Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/8/2026 with claims/remarks of 5/18/2026 has been entered.
Response to Amendment
This office action is responsive to the amendment filed on 5/18/2026. As directed by the amendment, the status of the claim(s) are:
Claim(s) 1, 8, 15 has/have been amended;
Claim(s) 1-20 is/are presently pending.
Response to Arguments
Applicant states on p. 7 of remarks that TD’s have been filed with response to overcome double patenting rejections; however, a review of the application file does not show that the TD’s have been filed. The double patenting rejections have been updated in light of claim amendments.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim(s) 1-2, 4-6, 8-9, 11-13, 15, 19 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 6, 7 of U.S. Patent No. 11786306 in view of Chia (US 9757199 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim(s) is/are broader than the corresponding claim(s) in the reference patent and thus the corresponding claim(s) is/are a species of the more generic instant claim(s). It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Furthermore, they are not patentably distinct from each other because the instant application claim(s) overlap in scope with and are anticipated and/or obvious over the reference claim(s).
Regarding claim 1, U.S. Patent No. 11786306 teaches a surgical laser system controller (claim 1 “controller”), comprising:
a processor (claim 1 “controller” inherently has processor); and
a memory comprising instructions, which when executed by the processor cause the surgical laser system controller to (claim 1 “controller” inherently has memory):
receive a signal from an optical device, the signal comprising an indication of a reflected light, wherein the reflected light is reflected from a target and is based in part on a first laser energy being incident on the target (claim 1 “feedback”);
determine a characteristic of the target based in part on the reflected light (claim 1 “characteristic”).
U.S. Patent No. 11786306 does not teach determine laser energy settings for a second laser energy different from the first laser energy, based in part on the characteristic of the target, wherein the second laser energy is configured to fragment the target. However, Chia teaches in the same field of endeavor, being a parent patent of the instant application, determine laser energy settings for a second laser energy different from the first laser energy, based in part on the characteristic of the target (claim 18), wherein the second laser energy is configured to fragment the target (claim 20). Thus it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify the teaching of U.S. Patent No. 11786306 to include this feature as taught by Chia because this enables fragmenting the stone as treatment with laser setting set by feedback (claims 18-20).
In the combination of U.S. Patent No. 11786306 and Chia, U.S. Patent No. 11786306 teaches wherein the characteristic includes one or more of an estimated size of the target (claim 7), an estimated length of the target (claim 7), an estimated composition of the target (claim 7), and a vibration frequency of the target (claim 7).
Regarding claim 2, the combination of U.S. Patent No. 11786306 and Chia teaches wherein the instructions, when executed by the processor further cause the surgical laser system controller to configure a laser source to generate the second laser energy having an energy level defined by the surgical laser system controller, wherein the energy level is based in part on the characteristic of the target (claim 1 “determine a first laser energy setting”; Chia claims 18-20).
Regarding claim 4, in the combination of U.S. Patent No. 11786306 and Chia, U.S. Patent No. 11786306 teaches wherein the energy level defines characteristics of a laser pulse train (claim 6).
Regarding claim 5, in the combination of U.S. Patent No. 11786306 and Chia, U.S. Patent No. 11786306 teaches wherein the characteristics of the laser pulse train are one or more of a pulse repetition rate (claim 6), a pulse magnitude, and a pulse width.
Regarding claim 6, in the combination of U.S. Patent No. 11786306 and Chia, U.S. Patent No. 11786306 teaches wherein the characteristic of the target is one or more of a dimension of the target (claim 7), a geometry of the target (claim 7), a vibration frequency of the target (claim 7), a composition of the target (claim 7), a type of the target, a color of the target, or a tensile strength of the target.
Regarding claim 8, U.S. Patent No. 11786306 teaches a computer readable memory storage device, comprising instructions, which when executed by a processor of a surgical laser system controller, cause the surgical laser system controller to:
receive a signal from an optical device, the signal comprising an indication of a reflected light, wherein the reflected light is reflected from a target and is based in part on a first laser energy being incident on the target (claim 1 “feedback”);
determine a characteristic of the target based in part on the reflected light (claim 1 “characteristic”).
U.S. Patent No. 11786306 does not teach determine laser energy settings for a second laser energy different from the first laser energy, based in part on the characteristic, wherein the second laser energy is configured to fragment the target. However, Chia teaches in the same field of endeavor, being a parent patent of the instant application, determine laser energy settings for a second laser energy different from the first laser energy, based in part on the characteristic (claim 18), wherein the second laser energy is configured to fragment the target (claim 20). Thus it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify the teaching of U.S. Patent No. 11786306 to include this feature as taught by Chia because this enables fragmenting the stone as treatment with laser setting set by feedback (claims 18-20).
