The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot in view of the new grounds of rejection.
New prior art was discovered through additional searching and it applied in the rejections below. Unfortunately, this new prior art teaches subject matter that was previously indicated as allowable; therefore, this action is non-final.
Claim Rejections - 35 USC § 112
Second Paragraph
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.
Claim 4 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 4 is rejected because it is unclear if “the pulse width of the treatment light is adjusted as a pulse width of 0.1 ms or more and 60ms or less” means that the pulse widths are instantaneously changed to a value within the range of 0.1 – 60 ms, or if this means that the pulse width is adjusted by a value of 0.1 – 60 ms incrementally for each change that is made.
Claim Rejections - 35 USC § 102
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bean et al. (US Patent Pub. No. 2014/0121631).
Bean teaches a light treatment apparatus (see Figure 1) for treating vascular lesions (note that the device of Bean is used for treating the skin, which includes vasculature), the apparatus comprising:
A light generating unit (see Figure 2 and paragraph 54, “the laser system 10 includes a light emitting device or laser engine 7); and
A setting unit configured to set a pulse pattern of treatment light generated in the light generating unit (see controller 9 in Figure 2, see paragraph 56 which teaches that the controller drives the laser engine by controlling various beam parameters; also paragraph 62 states that “In step 102, the user may now press the power button 4 such as a power/program select button 4 to change the power/program that will be used once the laser is in operation”),
Wherein a single pulse mode for irradiating treatment light comprising a single pulse (see Figure 15, which shows a constant-wave form (i.e., “a single pulse”) having a varied intensity), and a sub-pulse mode for irradiating treatment light comprising a plurality of sub-pulses are set through the setting unit (see paragraphs 8-9 and 20 for general discussion of pulses and parameters, see Figures 7-14 for illustration of various pulse sequence modes)
The setting unit is configured to adjust the pulse width of the treatment light (see paragraph 20, which states that “The pulsed beam parameters are selected from the pulse width…” and “The system 10 also includes power button 4 for selecting the power level and/or program sequence...” – see paragraph 52, noting that changing the sequence results in adjustments to the pulse width), and
A pulse width section selectable in the sub-pulse mode comprises a first pulse width section where the pulse width is adjusts as sub-pulses that make up a treatment light pulse is changed in number (see paragraph 80 which states that “total number of pulses” is one of multiple parameters that may be changed, see Figure 11 which shows decreasing pulse width across six (6) total pulses, as compared to Figures 9 or 10 which show twenty (20) and nine (9) pulses applied, respectively), and a second pulse width section where the pulse width is adjusted as an off-time between the sub-pulses is changed while maintaining the number of sub-pulses that make up the treatment light pulse (see Figure 10, which shows an increase in the off-time between the pulses, with sets of three pulses having a same amount of off-time therebetween, followed by another three pulses having a same, but increased off-time therebetween, and followed by a third set of three pulses having an even longer off-time therebetween). Note also that Bean teaches that multiple parameters may be changed in a single protocol; Figure 12 illustrates changes to both pulse width and to the off-time between pulses, while in Figure 13 the pulse width decreases as time progresses, and spacing between pulses (i.e., off-time) increases as time progresses, amongst other changes.
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bean.
Bean is described above with respect to claim 1. It is noted that claim 4 is unclear for the reasons addressed above in the rejection under 35 USC 112(b). For purposes of this rejection, it is assumed that claim 4 means that the pulse width may be instantaneously changed to a value within 0.1 – 60 ms.
Bean teaches multiple potential operating parameters in Tables 1-4. It can be seen in these tables that the “Pulse Width” variable is 5 ms in each, which is within the range of 0.1 – 60 ms as claimed. Bean teaches that its system provides for “maintaining the temperature in the target spots within the desired heating temperature range by controlling, in pulses or continuously, at least one beam parameter including an energy intensity, a pulse width, or a time delay between pulses. One or more of the beam parameters change throughout the application of the laser energy” (see paragraph 19, emphasis added). Therefore, Bean teaches a system that configured to modify the pulse width for maintaining the temperature of the tissue area being treated, and positively recites pulse width operating parameters within the range claimed. While Bean does not explicitly teach that the change to these parameters is from 5 ms to some other value within 0.1 – 60 ms, it is clear that Bean is capable of changing its pulse width to 5 ms. Assuming this does not teach the inherency of required to reject claim 4, then it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USQ 233 (see MPEP 2144.05(II)(A)). As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the changing of the pulse width by Bean would be to other lengths of time generally close to the operating parameter explicitly taught (i.e., 5 ms), such that it would be capable of being changed to another pulse within that is within the range of 0.1 – 60 ms for either a continuous mode (as shown in Figure 15) or for any of the pulsed modes shown in Figures 7-14.
