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
Claims 1-10 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/22/2025.
Applicant’s election without traverse of Invention II (Claims 11-20) in the reply filed on 12/22/2025 is acknowledged.
Information Disclosure Statement
The information disclosure statement filed 10/24/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. The Applicant has not filed a copy of NPL reference # 10 (“NIDEK, Scanning Laser Ophthalmoscope Mirante SLO/OCT Mirante SLO, …”) of the 10/24/2024 IDS. Please file the missing reference. All other references in the 10/24/2024 IDS have been considered.
The 03/08/2024 and 03/13/2024 IDS have been considered by the Examiner.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/388,911 (hereinafter ‘911 App), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The ‘911 App does not provide support for the limitation of instant claim 11, that is wherein the one or more combining optics configured to place a second focal point of the second laser within .01 μm of a second focal point of the second laser. Since claims 12-20 depend from claim 11, they also do not have appropriate support from the ‘911 App to receive benefit of the earlier effective filing date. Therefore, the effective filing date of claims 11-20 is the filing date of the instant application (U.S. App. No. 18/351,401), which is 07/12/2023.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 138. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Note: Reference character 138 is mentioned in Par. [0018], but is not shown in Fig. 1.
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 11-20 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.
The limitation “place a second focal point of the second laser within .01 μm of a second focal point of the second laser” renders claim 11 (lines 7-8) indefinite. It is unclear if the second instance of “a second focal point” refers to the same focal point as introduced earlier in the limitation. It is also unclear what this limitation intends to convey, as it would be implicitly understood that the second focal point of the second laser would be within .01 μm of itself. It is also unclear why there is a second focal point when a first focal point was never introduced.
*All other claims are rejected due to their dependency on a rejected claim.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 11-20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Wang, et al. (U.S. PGPub No. 2020/0038241 – cited on IDS). The Article “Micro-optofluidic Lenses: A review” by Nguyen is relied upon as evidence for the rejection of claim 15 hereinbelow (see attached).
Regarding claim 11, Wang teaches (Fig. 1) a system (Title; Abstract; Par. [0001] – laser eye system for treating vitreous humor including ocular floaters) comprising:
(Fig. 1, # 40 – Z-adjust / Z scan device, 50 – scanning device) a three-dimensional scanner (Par. [0023] – using this system, a beam may be scanned in a patient’s eye in three dimensions: X, Y, Z.; Par. [0029-0030] – After passing through the z-adjust device 40, the beam 6 is directed to the x-y scan device by mirrors 46 & 48. X-Y scanning is achieved by scanning device 50);
(Fig. 1, # 102 – swept light source, i.e. first laser, 114 – OCT beam; Fig. 6) a first laser for imaging vitreous floaters (Par. [0034-0035] – OCT device includes a broadband or a swept light source 102; Par. [0078] – The OCT and/or the video camera system may be used to locate the vitreous floaters, and treatment plan is determined and executed to specifically target the floaters for treatment);
(Fig. 1, # 4 – UF light source, i.e. second laser) a second laser configured to emit pulses sufficient to disintegrate the vitreous floaters (Par. [0023] – ultrafast (UF) light source (e.g., femtosecond laser. The peak power of the focus spot is also sufficient to treat the vitreous humor, e.g. to treat floaters or liquify the vitreous humor; Par. [0078] – the laser focal spot may be scanned in a volume that includes the floaters to destroy or remove the floaters); and
(Fig. 1, # 34 – beamcombiner) one or more combining optics configured to direct a first light from the first laser and a second light from the second laser into the three-dimensional scanner (Par. [0028-0029] – Beamcombiner 34 reflects the UF beam 6 and transmits the OCT beam 114; Par. [0036] – once combined with the UF beam 6 subsequent to beamcombiner 34, OCT beam 114 follows the same path as UF beam 6 through the rest of the system. Both beams pass through the z-scan 40 and x-y scan 50 devices), the one or more combining optics configured to place a second focal point of the second laser within .01 μm of a second focal point of the second laser (It is noted that this limitation is implicitly always met since any laser would be considered aligned with itself.; Par. [0036] – In this way, OCT beam 114 is indicative of the location of UF beam 6. OCT beam 114 passes through the z-scan 40 and x-y scan 50 devices then the objective lens 58, contact lens 66 and on into the eye 68. – the focal points of the OCT beam 114 and UF beam 6 would be practically identical since the OCT beam 114 is indicative of the location of the UF beam 6).
Therefore, claim 11 is unpatentable over Wang, et al.
Regarding claim 12, Wang teaches the system of claim 11, wherein the three-dimensional scanner comprises a mirror driven by a resonant scanner (Par. [0047] – There are many possibilities for the configuration of the OCT interferometer, including time and frequency domain approaches, single and dual beam methods, swept source, etc., as described in U.S. Pat. Nos. 5,748,898; 5,748,352; 5,459,570; 6,111,645; and 6,053,613 (which are incorporated herein by reference.; In US5459570 (Swanson, et al.), it is explained that for very high speed scanning at high scan repetition rates that cannot be realized with servo-controlled constant velocity mechanical drives, resonantly (sinusoidal) driven mechanical actuators can be used to drive mirror 32. Swanson also explains that these actuators can be galvanometrically or electrodynamically driven at the resonant frequencies of the mechanical actuator system and are commercially available – Col. 8, lines 37-46).
Therefore, claim 12 is unpatentable over Wang, et al.