In the combination of U.S. Patent No. 11786306 and Chia, U.S. Patent No. 11786306 teaches wherein the characteristic includes one or more of an estimated size of the target (claim 7), an estimated length of the target (claim 7), an estimated composition of the target (claim 7), and a vibration frequency of the target (claim 7).
Regarding claim 9, the combination of U.S. Patent No. 11786306 and Chia teaches wherein the instructions, when executed by the processor cause the surgical laser system controller to configure a laser source to generate the second laser energy having an energy level defined in part by the surgical laser system controller (claim 1 “determine a first laser energy setting”; Chia claims 18-20).
Regarding claim 11, in the combination of U.S. Patent No. 11786306 and Chia, U.S. Patent No. 11786306 teaches wherein the energy level defines characteristics of a laser pulse train (claim 6).
Regarding claim 12, in the combination of U.S. Patent No. 11786306 and Chia, U.S. Patent No. 11786306 teaches wherein the characteristics are one or more of a pulse repetition rate (claim 6), a pulse magnitude, and a pulse width.
Regarding claim 13, in the combination of U.S. Patent No. 11786306 and Chia, U.S. Patent No. 11786306 teaches wherein the characteristic of the target is one or more of a dimension of the target (claim 7), a geometry of the target (claim 7), a vibration frequency of the target (claim 7), a composition of the target (claim 7), a type of the target, a color of the target, or a tensile strength of the target.
Regarding claim 15, U.S. Patent No. 11786306 teaches a surgical laser system, comprising:
a laser source configured to generate a first laser energy (claim 1);
an optical device (claim 1 “analyzer”); and
a controller, the controller comprising a processor and a memory comprising instructions, which when executed by the processor cause the processor to (claim 1):
receive a signal from the optical device, the signal comprising an indication of a reflected light, wherein the reflected light is reflected from a target and is based in part on the first laser energy being incident on the target (claim 1 “feedback”);
determine a characteristic of the target based in part on the reflected light (claim 1 “characteristic”).
U.S. Patent No. 11786306 does not teach determine laser energy settings for a second laser energy different from the first laser energy, based in part on the characteristic of the target, wherein the second laser energy is configured to fragment the target. However, Chia teaches in the same field of endeavor, being a parent patent of the instant application, determine laser energy settings for a second laser energy different from the first laser energy, based in part on the characteristic of the target (claim 18), wherein the second laser energy is configured to fragment the target (claim 20). Thus it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify the teaching of U.S. Patent No. 11786306 to include this feature as taught by Chia because this enables fragmenting the stone as treatment with laser setting set by feedback (claims 18-20).
Regarding claim 19, in the combination of U.S. Patent No. 11786306 and Chia, U.S. Patent No. 11786306 teaches wherein the characteristic of the target is one or more of one or more of a dimension of the target (claim 7), a geometry of the target (claim 7), a vibration frequency of the target (claim 7), a composition of the target (claim 7), a type of the target, a color of the target, or a tensile strength of the target.
Claim(s) 1, 3, 7, 8, 10, 14-18, 20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 9, 10, 11, 12-13, 18-20 of U.S. Patent No. 9757199. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim(s) is/are broader than the corresponding claim(s) in the reference patent and thus the corresponding claim(s) is/are a species of the more generic instant claim(s). It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Furthermore, they are not patentably distinct from each other because the instant application claim(s) overlap in scope with and are anticipated and/or obvious over the reference claim(s).
Regarding claim 1, U.S. Patent No. 9757199 teaches a surgical laser system controller (claim 9 “controller”), comprising:
a processor (claim 9 “processor”; claim 18); and
a memory comprising instructions, which when executed by the processor cause the surgical laser system controller to (claim 9 “controller” inherently has memory; claim 12; claim 18 “processor” inherently has memory):
receive a signal from an optical device, the signal comprising an indication of a reflected light, wherein the reflected light is reflected from a target and is based in part on a first laser energy being incident on the target (claim 9 “reflected”; claim 18);
determine a characteristic of the target based in part on the reflected light (claim 9 “characteristic”; claim 18) and
determine laser energy settings for a second laser energy different from the first laser energy, based in part on the characteristic of the target (claim 9; claim 18), wherein the second laser energy is configured to fragment the target (claim 20), and
wherein the characteristic includes one or more of an estimated size of the target (claim 11), an estimated length of the target (claim 11), an estimated composition of the target (claim 11), and a vibration frequency of the target (claim 11).
Regarding claim 3, U.S. Patent No. 9757199 teaches wherein the instructions, when executed by the processor further cause the surgical laser system controller to store the energy level as laser energy settings in the memory (claim 12).
Regarding claim 7, U.S. Patent No. 9757199 teaches wherein the optical device is a spectrometer (claim 13).
