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 Group II (claims 24-35) in the reply filed on 6/5/2026 is acknowledged. Claims 1-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 1-23 are objected to because of the following informalities: The proper status identifier for these claims is “withdrawn”. Appropriate correction is required.
Claim 24 is objected to because of the following informalities: The limitation “each photodetector configured to detect an intensity of reflected light from the target in a difference selected wavelength band” should be “each photodetector configured to detect an intensity of reflected light from the target in a different selected wavelength band”. 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 24-35 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.
[Claim 24] The limitation “a computing device configured to couple with at least two photodetectors, each photodetector configured to detect an intensity of reflected light from the target in a difference selected wavelength band” is indefinite, as it’s unclear what is structurally required by this limitation. First and foremost, it is emphasized that only a computer device is positively required/recited and the photodetector is merely a functional limitation of the computing device, i.e. “a computing device configured to couple with at least two photodetectors”. Therefore, a photodetector is NOT required by the claims only a computing device configured to couple with at least two photodetectors. However, confusion arises when the claim then attempts to further limit each photodetector, but it’s unclear how this limitation further limits the computing device, as a photodetector is NOT required. Are the photodetectors actually required by the claimed scope or is merely a computing device that is configured to/capable of coupling to these particular photodetectors all that is required? For examination purposes, as long as the computing device is capable of coupling with two photodetectors, then it is capable of coupling with two photodetectors that are “configured to detect an intensity of reflected light from the target in a difference selected wavelength band”. Specifically, the examiner takes the position that the photodetectors are not required, and therefore any limitation related to further limiting these photodetectors are also not required. As long as the computing device is configured to couple with, i.e. capable of coupling with, the claimed photodetectors then the structural limitations of the claim is met.
MPEP 2114:
"[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). 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.
Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 and/or 35 U.S.C. 103 may be appropriate.
[Claim 24] The limitation “receive the reflected light intensity in at least two selected wavelength bands” is indefinite. Specifically, it’s unclear if the “at least two selected wavelength bands” refer to the previously recited “difference selected wavelength band” or if these are completely different/additional selected wavelength bands.
Claim Rejections - 35 USC § 102 and/or 35 USC § 103
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.
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 24-27 and 31-35 are rejected under 35 U.S.C. 102(a)(1) as anticipated by US 2016/0361120 to Brinkmann et al. or, in the alternative, under 35 U.S.C. 103 as obvious over Brinkmann in view of US 2008/0226029 to Weir.
[Claim 24] Brinkmann discloses a surgical laser system (Figs. 1-3) comprising:
a surgical fiber (shaft 203, Fig. 2 and Pars 0128-129; a waveguide 310 (e.g., an optical fiber), Fig. 3 and Par 0138) configured to receive light reflected by a target in a surgical treatment area (“the photoluminescence radiation emitted by the treatment site can be delivered back to through the one or more waveguides through the shaft 203 to the radiation-receiving device of the medical device” Par 0129; “the waveguide 310 can be configured to guide the emitted photoluminescence radiation from the distal tip of the shaft 308 back towards the handle 306” Par 0138); and
a computing device (controller 104, Fig. 1 and Par 0114; unit 301, Fig. 3; “the unit 301 can include a controller for processing a signal characteristic of the received photoluminescence radiation for detecting a type of bodily substance at the illuminated treatment site (e.g., to detect if a human stone is present at the illuminated treatment site)”) configured to couple with at least two photodetectors (“the radiation-receiving device 103 can include two or more optical detectors” Par 0120), each photodetector configured to detect an intensity of reflected light from the target in a difference selected wavelength band (see discussion above, in relation to the 112b indefiniteness rejection. Specifically, Brinkmann discloses a controller that is structurally configured to/capable of coupling with two photodetectors, specifically two photodetectors that detect an intensity of reflected light. Brinkmann explicitly teaches using two photodetectors and obtaining/detected the intensity values of wavelengths in different wavelength bands. Therefore, Brinkmann teaches all of the necessary structural elements to be capable of performing the claimed function. If applicant disagrees, see alternative 103 below) , and configured to:
receive the reflected light intensity in at least two selected wavelength bands (Figs. 7-12 and the related disclosure, e.g. Pars 0156-190, show/describe the reflected light intensity in at least two selected wavelength bands, i.e. receiving reflected/return photoluminescent light in the range of 550 nm to 800 nm. Of particularly emphasis are Pars 0182-0185 which make it clear that all wavelengths can be used or multiple wavelength ranges can be used for the evaluation/analysis. See step 1202 in Fig. 12);
generate optical data corresponding to the reflected light intensity (Figs. 7-12, e.g. steps 1202 and 1203 in Fig. 12 that require evaluating a spectrum of the received photoluminescent radiation and determining an intensity of the received photoluminescent radiation); and
identify the target as a treatment target (stone) or a non-treatment target (not stone) based at least in part on the optical data and a predetermined calibration based on at least two known targets (Pars 0180-0190; “determining that an intensity of the received photoluminescence radiation exceeds a predetermined threshold. If an intensity of the received radiation exceeds the predetermined threshold, it can be determined that the treatment site includes a human stone (e.g., a kidney stone or a bile stone). If the intensity of the received radiation does not exceed the predetermined threshold, it can be determined that the treatment site does not include a human stone”. Figs. 7-11 and Pars 0166-171, as well as Par 0185 make it clear that this identification is based on a predetermined calibration based on at least two known targets, e.g. “one or more reference photoluminescence spectra of human stones” Par 0185. Fig. 11a shows the photoluminescent spectra (solid lines) at least 30 different kidney stones, each of which can be considered a different target. Additionally or alternatively, Fig. 7 explicitly shows 5 targets, i.e. air, artificial stone, stone, renal calix and ureter).
