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 .
Response to Arguments
Applicant's arguments filed 11/21/2025 have been fully considered but they are not persuasive.
35 U.S.C. § 103 Rejection
Applicant makes the following arguments:
Gooding fails to teach “a window sealingly mounter to the upper edges of the inner and outer side walls so as to close the distal end of the ring”.
Gooding teaches the focusing lens being fixed to the “top-portion” not the “bottom-portion”.
Gooding teaches away from sealing the focusing lens to the bottom portion in col. 13, lines 31-47 by “explaining that it is advantageous to have the coupling liquid in contact with the external environment”.
Regarding argument (i), Examiner respectfully disagrees. Gooding teaches the distal surface of the focusing lens element “directly interfacing with the liquid layer” (FIG. 5C; col. 12, lines 32-48). As mentioned in paragraph 17 of the Non-Final Rejection (filed on 08/22/2025) the ring is defined by Examiner as the region extending from marker 178 to marker 144. Examiner asserts that FIGS. 5A-5C show the distal end of the focusing element (178) sealingly mounted to the upper edges of the inner and outer side walls, closing a distal end (end closest to 178) of the ring.
Regarding argument (ii), Examiner acknowledges that the patient interface illustrated in FIGS. 5A-5C illustrates the optical element being “fixed to the top or proximal portion of the patient interface”. Examiner asserts that the location in which the optical element is fixed is irrelevant given that the embodiment shown in (FIGS. 5A-5C, i.e., where the optical element is fixed to the top or proximal portion) still discloses “a window sealingly mounted to the upper edges of the inner and outer side walls so as to close the distal end of the ring”. Examiner notes that Gooding further discloses optionally fixing the optical element (92) to the bottom, or distal portion (148) of the patient interface (col. 12, lines 54-56).
Regarding argument (iii), Examiner respectfully disagrees. As discussed above, Gooding discloses optionally mounting the focusing lens to the bottom or distal portion (148) of the patient interface (col. 12, lines 54-56). Therefore, Gooding does not teach away from one of ordinary skill in the art from sealing the focusing lens to the bottom portion. Examiner asserts that the “advantages” described by Applicant are unrelated to the placement of the focusing lens element. As described in Gooding, the described “advantages” are a consequence of the access features (165; col. 13, lines 28-47).
Applicant makes the following arguments:
Gooding fails to teach a window “which defines an aspiration chamber with the perforated disc, the inner side wall and the outer side wall”. Moreover, Gooding teaches a groove which defines a vacuum channel.
Gooding fails to teach “the window defines a central working housing with the inner side wall”. To the contrary, Gooding teaches that the liquid layer is “open to the external environment”
Fig. 7O does not illustrate an assembly where the bottom portion comprises a perforated disc. Furthermore, one of ordinary skill in the art “could not obtain the invention” even by combining the embodiments illustrated in FIGS. 5A-C with FIG. 7O.
Regarding point (iv), as discussed in the Non-Final Rejection Examiner acknowledges that the embodiment shown in Gooding FIGS. 5A-5C alone alone teaches a window which defines an aspiration chamber with the inner side wall and the outer side wall. Examiner asserts, as described in the Non-Final Rejection, that the modification of Gooding with the perforated disc shown in FIG. 7O would yield “wherein the window defines a peripheral aspiration chamber with the perforated disc, the inner side wall and the outer side wall”, as required by claim 1. Regarding applicant’s assertion that Gooding teaches a groove which defines a vacuum channel. Examiner asserts that while Gooding may call the “aspiration chamber” a vacuum channel, the vacuum chamber of Gooding is functionally equivalent to Applicant’s aspiration chamber in that is allows for the generation of a vacuum in the space created by the inner side wall and the outer side wall (Applicant specification [0050], Gooding col. 13, lines 52-62).