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.
Claims 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Bean alone.
Regarding claim 6, Bean is described above with respect to claim 1. It is re-iterated that Figure 12 illustrates a sequence in which pulse width and the off-time both vary as time progresses. It is also noted that “The controller of the control board 9 provides for the delivery of optical laser energy to the target spot of skin in the form of a group of pulses, using a combination of pulsed beam parameters selected from laser power, pulse width, time delay between pulses, and total number of pulses” (see paragraph 80). As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that the number of pulses shown in Figure 12 could be changed, such as removing the last pulse which would result in a pulse train that is as follows:
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As shown above, such a pulse train includes three initial pulses that would relate to a first pulse width section and three subsequent pulses that would relate to a second pulse width section, which reads on the claim. Additionally, it is noted that the claim is an apparatus claim, and the system taught by Bean is fully capable of meeting the requirements of the claim based on the teachings of how the system of Bean works and functions.
Additionally, it is noted that claims 1 and 6 are apparatus claims, and Section 2114(II) of the MPEP states (with emphasis in the original), “’Apparatus 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).” Also, Section 2114(I) of the MPEP states, “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). … If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Since Bean teaches that “The controller of the control board 9 provides for the delivery of optical laser energy to the target spot of skin in the form of a group of pulses, using a combination of pulsed beam parameters selected from laser power, pulse width, time delay between pulses, and total number of pulses” (see paragraph 80), Bean is capable of performing the functions as recited in claim 6.
Regarding claim 7, it is re-iterated that Bean teaches that the number of pulses may be changed, and also that the time delay between pulses may be changed (see paragraph 80). Additionally, Figure 13 illustrates a pulse sequence in which there is a first pulse width section having five (5) pulses (having a decreasing amplitude and an increasing off-time therebetween), followed by a third pulse width section having four (4) pulses (for which the off-time therebetween has been changed to be a set amount amongst therebetween). Additionally, it is noted that claims 1 and 7 are apparatus claims, and Section 2114(II) of the MPEP states (with emphasis in the original), “’Apparatus 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).” Also, Section 2114(I) of the MPEP states, “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). … If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Since Bean teaches that “The controller of the control board 9 provides for the delivery of optical laser energy to the target spot of skin in the form of a group of pulses, using a combination of pulsed beam parameters selected from laser power, pulse width, time delay between pulses, and total number of pulses” (see paragraph 80), Bean is capable of performing the functions as recited in claim 7.
Regarding claim 8, it is noted that claims 1, 7 and 8 are apparatus claims, and Section 2114(II) of the MPEP states (with emphasis in the original), “’Apparatus 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).” Also, Section 2114(I) of the MPEP states, “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). … If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Since Bean teaches that “The controller of the control board 9 provides for the delivery of optical laser energy to the target spot of skin in the form of a group of pulses, using a combination of pulsed beam parameters selected from laser power, pulse width, time delay between pulses, and total number of pulses” (see paragraph 80, emphasis added), Bean is capable of performing the functions as recited in claim 8.
Regarding claim 9, it is noted that the intention of the changing of the pulse parameters by Bean is to maintain a specific temperature within the treated tissue. It is clear from the figures showing pulses (i.e., Figures 7-14) that as time progresses there is a decreased energy delivery to the treatment site(s), whether it be due to decreasing amplitudes, or increased spacing between pulses, etc. Additionally, it is noted that claims 1 and 9 are apparatus claims, and Section 2114(II) of the MPEP states (with emphasis in the original), “’Apparatus 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).” Also, Section 2114(I) of the MPEP states, “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). … If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Since Bean teaches that “The controller of the control board 9 provides for the delivery of optical laser energy to the target spot of skin in the form of a group of pulses, using a combination of pulsed beam parameters selected from laser power, pulse width, time delay between pulses, and total number of pulses” (see paragraph 80), Bean is capable of performing the functions as recited in claim 9.
