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 with traverse of Group I (claims 1-10) and Species A (a first converging lens and a second diverging lens) in the reply filed on 2/17/2026 is acknowledged. The traversal is on the grounds that references cited by the examiner fail to teach the “lower then raise” intensity mechanism. This is not found persuasive because this is not a common/shared technical feature amongst all of the groups. Specifically, only group I recites this “lower then raise” intensity mechanism, therefore it is not a technical feature common/shared amongst all of the groups, and it does need to be addressed for unity of invention purposes. Therefore, the unity of invention restriction is proper, as the shared/common technical features amongst the groups are not special, based on the teachings of Neev and Goldenberg. Furthermore, even if all of the groups required this “lower then raise” intensity mechanism (which they currently do not), the prior art rejections of claim 1 (as detailed below) provide evidence that such a feature is not special and the unity of invention restriction would still be maintained.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-19 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Specifically, claims 11-19 and 23 were withdrawn by the applicant in their response filed 2/17/26 as being directed to the non-elected groups II and III. Additionally, claims 7-10 are withdrawn by the examiner in the current response as being directed to the unelected species/embodiments (B-E). Therefore, claims 1-6 are currently pending examination.
Claim Objections
Claim 1 is objected to because of the following informalities: “sub-100ps” should be “sub-100 picosecond”. Appropriate correction is required.
Claim Interpretation
Regarding the limitation “an optical fiber configured to transmit light pulses from a laser configured to output sub-100ps light pulses”, it is emphasized that a laser source that emits these sub-100ps light pulses is not required. Therefore, the prior art does not have to explicitly teach sub-100ps light pulses in order to read on the claim language. All that is required is an optical fiber that is capable of transmitting such sub-100ps light pulses. The examiner takes the position that any/all optical fibers, especially those in the medical field, are capable of providing such a function. "[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. (MPEP 2114).
Regarding the limitation “one or more optical elements configured to lower and then raise the intensity of the light pulses from the optical fiber”, it is noted that an optical element that causes a light beam to widen/expand/diverge inherently lowers the intensity of the beam and conversely, an optical element that causes a light beam to focus/converge/narrow inherently results in a beam. Therefore, any optical elements that first cause a beam to diverge/expand before focusing/converging the beam reads on the claimed limitation; see MPEP 2112 and 2114 regarding inherency.
Regarding the limitation “a focusing optics assembly configured to focus the light pulses output from the spacer to a peak power density of greater than 1012 W/cm2”, similar to the optical fiber limitation above, it is emphasized that a laser source is not currently required by the claims. It is also emphasized that the peak power density of an unclaimed/hypothetical laser depends on the energy of the laser (joules), the pulse duration (seconds) and the spot size/area of the laser beam (cm2). It is noted that the focusing optics ONLY control the spot size, and the rest of the parameters, i.e. laser energy and pulse duration, are decided by the laser source and various control mechanisms of the laser source. However, applicant’s claims do not require any particular laser source or control mechanisms that produce/generate a beam with a particular laser energy or pulse duration. Therefore, it is the examiner’s position that any focusing optic is capable of achieving the claimed peak power density, as this depends almost entirely on the laser source and control thereof (which are not claimed).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The current claim language of claim 1 and 6 combined requires that the one or more optical elements include 4 elements: 1. Spacer 2. Focusing optics assembly 3. First lens and 4. Second lens. This combination of elements is not supported. While the specification (Par 0024) supports a focusing optics assembly that includes a first and second lens, this is not what is claimed. The examiner recommends that applicant amend claim 6 to make it clear that the first and second lenses are the focusing optics assembly (not the one or more optical elements, as currently claimed).
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 1-6 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 1] The limitation “one or more optical elements” is indefinite, as it’s unclear how many optical elements this includes. Specifically, the one or more optical elements are recited as including two elements, i.e. a spacer and a focusing optics assembly. Therefore, it’s unclear how the one or more optical elements can ever include just ONE optical element, when seemingly claim 1 defines the optical elements as having at least two optics.