Regarding point (v), Examiner respectfully disagrees. As shown in FIG. 5C, the distal end of the focusing element (178) works together with the inner side wall to form a central working housing. Examiner further notes that Gooding’s discussion about the “liquid layer being open to the external environment” is unrelated to the central working housing and is instead made in reference to the access features (165).
Regarding argument (vi), Examiner respectfully disagrees. Examiner asserts that FIG. 7O of Gooding discloses a perforated disc (246) with through lumens (245) that extend between the lower edges of the inner and outer side walls (FIG. 7M-7N, 246 is located between the inner and outer side walls). Regarding Applicants argument that one of ordinary skill in the art “could not obtain the invention as defined in claim 1”, Examiner respectfully disagrees. As discussed above, Gooding discloses a double walled portion, window and an aspiration channel. Examiner asserts that the alternative embodiment of Gooding is only being relied on for the perforated disc (246) not the entire assembly depicted in FIG. 7O.
Applicant makes the following arguments:
Raski does not describe “a gel block removably mounted in a working housing”. Moreover, Raski does not teach or suggest that such gel can be a block able to slide along a wall.
In Raski the viscoelastic substance is always a fluid since said viscoelastic substance is input through an input port.
Regarding argument (vii), Examiner respectfully disagrees. As discussed in Raski the viscoelastic substance can be a gel [0070] that is inserted through an input port and optionally removed via output port 124. Examiner further asserts that the block of Raski is removable, via detachment of the contact module (FIG. 6F: 120’).
Regarding argument (viii), Examiner respectfully disagrees. By definition a viscoelastic substance is not purely a fluid but rather a material that combines both viscous and elastic properties (https://en.wikipedia.org/wiki/Viscoelasticity). Examiner asserts that just because a viscoelastic substance is delivered through an input port does not imply that the viscoelastic substance is a fluid. Raski alone is evidence of this as the viscoelastic substance is not limited to a fluid but can include a gel, cream, film, elastic material or a viscous material [0095].
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.
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 1-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Gooding et al. (US 9,636,257) in view of Raksi et al. (US 2011/0319873).
In re claim 1, Gooding discloses a coupling interface between a laser source and a tissue to be treated (abstract; FIG. 5C) that wherein said coupling interface comprises:
a ring (section of device ranging from 178 to 144) which has a proximal end (end close to 144) configured to contact the tissue to be treated (94) and an opposite distal end (end close to 178), and which includes:
a double-walled partition (partitions surrounding 170) which has:
an inner side wall (FIG. 5C (left side): portion to the right of 170, FIG. 5C (right side): portion to the left of 170 (indicated by horizontal marker line)) which includes an upper edge (edge closest to distal end) and a lower edge (edge closest to proximal end), and
an outer side wall (FIG. 5C (left side): portion to the left of 170, FIG. 5C (right side): portion to the right of 170 (indicated by horizontal marker line)) which includes an upper edge (edge closest to distal end) and a lower edge (edge closest to proximal end),
wherein the lower edge of the inner side wall is closer to the distal end than the lower edge of the outer side wall (apparent as lower edge of the outer side wall extends further in the proximal direction than the lower edge of the inner side wall), and
wherein the upper edges of the inner and outer side walls are closer to the distal end than the lower edges of the inner and outer side walls (FIG. 5C)
a window (92; col. 12, lines 32-36: “focusing lens element”) sealingly mounted to the upper edges of the inner and outer side walls so as to close the distal end of the ring (window meets distal end of ring at interface 178)
wherein said window is transparent to a laser beam generated by the laser source and (col. 10, lines 29-32; Examiner notes cited section describes focusing element 66, however as disclosed by Gooding this element is similar to 92),
wherein
the window defines a peripheral aspiration chamber (space created by aspiration channel 170) with the inner side wall and the outer side wall (FIG. 5C), and
the window defines a central working housing (spaced created by inner side wall that is filled with contact member 172) with the inner side wall, and
an aspiration channel (vertical line extending from 170 on the right side of FIG. 5C) extending between inside and outside faces of the outer side wall, so as to open into the aspiration chamber (FIG. 5C),
wherein the aspiration channel is connected to an aspiration module (154) for allowing the generation of a vacuum in an interior space defined by the aspiration chamber (col. 13, lines 56-62),
a contact member (172) removably mounted in the working housing (apparent as contact member is comprised of fluid which can be removed i.e., drained (col. 13, lines 35-40)),
wherein said contact member is able to slide along the inner side wall (apparent as contact member is comprised of fluid (col. 12, lines 39-41)) of the double partition and has:
a side flank (sides of 172) with a shape complementary to the shape of the inner side wall, wherein the side flank is in contact with an inside face of the inner side wall (FIG. 5C),
a substantially planar circular upper base (face of 172 by 178), the upper base is in contact with the window (FIG. 5C);
a lower base (face of 172 closest to 94), wherein the lower base is configured to be in-contact with the tissue to be treated (FIG. 5C).
