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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, Species A in the reply filed on 3/26/25 is acknowledged.
Claims 5-12, 14-18 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Response to Arguments
Applicant's arguments filed 10/5/25 have been fully considered but they are not persuasive.
Regarding the argument that one feature of the present teaching (from Ito) is that different imaging functions can be provided for different cores and a single imaging function is performed on multiple cores and some regions can be visited more than once but at different periods of time. It is important to note that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[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).
Regarding the new claim limitations, wherein the motion of the distal motor is controlled by the processor to cause the light pattern to traverse the path across the sample such that a spot from one of at least two cores and a spot from another of the at least two cores visits a nominally same position at the sample at different times. Ito teaches two motors (167, 168). One (167) rotates the scanning unit (163) and the other (168) moves the scanning unit (163) in the y-axis (Fig. 4A). Given there is movement in the y-axis and rotational movement and multiple cores (241-244), a spot from a core can be sampled and then the y-axis movement can make it so anther core will sample that same spot at a different time. In other words, Ito is capable of preforming the claimed function, thus a prima facie case of obviousness has been established since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See also MPEP 2112.01.
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.
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, 13, 19, 20, 22 and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al (US 2016/0299170 A1).
Ito teaches:
1. An optical probe imaging system (Figs. 4A-B) comprising:
a) an optical probe (160);
b) a multicore optical fiber (340) positioned in the optical probe (160) and having a proximal (bottom of Fig. 4A) and a distal end (top of Fig. 4A);
c) distal optics (150) that are optically coupled to the distal end of the multicore optical fiber (340), the distal optics imaging light propagating in the multicore optical fiber (340) so as to generate a light pattern on a sample (500) that is based on a relative position of at least two cores (341) at a distal facet of the multicore optical fiber (340) (P0190);
d) a distal motor (167, 168) mechanically coupled to the optical probe (160) so that a motion of the distal motor (167, 168) causes the light pattern to traverse a path across the sample (500) (P0129, 0183, 0185) in the x-y plane (x-y scanner, P0158);
e) an optical receiver (170) having an input that is optically coupled to the proximal end of the multicore optical fiber (340), the optical receiver (170) receiving light that has traversed the path across the sample (500) and generating an electrical signal corresponding to the received light (P0110, 0124, 0182);
f) a processor (280) having an input coupled to an output of the optical receiver (170) and an output coupled to distal motor (see arrows from 183 to 167 and 168 in Fig. 4A), the processor (280) mapping the electrical signal to a representation of information about the sample (500), wherein the mapping is based on the relative position of at least two cores (341) at the distal facet of the multicore fiber (340) and on the motion of the distal motor (167, 168) (P0182-0183).
Ito does not explicitly state wherein the motion of the distal motor is controlled by the processor to cause the light pattern to traverse the path across the sample such that a spot from one of at least two cores and a spot from another of the at least two cores visits a nominally same position at the sample at different times.
It is important to note that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997); In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[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).
Ito teaches two motors (167, 168). One (167) rotates the scanning unit (163) and the other (168) moves the scanning unit (163) in the y-axis (Fig. 4A). Given there is movement in the y-axis and rotational movement and multiple cores (241-244), a spot from a core can be sampled and then the y-axis movement can make it so anther core will sample that same spot at a different time. In other words, Ito is capable of preforming the claimed function, thus a prima facie case of obviousness has been established since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See also MPEP 2112.01.
2. The optical probe imaging system of claim 1 wherein the mapping is further based on a rotation rate of the distal motor (P0183-0185).
3. The optical probe imaging system of claim 1 wherein the mapping is further based on a pullback speed (called translational movement in Ito) of the optical probe (P0183).
19. The optical probe imaging system of claim 1 further comprising a folding element (164) positioned adjacent to the distal optics (150), the folding element (164) directing light propagating in the multicore optical fiber (340) to the sample (500) (P0145).
22. The optical probe imaging system of claim 19 wherein the distal motor (167) is mechanically coupled to the folding element (164) (P0156).
