DETAILED ACTION730
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 112b rejection of claim 14, applicant’s deletion of this claim has made this rejection moot.
Regarding the 103 rejection of claim 1, applicant’s arguments have been considered but are not persuasive. Specifically, applicant argues that it would not be obvious to substitute the X-Y scanner (17) of Huang (located in base station 9) for the X-Y beam steering/scanner (128/130) of Zacharias (located in delivery system 120) because these elements are located in different locations in their respective laser systems. Specifically, applicant seemingly argues that the X-Y beam steering mechanism of Zacharias must/has to be positioned close/near to the target, and cannot be positioned in the base station (as this is too far away from the target). In particular, applicant argues that this proposed modification, i.e. substituting the base station scanner of Huang with the scanner taught by Zacharias, will make Huang’s laser device inoperable as it “would drastically magnify the angular displacement of the dual-axis steering element 730 (of Zacharias)… and result in a large loss of the high angular resolution required for generating the overlapping circular pattern required by Huang”. However, this is merely conjecture/opinion/allegation by applicant with absolutely no evidence to support it. Applicant’s arguments amount to a mere conclusory statement, as the arguments fail to provide anything to support their position. Furthermore, it seems as if applicant is arguing that their own device is inoperable, as applicant has the exact same type of X-Y scanner/beam-steering as taught by Zacharias located in the base station, which is far away from the target (as there exists an articulated arm in between the base station and target). So if applicant’s beam steering clearly works/functions properly in the base station, it’s unclear how/why the same X-Y scanner/beam steering of Zacharias would somehow not function. Again, applicant has provided no evidence or facts to support their allegation/opinion. Therefore, the examiner maintains that the one type of X-Y scanner/beam-steering is a simple substitution of another X-Y scanner/beam-steering, as it provides the same effect, i.e. X-Y scanning/beam-steering of the light.
Regarding the argument that the control algorithms of these types of scanners would be different since Huang’s scanner includes two mirrors and Zacharias’s scanner only includes one and therefore is not a simple substation. The examiner disagrees, as "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. (MPEP 2143.04). In the same vein, “the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981)”; MPEP 707.07(f). Specifically, a POSITA would understand the differences between these scanners and their control algorithms and account for these differences.
Applicant further argues that the actual functional role of these two scanners is fundamentally different from one another and would require much more than routine modification. Specifically, both X-Y scanners of Huang and Zacharias require further downstream steering mechanisms to achieve the overall desired/pattern, and because the downstream steering mechanisms are different (Huang teaches a positioning stage 27 that moves a lens, while Zacharias teaches a human operable pattern steering mechanism 136 that further steers the beam and does not move the lens) a POSITA “would be at a loss as to how to proceed” when attempting to combine these different scanning mechanisms. Again, it is emphasized that a POSITA is not an automaton, and instead is a person of ordinary creativity that can use inferences and creative steps to fit these two teachings together like a puzzle. Furthermore, it is emphasized that the “test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference”. If anything the fact that both Huang and Zacharias both use/need additional downstream beam steering, emphasizes the combability/suitability/similarities of these two types of X-Y scanners. Just because these downstream steering mechanisms are different in no way provides evidence that the X-Y scanners themselves have completely different functions. Seemingly, any error, i.e. differences between the desired scan pattern to be delivered to the target and that produced by the X-Y scanners of either Huang or Zacharias, is clearly corrected/accounted for by these downstream steering mechanisms. Therefore, these X-Y scanners seemingly provide the exact same functionality/effect/result, i.e. steering/directing a laser beam in both X and Y directions to ultimately obtain a desired scan pattern on the eye. Applicant’s arguments in no way explain how the X-Y scanners function differently, but instead focus solely on what happens to the beam after it leaves the X-Y scanner, and how the downstream steering mechanisms are different. There is simply no indication within either Huang or Zacharias that these two types of X-Y scanners, which both serve the same function to steer/direct the laser beam along the X and Y axes, are so vastly different in how they function/operate that substituting one for the other would not be obvious. Stated differently, applicant argues that the functional roles of these two X-Y scanners are so different that a POSITA would not be able to reconcile these differences, but applicant’s arguments in no way apprise the examiner of how or why these functional roles are different. Again, just because each of these references uses different downstream steering mechanisms after the beam leaves these X-Y scanners, does not explain how/why the X-Y scanners themselves provide functionally different roles (other than to simply steer/direct the beam in the X and Y directions).
The examiner maintains that a POSITA would find it obvious to substitute one type of X-Y scanner/beam-steering for another X-Y scanner/beam steering, both of which are used in ophthalmic laser surgical devices in order to steer/direct the beam in the X and Y directions, regardless of where they are located within their respective devices and regardless of the different downstream beam steering mechanisms within their respective devices. Furthermore, the references cited in the conclusion section provide evidence of the suitability/compatibility/substitutability of these two different kinds of scanners.
Regarding new claim 15, applicant’s incorporation of previously-indicated allowable subject matter, specifically previous claims 1, 10, 13 and 14, into independent form, results in claim 15 being allowed.