Regarding claim 13, Wang teaches the system of claim 12, wherein (Fig. 1, # 42 and 44) the three-dimensional scanner comprises one or more adjustable lenses (Par. [0029] – The x-adjust or Z scan device includes a Galilean telescope with two lens groups 42 and 44. Lens group 42 moves along the z-axis about the collimation position of the telescope. In this way, the focus position of the spot in the patient’s eye 68 moves along the z-axis as indicated. Alternatively, lens group 44 could be moved along the z-axis to actuate the z-adjust, and scan).
Therefore, claim 13 is unpatentable over Wang, et al.
Regarding claim 14, Wang teaches the system of claim 13, wherein (Fig. 1, # 52 and 54) the one or more adjustable lenses comprise one or more lenses mounted to an actuator (Par. [0030] – X-Y scanning is achieved by the scanning device 50 preferably using two mirrors 52 and 54 under the control of control electronics 300, which rotate in orthogonal directions using motors, galvanometers, or any other well known optic moving device).
Therefore, claim 14 is unpatentable over Wang, et al.
Regarding claim 15, Wang teaches the system of claim 13, wherein the one or more adjustable lenses comprises an electrically tunable optofluidic lens (Par. [0030] – X-Y scanning is achieved by the scanning device 50 preferably using two mirrors 52 and 54 under the control electronics 300 which rotate in orthogonal directions using motors, galvanometers, or any other well known optic moving device.; As evidenced by Nguyen in “Micro-optofluidic Lenses: A review”, optofluidic lenses are shown to be a well-known optic moving device, and are often used over solid lens systems for their advantage of not having to require the use of large actuators such as servo motors (Abstract). Nguyen also explains that microfluidic lenses are attractive as a candidate for miniaturization of imaging optics (Introduction)).
Therefore, claim 15 is unpatentable over Wang, et al.
Regarding claim 16, Wang teaches the system of claim 12, wherein (Fig. 1, # 34) the one or more combining optics comprise one or more beam splitters positioned to receive the first light from the first laser and the second light from the second laser (Par. [0006] – optical components including at least one beam splitter, configured to direct the laser beam and the imaging beam output by the scanning assembly and the illumination light to the objective lens assembly; Par. [0028] – Beamcombiner 34 reflects the UF beam 6 (and transmits both the OCT 114 and aim 202 beam).
Therefore, claim 16 is unpatentable over Wang, et al.
Regarding claim 17, Wang teaches the system of claim 16, wherein the one or more beam splitters comprise:
(Fig. 1, # 34) a first beam splitter configured to pass a first portion of the first light and direct a second portion of the second light to be parallel to the first portion (Par. [0006]; Par. [0028-0029] – Beamcombiner 34 reflects the UF beam 6 (and transmits the OCT beam 114); Par. [0036] – Once combined with the UF beam 6 subsequent to beamcombiner 34, OCT beam 114 follows the same path as UF beam 6 through the rest of the system).
Therefore, claim 17 is unpatentable over Wang, et al.
Regarding claim 18, Wang teaches the system of claim 17, wherein the one or more beam splitters comprise:
(Fig. 1, # 34 – beamcombiner, i.e. first beam splitter, 102 – swept light source, i.e. first laser, 126 – beamcombiner, i.e. second beam splitter, 128 – detection device, i.e. photodiode) a second beam splitter positioned between the first beam splitter and the first laser, the second beam splitter configured to direct a third portion of the first light reflected from the vitreous floaters onto a photodiode (Par. [0034]; Par. [0035] – beam combiner 126; Par. [0036] – Reflections and scatter off of structures within the eye (e.g., floaters) provide return beams that retrace back through the optical system (i.e., including second beam splitter 126), into connector 112, through coupler 104, and to OCT detector 128. These return back reflections provide OCT signals that are in turn interpreted by the system as to the location in X, Y, Z of UF beam 6 focal location).
Therefore, claim 18 is unpatentable over Wang, et al.
Regarding claim 19, Wang teaches the system of claim 18, further comprising (Fig. 1, # 118 – aperture, i.e. confocal pinhole filter) a confocal pinhole filter positioned between the second beam splitter and the photodiode (Par. [0035] – Following collimating lens 116 is aperture 118 which further modifies the resultant NA of the OCT beam. The diameter of aperture 118 is chosen to optimize OCT light incident on the target tissue and the strength of the return signal).
Therefore, claim 19 is unpatentable over Wang, et al.
Regarding claim 20, Wang teaches the system of claim 19, further comprising (Fig. 1, # 120 – polarization control element) a lens positioned between the second beam splitter and the confocal pinhole filter such that a focal point of the third portion of the first light is positioned at the confocal pinhole filter (Par. [0035] – Polarization control element 120 (i.e., lens), which may be active or dynamic, is used to compensate for polarization state changes which may be induced by individual differences in corneal birefringence, for example).
Therefore, claim 20 is unpatentable over Wang, et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
De Smedt, et al. (U.S. PGPub No. 2021/0338595)
Grant, et al. (U.S. PGPub No. 2013/0103010)
Swanson, et al. (U.S. Patent No. 5,459,570)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL TAYLOR HOLTZCLAW whose telephone number is (571)272-6626. The examiner can normally be reached Monday-Friday (7:30 a.m.-5:00 p.m. EST).
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/MICHAEL T. HOLTZCLAW/Examiner, Art Unit 3796