Regarding claim 10, it is noted that claims 1 and 10 are apparatus claims, and Section 2114(II) of the MPEP states (with emphasis in the original), “’Apparatus 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).” Also, Section 2114(I) of the MPEP states, “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). … If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Since Bean teaches that “The controller of the control board 9 provides for the delivery of optical laser energy to the target spot of skin in the form of a group of pulses, using a combination of pulsed beam parameters selected from laser power, pulse width, time delay between pulses, and total number of pulses” (see paragraph 80, emphasis added), Bean is capable of performing the functions as recited in claim 10. Additionally, it is noted that discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USQ 233 (see MPEP 2144.05(II)(A)). Finally, Bean teaches that “the period of time depends on the specific treatment”, which illustrates that Bean acknowledges that the time periods within a treatment are dependent upon factors such as the tissue being treated, the outcomes desired, the temperatures required for the achieving the outcomes, etc., and that “it will be understood by those skilled in the art that various changes in form and details may be made therein without departing from the scope of the invention” (see paragraph 101).
Regarding claim 11, it is noted that claims 1, 10 and 11 are apparatus claims, and Section 2114(II) of the MPEP states (with emphasis in the original), “’Apparatus 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).” Also, Section 2114(I) of the MPEP states, “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). … If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Since Bean teaches that “The controller of the control board 9 provides for the delivery of optical laser energy to the target spot of skin in the form of a group of pulses, using a combination of pulsed beam parameters selected from laser power, pulse width, time delay between pulses, and total number of pulses” (see paragraph 80, emphasis added), Bean is capable of performing the functions as recited in claim 11.
Regarding claim 12, it is noted that the intention of the changing of the pulse parameters by Bean is to maintain a specific temperature within the treated tissue. It is clear from the figures showing pulses (i.e., Figures 7-14) that as time progresses there is a decreased energy delivery to the treatment site(s), whether it be due to decreasing amplitudes, or increased spacing between pulses, etc. Specifically, Figure 13 shows two initial pulses which will clearly deliver a steady energy, where the remaining pulses shown in Figure 13 will deliver a decreased energy due to both lower amplitudes and increased off-time. Additionally, it is noted that claims 1, 10-11 and 12 are apparatus claims, and Section 2114(II) of the MPEP states (with emphasis in the original), “’Apparatus 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).” Also, Section 2114(I) of the MPEP states, “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). … If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Since Bean teaches that “The controller of the control board 9 provides for the delivery of optical laser energy to the target spot of skin in the form of a group of pulses, using a combination of pulsed beam parameters selected from laser power, pulse width, time delay between pulses, and total number of pulses” (see paragraph 80), Bean is capable of performing the functions as recited in claim 12.
Regarding claim 13, it is noted that claims 1 and 10 are apparatus claims, and Section 2114(II) of the MPEP states (with emphasis in the original), “’Apparatus 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).” Also, Section 2114(I) of the MPEP states, “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). … If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Since Bean teaches that “The controller of the control board 9 provides for the delivery of optical laser energy to the target spot of skin in the form of a group of pulses, using a combination of pulsed beam parameters selected from laser power, pulse width, time delay between pulses, and total number of pulses” (see paragraph 80, emphasis added), Bean is capable of performing the functions as recited in claim 13.
Regarding claim 14, it is noted that the intention of the changing of the pulse parameters by Bean is to maintain a specific temperature within the treated tissue. It is clear from the figures showing pulses (i.e., Figures 7-14) that as time progresses there is a decreased energy delivery to the treatment site(s), whether it be due to decreasing amplitudes, or increased spacing between pulses, etc. Specifically, Figure 13 shows two initial pulses which will clearly deliver a steady energy, where the remaining pulses shown in Figure 13 will deliver a decreased energy due to both lower amplitudes and increased off-time. Additionally, it is noted that claims 1, 10, 13 and 14 are apparatus claims, and Section 2114(II) of the MPEP states (with emphasis in the original), “’Apparatus 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).” Also, Section 2114(I) of the MPEP states, “Features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). … If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.” Since Bean teaches that “The controller of the control board 9 provides for the delivery of optical laser energy to the target spot of skin in the form of a group of pulses, using a combination of pulsed beam parameters selected from laser power, pulse width, time delay between pulses, and total number of pulses” (see paragraph 80), Bean is capable of performing the functions as recited in claim 14.
Conclusion
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/JAMES KISH/ Primary Examiner, Art Unit 3792
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