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.
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 1-3, 6-9 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0131653 to Huang in view of US 2008/0015553 to Zacharias.
[Claim 1] Huang discloses an ophthalmological laser device (ophthalmic laser surgery apparatus, Fig. 1; Abstract and Pars 0010-11) comprising:
a base station (main cabinet 9) comprising:
a treatment laser source (femtosecond laser 14) configured to generate a treatment laser beam (Pars 0021 and 0025),
a scanner (galvanometer XY-Scanner 17) arranged in a beam path of the treatment laser beam downstream from the treatment laser source (Pars 0020-21 and 0025), and
a control module (computer 12) connected to the treatment laser source and the scanner (as seen in Fig. 1, the controller 12 is connected to the laser 13 and scanner 17 by lines. “In FIG. 4 the trajectory of overlapping circular scanning pattern 18 of laser beam spots 32 is moved around in concentric circles to ablate the area being focused on under control of the computer 12” Par 0029. See also Par 0025);
an application head (hand piece 25; Par 0023); and
an arm (mirror arm represented by elements 22, 23 and 24 in Fig. 1) arranged between the base station and the application head, wherein the arm is configured to provide the beam path for the treatment laser beam (“The ophthalmological apparatus has a main cabinet and a hand piece connected thereto with an articulated arm.” Par 0011; see also Par 0025).
Huang fails to explicitly teach a deflecting element pivotable about a first axis and a second axis, wherein the first and second axes lie in a virtual plane arranged substantially parallel to a deflecting plane of the deflecting element and the first and second axes are arranged orthogonal to each other. However, in the same field of endeavor, Zacharias discloses a similar laser ophthalmic device including a scanner (dual-axis electrostatic beam steering element 730; Fig. 6B and Par 0102 OR dual-axis beam steering mechanism 550; Figs. 8A-C and Par 0104) comprising a deflecting element (mirror 732, Fig. 6B or lens 572, Fig 8C) pivotable about a first axis and a second axis (734 and 736, Fig. 6B and Par 0102 OR axes defined by actuators 580 and 590, Fig. 8C and Par 0104. Although the axes are not explicitly shown in Fig. 8C, it’s abundantly clear that they would exist in the same manner shown in Figs. 5A-6B) that lie in a virtual plane arranged substantially parallel to a deflecting plane of the deflecting element (Fig. 5B illustrates this best, showing pivot axis 704, i.e. dashed line D to D1, located in virtual plane behind and parallel to the deflecting element 702.) and the first and second axes are arranged orthogonal to each other (Fig. 6B and Par 0102 OR Fig. 8C and Par 0104 which makes it clear that the actuators are perpendicular to each other.). Regarding the virtual plane, while Zacharias is technically silent to a virtual plane, the examiner takes the position that this is the same structure/scanner as disclosed by applicant, and therefore this is an inherent characteristic/property of such a scanner (see Par 86 and Fig. 7 of applicant’s specification; see also MPEP 2112). Therefore, it would have been obvious to substitute the scanner taught by Huang for the scanner taught by Zacharias as a simple substitution of one known scanner for another to obtain predictable results, specifically provide effective beam deflection for laser ophthalmic surgery procedures.
[Claims 2, 3 and 6] It’s clear from Pars 0101-104 and Figs. 5A-8C that the scanner can comprise at least two piezoelectric actuators (e.g. 580 and 590 in Fig. 8C OR 708 in Fig. 7C) coupled to the deflecting element that are configured to cause pivoting of the deflecting element about the first and second axis by linear extension (at least Par 0103 discloses how piezoelectric actuators operate via displacement, i.e. linear extension); These are interpreted as “two-axis scan drive”. Additionally or alternatively, it’s clear from Zacharias that piezoelectric actuators or alternative equivalents/substitutes for electrostatic actuators (“An alternative to piezoelectric actuated steering mechanisms is the use of electrostatic actuated steering mechanisms” Par 0102). Therefore, it would have been obvious to substitute the two electrostatic actuators shown/described in relation to Fig. 6B with two piezoelectric actuators, as this is a simple substation of one known actuator for another to obtain predictable results, i.e. effective scanning/beam-deflection.
[Claim 7] Huang discloses an articulated arm with internal mirrors arranged in the beam path (“The laser beam overlapping circular scanning pattern 18 then passes through a system of relay lenses 19 and 21 and is deflected by mirrors 22, 23 and 24 which connect the laser beam overlapping circular scanning pattern 18 from the main cabinet 9 to a remote hand piece 25 with an articulated arm holding the mirrors and relay lens” Par 0025).