Regarding the limitation “wherein the one or more optical elements include: a spacer configured to cause divergence of the light pulses received through the optical fiber”, it is unclear if the claimed “spacer” is required to be an optical element, i.e. a physical/tangible structure that allows light to pass through or merely an open space/path, i.e. an absence of a physical structure. While the claims seem to define the spacer as an optical element, applicant’s own specification make it clear that the BRI of a spacer encompasses a distance or space where the beam is allowed to diverge (see Fig. 2 and element 23 in Fig. 4). Stated differently, based on applicant’s specification, a spacer does not require a structural element, but merely a defined optical path in which there is some space/distance between the optical fiber and focusing optics. This conflict between the claims and the specification causes confusion and indefiniteness issues, as it’s unclear if the spacer is required to be an optical element (as recited in the claims) are merely a space/path/distance between the fiber and focusing optics (as disclosed in the specification). For examination purposes, the examiner takes the position consistent with the specification that the claimed spacer does not have to be a physical/tangible/optical element and is broad enough to encompass a space/distance between the fiber and focusing assembly. Additionally, the examiner takes the position that any/all spaces allow for a beam to diverge/expand, as this is how light works when not confined; see MPEP 2112.
[Claim 6] This claim is indefinite, as it’s unclear if the first and second lenses are in addition to the previously recited spacer and focusing optics assembly, i.e. there are 4 required optical elements (spacer, focusing optics assembly, first lens and second lens) or if the first and second lenses further limit/define just the focusing optics assembly, i.e. there are 3 optical elements (spacer, first lens and second lens; where the first and second lens define the focusing optics assembly recited in claim 1). For examination purposes, the examiner interprets the first and second lenses to be part of the focusing optics assembly, as is consistent with applicant’s specification.
Claim Rejections - 35 USC § 102 and § 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.
Claims 1-4 are 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 US 2018/0049806 to Yu et al.
[Claim 1] A system (Figs. 3 and 9A-C; an enlarged version of Fig. 9A is reproduced below) comprising:
an optical fiber (112) configured to transmit light pulses from a laser configured to output sub-100ps light pulses (the optical fiber is structurally capable of transmitting the claimed sub-100 ps light pulses; MPEP 2114);
an optical fiber endcap (fiber cap 114A) device comprising one or more optical elements configured to lower and then raise the intensity of the light pulses from the optical fiber (as will be explained below, the spacer causes the beam to diverge and therefore lower the intensity, while the molded reflective surface 130B causes the beam to converge and therefore raise the intensity; Fig. 9A) and create an optical pattern from the light pulses of the optical fiber (Fig. 9C shows an elliptical pattern. Additionally, Par 0054 makes it clear that other patterns are contemplated, including a line.);
wherein the one or more optical elements include:
a spacer (the portion of cap body 140B that exists between the distal end of the optical fiber 112 and the molded spherical plano convex surface 130B is interpreted as the spacer) configured to cause divergence of the light pulses received through the optical fiber (laser energy 106B is clearly shown diverging through this portion of the cap body, i.e. spacer; Par 0079 and Fig. 9A); and
a focusing optics assembly (molded spherical plano convex surface 130B) configured to focus the light pulses output from the spacer (laser energy 106C is clearly shown converging/focused after interacting with the focusing optics assembly 130B; Par 0079 and Figs. 9A-B) to a peak power density of greater than 1012 W/cm2 (As discussed above, the examiner contends that the focusing assembly of Yu is structurally capable of providing the claimed peak power density, as this is highly dependent on the laser energy and pulse duration of the laser source, which is not claimed. If applicant disagrees; see alternative 103)
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Regarding the claimed peak power density, the examiner contends that the focusing optics assembly taught by Yu are inherently capable of such a peak power density, depending on the laser energy and pulse duration generated by the unclaimed/hypothetical laser source. Specifically, the only aspect of a peak power density that can be controlled by the focusing optics is the spot size. Therefore, based on the fact that Yu explicitly teaches “Thus, the radius of curvature of the molded spherical plano convex (convex relative to the cavity 133B) reflective surface 130B of FIGS. 9A and 9B can be designed to control the degree that the discharged laser energy 106C is focused or converges in the X and Z directions such that the desired laser beam profile 300B size is achieved” (Par 0079), it’s clear that any spot size/area is encompassed/contemplated/suggested or at the very least obvious. Therefore, it would have been obvious to one of ordinary skill in the art to modify the focusing optics assembly taught by Yu to choose/try any spot size that achieves the desired peak power density.
