional language that better conforms with current U.S. practice.
Claim 5 is indefinite because it recites a fourth through-hole, whereas no third through-hole has been recited in the claim’s dependency chain. The numbering is therefore improper ordinal numbering. It is unclear how many through-holes are required.
Claim 8 is indefinite because there is insufficient antecedent basis for “the second through hole”. The element has not been recited in the claim’s dependency chain. It is unclear what is being referred to.
Claim 11 is indefinite because there is insufficient antecedent basis for “the side surface of the second ultrasonic probe”. It is unclear what is being referred to.
Claim 12 is indefinite because it recites an active state of “rotating”. The claim is therefore a hybrid apparatus/method claim, which the Federal Circuit has held are indefinite under §112, second paragraph.
Claim 14 is indefinite because it recites an active state of ‘point-focusing on different positions of the object’. The claim is therefore a hybrid apparatus/method claim, which the Federal Circuit has held are indefinite under §112, second paragraph.
Claim 15 is indefinite because it is unclear what is intended by “wherein, with respect to a set laser and ultrasonic output conditions or input conditions, …” It is unclear if the “set laser” is the laser probe in claim 1 or not. It is unclear if the “ultrasonic output conditions or input conditions” are conditions of the ultrasonic input/output in claim 1 or not. Further, it is unclear if “the separation distance is set in advance by extracting the best image quality …” attempts to require a method step of ‘setting the separation distance by extracting the best image quality …’. If so, the claim is a hybrid claim, which is indefinite.
Claim 16 is indefinite because it recites an active state of ‘setting the separation distance in real time’. The claim is therefore a hybrid apparatus/method claim, which the Federal Circuit has held are indefinite under §112, second paragraph.
Dependent claims that are listed in the rejection header above as being rejected while not having been specifically addressed are rejected by virtue of dependency.
Allowable Subject Matter
Claims 1 - 12 and 14 - 16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Response to Arguments
Applicant’s arguments, see pages 8 - 9, filed 3/22/2026, with respect to the art rejection of claim 1 have been fully considered and are persuasive. The art rejections of claim 1, and all claims depending therefrom, have been withdrawn. As noted in the 112(b) rejections above, examiner suggests re-phrasing the claims to use “configured to” language as needed to avoid narration and conform with current U.S. practice, without substantially altering the scope of the claims. Examiner suggests adding a controller/processor if needed to capture the functional limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Carson et al. (US 2010/0249570) disclose photoacoustic imaging, and teach two ultrasound probes on two support blocks, disposed in perpendicular directions, and a photoacoustic probe ([0099] and fig. 24). The probes are integrally supported by the housing and move together during scanning.
However, the probes are both used to acquire photoacoustic imaging data, in contrast to claim 1, which requires that one of the probes is configured to perform ultrasound imaging. Moreover, Carson fails to show that the laser output and the ultrasonic output are generated simultaneously while maintaining the spatial separation distance so as to reduce interference between a photoacoustic signal and an ultrasonic signal and to enable simultaneous acquisition of the photoacoustic image and the ultrasonic image.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIE R DAVIS whose telephone number is (571)270-7240. The examiner can normally be reached Monday-Friday, 9:30 - 6:00 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pascal Bui-Pho can be reached at (571)272-2714. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMELIE R DAVIS/Primary Examiner, Art Unit 3798
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