Regarding claim 8, U.S. Patent No. 9757199 teaches a computer readable memory storage device, comprising instructions, which when executed by a processor of a surgical laser system controller, cause the surgical laser system controller to:
receive a signal from an optical device, the signal comprising an indication of a reflected light, wherein the reflected light is reflected from a target and is based in part on a first laser energy being incident on the target (claim 9 “reflected”; claim 18);
determine a characteristic of the target based in part on the reflected light (claim 9 “characteristic”; claim 18); and
determine laser energy settings for a second laser energy different from the first laser energy, based in part on the characteristic (claim 9; claim 18), wherein the second laser energy is configured to fragment the target (claim 20), and
wherein the characteristic includes one or more of an estimated size of the target (claim 11), an estimated length of the target (claim 11), an estimated composition of the target (claim 11), and a vibration frequency of the target (claim 11).
Regarding claim 10, U.S. Patent No. 9757199 teaches wherein the instructions, when executed by the processor further cause the surgical laser system controller to store the energy level as laser energy settings in the computer readable memory storage device (claim 12).
Regarding claim 14, U.S. Patent No. 9757199 teaches wherein the optical device is a spectrometer (claim 13).
Regarding claim 15, U.S. Patent No. 9757199 teaches a surgical laser system, comprising:
a laser source configured to generate a laser energy (claim 9; claim 18);
an optical device (claim 9 “analyzer”; claim 18); and
a controller, the controller comprising a processor and a memory comprising instructions, which when executed by the processor cause the processor to (claim 9;claim 18):
receive a signal from the optical device, the signal comprising an indication of a reflected light, wherein the reflected light is reflected from a target and is based in part on the laser energy being incident on the target (claim 9 “reflected”; claim 18);
determine a characteristic of the target based in part on the reflected light (claim 9 “characteristic”; claim 18); and
determine laser energy settings for a second laser energy different from the first laser energy, based in part on the characteristic of the target (claim 9; claim 18), wherein the second laser energy is configured to fragment the target (claim 20), and
wherein the characteristic includes one or more of an estimated size of the target (claim 11), an estimated length of the target (claim 11), an estimated composition of the target (claim 11), and a vibration frequency of the target (claim 11).
Regarding claim 16, U.S. Patent No. 9757199 teaches wherein the instructions, when executed by the processor further cause the processor to:
determine an energy level based in part on the characteristic of the target (claim 9 “determine the laser energy setting”); and
store the energy level as laser energy settings in the memory, wherein the laser source is configured to generate the second laser energy based in part on the laser energy settings (claim 12).
Regarding claim 17, U.S. Patent No. 9757199 teaches wherein the energy level defines characteristics of a laser pulse train (claim 10).
Regarding claim 18, U.S. Patent No. 9757199 teaches wherein the characteristics are one or more of a pulse repetition rate (claim 9), a pulse magnitude (claim 9 “power”), and a pulse width (claim 9).
Regarding claim 20, U.S. Patent No. 9757199 teaches wherein the optical device is a spectrometer (claim 13).
Claim Rejections - 35 USC § 112
Claims 6, 13, 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claims 6, 13, 19, the instant claims recite “wherein the characteristic of the target is one or more of a dimension of the target, a geometry of the target, a vibration frequency of the target, a composition of the target, a type of the target, a color of the target, or a tensile strength of the target.” However, the independent claims on which they depend from, claims 1, 8, 15 already recite “wherein the characteristic includes one or more of an estimated size of the target, an estimated length of the target, an estimated composition of the target, and a vibration frequency of the target.”
The instant claims do not further limit because the recited elements from the dependent claim(s) overlap and/or are duplicative of elements in the independent claim(s):
“a dimension of the target, a geometry of the target” vs “estimated size of the target, an estimated length of the target”;
“a composition of the target” vs “an estimated composition of the target”;
“a vibration frequency of the target” vs “and a vibration frequency of the target”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter with respect to 102/103
Applicant remarks p. 8-10 are persuasive.
The prior art of record does not disclose or fairly suggest either singly or in combination the claimed invention of independent claims 1, 8, 15 when taken as a whole, comprising, in addition to the other recited claim elements, receive a signal from an optical device, the signal comprising an indication of a reflected light, wherein the reflected light is reflected from a target and is based in part on a first laser energy being incident on the target;
determine a characteristic of the target based in part on the reflected light;
determine laser energy settings for a second laser energy different from the first laser energy, based in part on the characteristic of the target, wherein the second laser energy is configured to fragment the target, and
wherein the characteristic includes one or more of an estimated size of the target, an estimated length of the target, an estimated composition of the target, and a vibration frequency of the target.
Conclusion
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/JONATHAN T KUO/ Primary Examiner, Art Unit 3792
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