24. The optical probe imaging system of claim 1 wherein the optical probe is configured to translate so that it advances towards the sample and pull backs from the sample (500) (P0157).
25. The optical probe imaging system of claim 24 further comprising a motor (168) that translates the optical probe (P0157).
26. The optical probe imaging system of claim 24 wherein the mapping is further based on a speed (translational movement of the scanning unit) that the optical probe translates (P0183).
27. The optical probe imaging system of claim 1 further comprising a motor (part of 168) mechanically coupled to the optical probe that translates the optical probe to advance the optical probe towards the sample and to pull back the optical probe from the sample (500) (P0157).
28. The optical probe imaging system of claim 1, further comprising an optical source (110) having an output that is coupled to the proximal end of the multicore optical fiber (340).
Regarding claims 4, 13 and 20: Ito teaches the optical probe imaging system previously discussed, but Ito does not state wherein the relative position of at least two cores is such that a spot from one of at least two cores and a spot from the other of at least two cores visits a nominally same position at the sample at different times or wherein the mapping is further based on an angle of a perpendicular vector of a surface of the folding element with respect to a center of the optical probe.
The manner in which the scanner and mapping is configured is a function of how the scanner is used. Ito teaches the scanner being able to scanner multiple spots at once and thus configuring it such that the relative position of at least two cores is such that a spot from one of at least two cores and a spot from the other of at least two cores visits a nominally same position at the sample at different times or wherein the mapping is further based on an angle of a perpendicular vector of a surface of the folding element with respect to a center of the optical probe would be purely functional and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997), see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[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).
Further, the system being the particular type of an optical coherence tomography system does not add any structure to the claim, it only states an intended use of the claimed structure and 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). All of the structural limitations have been meet as already discussed.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Ito as applied to claims 1 and 19 above, and further in view of Hall (US 10,488,637 B2).
Ito teaches the optical probe previously discussed.
Ito does not teach expressly wherein the folding element includes a non-planar surface.
Hall teaches concave folding mirrors that rotate around and axis and have a concave reflecting surface (C2 L43-C3 L23).
Ito and Hall are analogous art because they are from the same field of endeavor, optical imaging systems.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the folding element of Ito to use one with a concave surface as taught by Hall since Ito specifically states the folding mirror may be various other optical elements (Ito P0145).
The motivation for doing so would have been to provide positive optical power (Hall C2 L43-C3 L23).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Ito as applied to claims 1 and 28 above, and further in view of Swanson (US 2016/0357007 A1).
Ito teaches the optical probe imaging system previously discussed, but does not teach expressly the optical source is a swept optical source and the optical receiver is a swept source domain optical coherence tomography receiver.
Swanson teaches an optical probe imaging system comprising an optical source being a swept optical source (P0035) and an optical receiver that is a swept source domain optical coherence tomography receiver (P0037, 0041).
Ito and Swanson are analogous art because they are from the same field of endeavor, optical probe imaging systems.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the source and receiver of Ito to include the swept types for optical coherence tomography as taught by Swanson.
The motivation for doing so would have been to configured to system as a standard type, such as a swept source optical coherence tomography system, and for allowing different delays in each path into distinct intermediate frequencies (P0041).
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Ito as applied to claim 1 above, and further in view of Alphonse et al (US 2012/0099112 A1).
Ito teaches the optical probe previously discussed.
Ito does not teach expressly wherein the distal end of the multicore fiber is formed with an angled distal facet that reduces back reflection.
Alphonse teaches a distal end of a multicore fiber is formed with an angled distal facet that reduces back reflection (P0098-0099).
Ito and Alphonse are analogous art because they are from the same field of endeavor, optical imaging systems.
At the time of the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the fiber of Ito to use one with an angled distal facet as taught by Alphonse.
The motivation for doing so would have been to reduce reflections (Alphonse P0098-0099).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN A LEPISTO whose telephone number is (571)272-1946. The examiner can normally be reached on 9AM-6PM EST M-F.
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/RYAN A LEPISTO/ Primary Examiner, Art Unit 2874