Gooding does not disclose
a perforated disc which extends between the lower edges of the inner and outer side walls, wherein the perforated disc includes through lumens,
the window defines a peripheral aspiration chamber with the perforated disc, the inner side wall and the outer side wall,
the contact member being a gel block
In another embodiment Gooding discloses a perforated disc (FIG. 7O: 246) with through lumens (254) that extend between the lower edges of the inner and outer side walls (FIG. 7M-7N; 246 is located between the inner and outer side walls).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical coupling interface to include a perforated disc, as taught by the embodiment of Gooding. One would have motivated to make this modification because the addition of a perforated disc can help prevent localized migration or distension of the eye tissue (Gooding: col. 16, lines 52-59). It is noted that such a modification would yield “the window defines a peripheral aspiration chamber with the perforated disc, the inner side wall and the outer side wall” as required by the claim.
Regarding the limitation: “gel block”
Raski discloses an analogous optical coupling interface (FIG. 6F: 100’) disposed between a laser source (10’) and an eye (20). Raski further discloses the optical coupling interface having a contact member comprised of a viscoelastic substance (121’). Raski further discloses the viscoelastic substance being either a fluid, a liquid, a gel, or another viscous material [0006].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the contact member taught by Gooding to be a gel block, as taught by Raski. One would have been motivated to make this modification because gel and fluids are interchangeable viscoelastic mediums, as evidenced by Raski. Moreover, it would have been obvious to one of ordinary skill in the art to choose the type of contact member (i.e., gel, liquid, etc.) that would best meet their specific needs.
In re claim 2, the proposed combination yields (all mapping directed to Gooding)
wherein the height of the gel block is substantially equal to the height of the inner side wall of the double-walled partition (FIG. 5C; apparent as inner side wall defines the space in which the gel block is disposed).
In re claim 3, the proposed combination yields (all mapping directed to Gooding)
wherein the double-walled partition and the gel block are cylindrical (FIG. 5C), and
wherein the diameter of the gel block is substantially equal to the diameter of the inner side wall of the double-walled partition (FIG. 5C; apparent as the inner side wall defines the space in which the gel block is disposed).
In re claim 4, the proposed combination yields (all mapping directed to Gooding)
wherein the lower base of the gel block is concave (FIG. 5C), and
Regarding the limitations :
wherein the distance between the upper base and the lower base:
ranges between 1 millimetre and 2.5 millimetres at the centre of the lower base,
ranges between 4.5 and 6 millimetres at the periphery of the lower base.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to make the distance between the upper and lower base range between 1 and 2.5 millimeters at the center of the lower base and range between 4.5 and 6 millimeters at the periphery of the lower base. One would have been motivated to make this modification since 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 USPQ 233.
In re claim 5, the proposed combination yields (all mapping directed to Gooding)
wherein the lower base of the gel block is concave (FIG. 5C), and
Regarding the limitation “wherein the radius of curvature of the lower base ranges between 6.5 and 8.5 millimetres”, it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the radius of curvature of the lower base range between 6.5 and 8.5 millimeters. One would have been motivated to make this modification since 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 USPQ 233.