Regarding the limitation “each photodetector configured to detect an intensity of reflected light from the target in a difference selected wavelength band”, as discussed above, it is the examiner’s position that because Brinkmann explicitly teaches using two photodetectors and detecting multiple/different wavelength bands, then inherently/implicitly Brinkmann is capable of performing the claimed function. However, if applicant disagrees, using at least two photodetectors where “each photodetector configured to detect an intensity of reflected light from the target in a difference selected wavelength band” is known/obvious in view of Weir. Specifically, in the same field of endeavor, Weir discloses the concept of using separate photodetectors for each detected wavelength (37, Fig. 4; at least Par 0022-28, in particular Par 0028). Therefore, it would have been obvious to modify the multiple photodetectors taught by Brinkmann to be specifically configured to analyze/detect a separate/different wavelength, as taught by Weir, as this is a known configuration of a similar laser endoscopic treatment device in order to detect multiple wavelengths reflected from tissue.
[Claim 25] It seems implicit/inherent that the computing device, i.e. controller, of Brinkmann is configured to perform the calibration, as it is seemingly the only structure capable of performing the evaluation/analysis necessary for the calibration, i.e. “controller 104 for processing the detection signal”. Since processing the detection signal is necessary/required for the calibration process, it seems inherent/implicit that the controller is the structure performing the calibration. If applicant disagrees, the examiner takes the position that it’s obvious to perform the calibration with the same device, particularly the controller, that is performing the medical procedure/treatment, as this is common sense/logical.
[Claim 26] Brinkmann discloses wherein at least one of generating the optical data and performing the calibration includes determining at least one ratio of a reflected light intensity of one selected wavelength band to a reflected light intensity of a different selected wavelength band (at least Pars 0159 and 0184).
[Claim 27] Brinkman discloses obtaining multiple reflected light intensity values from each known target of the at least two known targets; and establishing a threshold ratio value based at least in part on the multiple reflected light intensity values from each known target (Figs 7-11 and Pars 0184-185, e.g. “A spectrum of a received radiation can be compared to one or more reference photoluminescence spectra of human stones for human stone detection”, such a comparison is necessarily a ratio).
[Claim 31] The surgical laser system of claim 27, wherein generating the optical data includes determining the at least one ratio for the target in the surgical treatment area, and identifying the target comprises: comparing a ratio value of the at least one ratio for the target in the surgical treatment area to the threshold ratio value; and associating the target in the surgical treatment area with a known target of the at least two known targets based on the comparison (Pars 0184-185; “A spectrum of a received radiation can be compared to one or more reference photoluminescence spectra of human stones for human stone detection”. This comparison is necessarily a ratio).
[Claim 32] The surgical laser system of claim 31, further comprising: determining whether the known target is a treatment target; and in response to a determination that the known target is a treatment target, identifying the target as a treatment target, or in response to a determination that the known target is not a treatment target, identifying the target as a non-treatment target (“human stone detection can involve digitally classifying the received radiation based one or more parameters of the received radiation (in the classes “no stone” vs “stone”)” Pars 0187; “the techniques of the present disclosure can be used to avoid delivering ablation energy to bodily substances other than human stones” Par 0188).
[Claim 33] The surgical system of claim 24, wherein the light reflected from the target is broadband light and the different selected wavelength bands include wavelength bands selected from the list consisting of: about 400-410 nm, about 440-480 nm, about 460-480 nm, about 510-530 nm, about 540-560 nm, about 550-570 nm, about 570-580 nm, about 580-600 nm, about 600-620 nm, about 690-710 nm, about 740-760 nm, about 790-810 nm, about 920-940 nm, about 970-990 nm, and about 1150-1350 nm. Pars 0182-183 and Figs. 7-11 make it clear that the light reflected from the target, i.e. reflected/returning photoluminescent light, is broadband, e.g. 550 nm to 750 nm, and selected wavelength bands can include 532 nm, 587 nm or 590 nm, which reads on “about 510-530 nm” and “about 580-600 nm” (Pars 0156-159 and 0186)
[Claim 34] Brinkmann discloses a treatment laser (ablation device 101 configured to deliver ablation energy 110, Fig. 1; Pars 0097 and 0103), and the computing device is further configured to generate a control signal for controlling operation of the treatment laser based on the identification of the target (“Such controller may further display a result of the processing to the user in one or more of display elements 305, may prevent emission of the ablation energy 110 depending on the detected bodily substance type, or may cause ablation energy 110 to be emitted from ablation device 101 depending on the detected bodily substance type”; See also Pars 0114).
[Claim 35] The surgical system of claim 24, wherein the treatment target is a stone and the non-treatment target is tissue or a surgical component or a surgical treatment area medium (See Pars 0187-189, i.e. “no stone vs stone” and “the techniques of the present disclosure can be used to avoid delivering ablation energy to bodily substances other than human stones”. The “bodily substances other than human stones” is interpreted as a surgical treatment area medium).
Potentially Allowable Subject Matter
If applicant were to overcome the 112b rejection of claim 24, then claims 28-30 would be objected to as being dependent upon a rejected base claim, but would be potentially allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. It is emphasized that any amendments to address the 112b rejection will require further search and consideration, in view of the prior art. Therefore, these claims are not considered allowable until the 112b issues are resolved and the claims have been reevaluated in light of the amendments.
Conclusion
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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