[Claim 2] Yu discloses that the entire device (probe 110) is an endoscope (Par 0047). While Yu is silent to the diameter of this probe/endoscope, it has been held that changes in size/proportion are obvious, specifically “the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device”; MPEP 2144.04. Therefore, it would have been obvious to change the size of the diameter of the endoscope taught by Yu to be less than 7mm. Additionally or alternatively, it would be obvious to try/choose a diameter that is less than 7mm as this is a known, typical or normal size for similar endoscopes. If applicant disagrees, see alternative 103 below.
[Claim 3] As discussed above, Par 0054 of Yu makes it clear that the optical pattern can be a line; See Also Par 0080 and Fig. 10C.
[Claim 4] Similar to the explanation of claim 1 above, the examiner takes the position that the spacer is structurally capable of providing such a peak power density, as this depends on numerous factors including, the laser energy, the pulse duration, the tissue/target being treated (and the optical damage threshold thereof). See MPEP sections 2112, 2114 and 2115, regarding inherency, functional language and materials worked upon by an apparatus.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yu as applied to claim 1 above, and further in view of US 2016/0157697 to Arai et al.
As discussed above, Yu discloses that the entire device/probe (110) is an endoscope, but is silent to the exact diameter of the endoscope. However, in the same field of endeavor, Arai discloses that similar endoscopes typically have an outer diameter of 5.9 mm or less (Par 0223). Therefore, it would have been obvious to modify the outer diameter of the endoscope taught by Yu to have a diameter of 7 mm or less, as this is a typical/known size for similar endoscopes for light treatment.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yu as applied to claim 1 above, and further in view of US 2012/0302828 to Toledo-Crow et al.
Yu is discussed above, but fails to explicitly disclose an actuator that rotates or translates the optical elements or fiber endcap in order to achieve a desired scanning pattern. However, in the same field of endeavor, Toledo-Crow discloses a similar endoscopic light treatment/ablation device that includes an end cap (head section; Fig. 9A) that includes an actuator (motor 930) that rotates an optical element (prism 915) within the endcap/head to obtain the desired scanning/ablation pattern (Pars 0065 and 0083). Therefore, it would have been obvious to one of ordinary skill in the art to modify the endoscopic light treatment/ablation device taught by Yu to include the actuator and scan controller taught by Toledo-Crow, as this is combining prior art elements according to known methods to yield predictable results and more specifically as a known way to provide a similar endoscopic treatment device with the ability to control the scan/ablation pattern of the treatment laser. This could also be considered automating a manual activity, as manual rotation/translation of the endoscopic probe taught by Yu would provide the same results.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yu as applied to claim 1 above, and further in view of US 2023/0136630 to Cai et al.
Yu is discussed above, including an embodiment (Figs. 10A-C) that “expands or diverges the discharged laser energy 106C in only a single direction…resulting in a large, long, narrow ellipse (line like)” (Par 0080). This is the exact same effect claimed by applicant, focusing a beam into a line and then expanding the line, however Yu discloses that this effect is achieved by a single optical element (133C) and not two lenses, as claimed. This is considered an obvious separation of parts, and it would be obvious to separate this effect/functionality into two separate lenses (instead of one optical element), specifically one lens that focuses the beam into a line and another that enlarges/expands this line. This position is further supported by Cai that discloses such an effect is known to be achieved by two cylindrical lenses (at least Par 0055-62, particularly Par 0062). Inherently, a cylindrical lens focuses a beam into a line, and the fast-axis and slow-axis are perpendicular to each other. Therefore, it would have been obvious to substitute the optical element of Yu for two lenses, as taught by Cai or as a separation of parts, as a simple substitution of one known optical element for another (specifically two lenses) to obtain predictable results (focus a line and then expand that line).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The claimed arrangement of an optical fiber and an optical fiber end cap that lowers (via a spacer) and then raises (via focusing optics) the intensity of the laser beam is known:
US 2003/0219202 to Loeb (Figs. 1-8)
US 2011/0141759 to Smith (Figs. 1-3)
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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