In re claim 6, the proposed combination yields (all mapping directed to Gooding)
wherein the height of the outer side wall is greater than the height of the inner side wall so that the lower edge of the inner side wall is closer to the window than the lower edge of the outer side wall (FIG. 5C; lower edge of the outer wall extends further toward the proximal end than the lower edge of the inner wall, making the lower edge of the inner wall closer to the window), and
wherein the perforated disc connecting the lower edges of the inner and outer side walls has a substantially frustoconical shape (FIG. 7S-7T) so that the axes of the lumens are oriented towards a longitudinal axis of the ring (FIG. 7O-7Q: where the “longitudinal” axis is the imaginary vertical axis running through the eye).
In re claim 8, the proposed combination yields
wherein the ring further comprises a frustoconical flange (portion starting from 164 extending to distal end of the ring) open at its largest diameter rim (FIG. 5C), and
wherein said flange being is connected to the upper edge of the outer side wall by its smallest diameter rim (flange meets the upper edge of the outer side wall at the distal end of the ring where the diameter of the rim is the smallest).
In re claim 9, the proposed combination yields (all mapping directed to Gooding)
wherein the ring further comprises an annular brim integral with the largest diameter rim (FIG. 5C: brim would be the top flat portion near marker 164), and
wherein said brim extends radially outwards (FIG. 5C) and includes a flexible layer (FIG. 7E: 188; col. 15, lines 61-65: “upper seating seal”) on its face opposite to the flange.
The proposed combination does not yield
the flexible layer being made of rubber
Regarding the limitation “rubber”, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the flexible layer out of rubber since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use or purpose. MPEP 2144.07
In re claim 10 the proposed combination yields (all mapping directed to Gooding)
wherein the double-walled partition, the flange, and the annular brim are in one piece (FIG. 5C: indicated by negatively sloped diagonal stripes starting from the brim extending through both the flange and double-walled portion).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Gooding et al. (US 9,636,257) in view of Raksi et al. (US 2011/0319873) in view of Preuss (US 8,623,001).
In re claim 7, the proposed combination does not yield
wherein the surface area of the perforated disc covered by the through lumens is greater than the surface area of the perforated disc not covered by the through lumens.
Preuss discloses an analogous contacting interface for use during ophthalmic surgery (FIG. 3, FIG. 4; abstract). Preuss further discloses the contacting interface including a perforated disc (43) covered with lumens (46). As shown in FIG. 3, the surface area of the perforated disc with lumens is greater than the surface area of the disc without.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the perforated disc disclosed by Gooding to have wherein the surface area of the perforated disc covered by the through lumens is greater than the surface area of the perforated disc not covered by the through lumens, as taught by Preuss. One would have been motivated to make this modification because the appropriate number of lumens may vary according to the conditions of manufacture (Preuss: col. 2, lines 63-65).
Additionally, at the time the instant application was filed it would be obvious to try to provide wherein the surface area of the perforated disc covered by the through lumens is greater than the surface area of the perforated disc not covered by the through lumens. Furthermore, when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product was not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421, 82 USPQ2d at 1397, especially since the claimed surface area of the perforated disc covered by through lumens is not disclosed as being crucial or unexpected. Further, a person of ordinary skill in the art would consider a perforated disc where the surfaced area covered by through lumens is greater than the surface area not covered by through lumens, since there are a finite number of lumens that can be placed on the perforated disc, it would be obvious to try to provide wherein the surface area of the perforated disc covered by the through lumens is greater than the surface area of the perforated disc not covered by the through lumens.
Conclusion
THIS ACTION IS MADE FINAL. 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA WALKER whose telephone number is (571)272-7052. The examiner can normally be reached M-F: 7-4pm CT.
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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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/OLIVIA WALKER/Examiner, Art Unit 3796
/DAVID HAMAOUI/SPE, Art Unit 3796