[Claim 8] As seen in Fig. 1, the length of the beam path in the arm (distance travelled by the beam from lenses 19 to 21, as this defines the length of the arm), is longer than the length of the scanner and arm (distance from element 17 to 19, which is very short compared to the length of the arm) and the beam path in the application head (distance from 21 to eye 30, which is also very short compared to the length of the arm). Therefore, the examiner contends that the limitation is met when considering Fig. 1 of Huang, as well as the reference as a whole and standard knowledge within art. If applicant disagrees, then such a design is obvious. Specifically, while these relative lengths are clearly shown in Fig. 1, it’s not clear if the drawings in Huang are drawn to scale. But it would be obvious to design the system of Huang to have the relatives length as claimed, and shown in Fig. 1, as this is a common design/configuration, specifically to have a long(er) articulated arm for positioning the application head onto a patient’s eye. Additionally or alternatively, it has been held that changes in size/proportion are obvious; In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04)
[Claim 9] Fig. 9 of Zacharias discloses the possible spacing for the treatment spots achieved by the scanner. Specifically, it’s clear that the spacing can be “0 to 300 percent of location width” and the location width can be “5 to 1000 microns”. Therefore, at the very least the scanner is inherently capable of producing a minimum linear distance between treatment points less than 20 micrometers; see MPEP 2112 and 2114. Additionally or alternatively, such an angular resolution would be obvious based on the disclosed spacing of Zacharias. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); MPEP 2144.05.
[Claim 11-12] The examiner takes the position that the scanners taught by Zacharias are inherently capable of functioning in the claimed manner; see MPEP 2114. Specifically, Zacharias discloses the same type and configuration of scanners as disclosed by applicant and therefore they can operate in the same manner. These limitations seemingly relate to how the scanner is initially oriented/positioned. Under BRI, any orientation of the deflecting element can be considered the “zero position”
[Claim 13] Zacharias discloses a scanner monitor including a pilot light source (aiming beam 106) and a scanner monitor sensor (beam position sensor 142), wherein the pilot light source is configured to generate a pilot light which is deflected by the deflecting element and incident on the scanner monitor sensor, wherein the scanner monitor is connected to the control module and configured to transmit to the control module a scanner monitor signal for monitoring the scanner (Pars 0090 and 0096). It would have been obvious to one of ordinary skill in the art to modify Huang to include the scanner monitor taught by Zacharias, as this is a known monitoring/safety mechanism that provides real time information and control of a scanner in similar laser ophthalmic surgery devices.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Huang and Zacharias as applied to claim 2 above, and further in view of US 2004/0068161 to Couvillon Jr.
Zacharias discloses a scanner controller (motion/position controller circuit 62 and microprocessor 300), and at least two sensors (actuator position sensor 712; Figs. 5B and 7C OR equivalent sensors 584 and 594 in Fig. 8C) each connected to the control module and the at least two actuators, wherein the scanner controller is configured to: receive, from the control module, a scan signal and receive, from the at least two sensors, at least two sensor signals from the at least two sensors, respectively, generate a control signal using a scan signal received from the control module, the sensor signals, and closed loop control, and transmit, to the at least two actuators, the control signal for pivoting the deflecting element about the first and second axes (Pars 0097, 0101, 0103 and 0112). It would have been obvious to one of ordinary skill in the art to modify Huang to include the scanner controller taught by Zacharias to provide a known safety/monitoring/control mechanism to ensure the accurate position of the scanner and scanner actuators.
Huang and Zacharias are discussed above, but fail to explicitly teach that that actuator position sensor is a strain gauge. However, it is known in the art of medical laser devices that strain gauges are used to measure/determine/sense the position, i.e. spatial orientation of actuators; See Pars 0013, 0058, 0093 and 0099 of Couvillon. Specifically, Couvillon discloses “a number of strain gauges can be employed to provide electronic feedback concerning the orientation of the actuators and structural elements within the assembly. This electronic feedback will also provide a number of additional advantages, including compensation for physiologic changes, greater stability, error correction, and immunity from drift” (Par 0058). Therefore, it would have been obvious to substitute the generic position sensor taught by Zacharias for the specific position sensor, i.e. strain gauge, taught by Couvillon as this is a simple substation of one known position sensor for another to obtain predictable results, specifically to determine the position/orientation of actuators.
Allowable Subject Matter
Claim 15 is allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references show the suitability, compatibility and/or substitutability of galvanometer and electrostatic scanners:
US 2011/0116040 to Homer (“The scanning unit that is arranged in the beam path for scanning illumination is designed as (an) electrostatically or/and galvanometrically driven bidirectional or unidirectional tilting mirror(s)”; Abstract)
US 11,160,685 to Homer (“Exemplary methods for lens focusing include manually or electronically (a) shifting the position of one or more focal lenses (e.g., a lens mounted on a motor stage to shift along the beam access), (b) shifting the position of one or more focal mirrors (e.g., by adding a third mirror to a galvos beam steering system), (c) changing the shape of one or more focal lenses or mirrors, (d) deflecting or refracting a beam by means of an acousto-optical or electro-optical devices, or (e) using electrostatic or electromagnetic lenses or mirrors to shift the focal position of the beam.”; Col 20, lines 46-55)
THIS ACTION IS MADE FINAL. 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.
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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.
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/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796
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