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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/24/2026 has been entered.
Response to Arguments
Applicant’s arguments filed on 04/26/2026 have been fully considered but are moot in view of a new grounds of rejection. Examiner notes that the same references are being relied upon in the new grounds of rejection.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 1 and 3-11 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.
In re claim 1, the limitation “wherein a height of a gel block is greater than a height of the inner side wall”, raises a clarity concern. Specifically, looking at Applicant’s FIG. 1, the height of the gel block does not appear to be greater than the height of the inner side wall, in fact the height of the gel block looks to be equal to the height of the inner side wall. Examiner believes Applicant is trying to capture a compressible quality of the gel block, that is, the height of the gel block is greater than the height of the inner side wall when it is in an uncompressed state, and therefore substantially equal when it becomes compressed in the coupling interface. For examination purposes the limitation “wherein a height of a gel block is greater than a height of the inner side wall”, will be interpreted as requiring the height of the gel block to be greater than the height of the inner side wall when the gel block is in an uncompressed state. Examiner notes that dependent claims 3-11 inherit the same deficiencies.
In re claim 11, there is insufficient antecedent basis for the limitation “the tissue”. For examination purposes the limitation “the tissue” will be interpreted as “the tissue to be treated”.
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, 3-6 and 8-11 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 of lobed lip portion (144) 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), and
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)), and
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-walled 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
wherein a height of the gel block is greater than a height of the inner side wall.
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.
PNG
media_image1.png
691
772
media_image1.png
Greyscale
Regarding the limitation “wherein a height of the gel block is greater than a height of the inner side wall”.
Raski further discloses an alternative embodiment (Examiner FIG. 1) where a height of the viscoelastic substance (
H
v
s
) is greater than a height (
H
s
w
) of the optical coupling interface’s inner side wall (Examiner FIG. 1). As discussed in Raski, having the viscoelastic substance with such height, helps to eliminate gas bubble formation [0106].
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 gel block of the proposed combination to have a height greater than a height of the inner side wall, as taught by Raski. One would have been motivated to make this modification because doing so would help prevent the formation of gas bubbles (Raski, [0106]).
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).
In re claim 11, the proposed combination yields (all mapping directed to Gooding),
wherein the outer side wall of the double-walled partition and the lower base of the gel block are configured to contact the tissue (FIG. 5B, FIG. 5C), and
wherein the inner side wall of the double-walled partition is configured to not come into direct contact with the tissue (FIG. 5B, FIG. 5C).
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Goldshlegger et al. (US 2014/0216468) discloses an analogous coupling interface (FIG. 3) with a contact element (340), which in some embodiments is made out of a hydrogel [0057]. Goldshlegger further discloses configuring the contact element to help facilitate bubble removal [0034].
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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OLIVIA WALKER/Examiner, Art Unit 3796
/DAVID HAMAOUI/SPE, Art Unit 3796
Prosecution Insights