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 .
Status of Claims
Claims 1-20 are pending, claims 1-9 and 19-20 have been withdrawn from consideration, and claims 10-18 are currently under consideration for patentability under 37 CFR 1.104.
Response to Arguments
Applicant’s arguments with respect to claim(s) 10-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Drawings
The drawings are objected to because “936” does not point to the first optical safety fiber in figure 9 ([0049]). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a computing device in claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 17 is 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.
Regarding claim 17, the limitation “wherein the optical switch receives the safety light from the optical switch via a second optical safety fiber” is unclear. It is unclear how the optical switch can receive the safety light from itself via a second optical safety fiber. For examination purposes, the Examiner interpreted the optical receiver receives the safety light from the optical switch via a second optical safety fiber.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hopkins (US 7,556,414), in view of Ito (US 2009/0040598).
Regarding claim 10, Hopkins discloses a system (110, figure 5) for supplying illumination light (see illumination path 124, figure 5) to a surgical instrument (illuminator attenuator 140, figure 5 | i.e., endoscope; Col. 4, lines 18-19), the system comprising: a first light source (112, figure 5), the first light source configured to supply the illumination light to the surgical instrument via a light port (500, figures 5-6) and a light guide (130, figure 5) coupled between the light port and the surgical instrument (see figure 5), wherein the illumination light is supplied from the light port to the surgical instrument via a first light channel (see 130, figure 5); a second light source (180 in 500, figure 6c) configured to supply, from a light source-side of the light guide and separate from the illumination light (see 500, figure 5), a safety light (530, figure 6c) via the light guide, wherein the safety light is supplied from the light port to the surgical instrument (see 180 in 500, figure 6c), and a computing device (this element is interpreted under 35 USC 112f as individual circuit components, ASIC, microcontroller with controlling software, RISC, DSP, a processor with controlling software, PLD, FPGA, PSOC [0024] | detectors 182, figure 6c; Col. 3, lines 14-21) configured to determine whether the safety light is received at the light source-side of the light guide from an instrument-side of the light guide (detector further generates a signal indicative of the receipt of visible light…signal is provided to control the amount of visible light provided by an illuminator; Col. 3, lines 14-21 | interpreted as a circuit component), and in response to the determining, control the first light source to selectively deactivate or reduce an intensity of the illumination light (control the amount of visible light…; Col. 3, lines 14-21). Hopkins is silent regarding wherein the safety light is supplied from the light port to the surgical instrument via a first optical safety fiber that is separate from the first light channel used to provide the illumination light.
Ito teaches an optical fiber lighting apparatus with multiple light sources (semiconductor lasers 10-1, 10-2, and 10-3, figure 10). There are single fibers (20-1, 20-2, and 20-3, figure 10) that respectively guide exciting light beams emitted from the semiconductor lasers ([0048]). The exciting light beams exit from the single fibers are led to the fiber bundle (40, figures 10-11), where the fiber bundle comprises partial fiber bundles (40-1, 40-2, and 40-3, figure 11).
It would have been obvious to one of ordinary skill in the art before the time of filing to modify the system with individual fibers for each illumination path and reflected illumination path as taught by Ito (see 20-1, 20-2, and 20-3, figure 10). Doing so would provide light beams and reflected light beams independently of one another ([0053]). The modified system would have wherein the safety light is supplied from the light port to the surgical instrument via a first optical safety fiber (see single fibers 20-1, 20-2, and 20-3, figure 10; Ito) that is separate from the first light channel used to provide the illumination light (light from 112 and 180 would be supplied via separate fibers).
Regarding claim 11, Hopkins further discloses the surgical instrument is an arthroscope of an endoscopy system (endoscope; abstract | determining the present of an endoscope or any other illumination attenuator; Col. 1, lines 66-67 | can be an arthroscope), the arthroscope including a light post (see 150, figure 5; Hopkins).
Regarding claim 12, Hopkins further discloses the second light source is arranged in the light port (see 180 in 500, figures 5 and 6c).
Regarding claim 13, Hopkins further discloses the light port is arranged in an endoscopic console (see illumination supply device 110, figure 5).
Regarding claim 14, Hopkins further discloses the light port includes an optical receiver (182, figures 5 and 6c; Hopkins) configured to receive the safety light and generate an output indicating whether the safety light is received by the optical receiver (detector further generates a signal indicative of the receipt of visible light…signal is provided to control the amount of visible light provided by an illuminator; Col. 3, lines 14-21).
Regarding claim 15, Hopkins further discloses the instrument-side of the light guide includes an optical switch (see reflector 250, figure 3; Hopkins) configured to receive the safety light from the second light source and supply the safety light to the optical receiver (reflected radiation 262, figure 3).
Regarding claim 16, Hopkins further discloses the determining includes determining, based on the output, whether the safety light is received by the optical receiver (detector further generates a signal indicative of the receipt of visible light…; Col. 3, lines 14-21), and wherein the controlling the light source includes deactivating or reducing the intensity of the first light source in response to a determination that the optical receiver is not receiving the safety light (signal is provided to control the amount of visible light provided by an illuminator…; Col. 3, lines 14-21).
Regarding claim 17, Hopkins and Ito further disclose the optical switch receives the safety light from the optical switch via a second optical safety fiber that is separate from the first optical safety fiber and the first light channel (see 112b rejection above | detector further generates a signal indicative of the receipt of visible light…; Col. 3, lines 14-21; Hopkins | modified system would have a single fiber for the reflected light; [0048] of Ito).
Claim(s) 10-15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hopkins (US 7,556,414), in view of Ito (US 2009/0040598).
Regarding claim 10, Hopkins discloses a system (110, figure 5) for supplying illumination light (see illumination path 124, figure 5) to a surgical instrument (illuminator attenuator 140, figure 5 | i.e., endoscope; Col. 4, lines 18-19), the system comprising: a first light source (112, figure 5), the first light source configured to supply the illumination light to the surgical instrument via a light port (500, figures 5-6) and a light guide (130, figure 5) coupled between the light port and the surgical instrument (see figure 5), wherein the illumination light is supplied from the light port to the surgical instrument via a first light channel (see 130, figure 5); a second light source (180 in 500, figure 6c) configured to supply, from a light source-side of the light guide and separate from the illumination light (see 500, figure 5), a safety light (530, figure 6c) via the light guide, wherein the safety light is supplied from the light port to the surgical instrument (see 180 in 500, figure 6c), and a computing device (this element is interpreted under 35 USC 112f as individual circuit components, ASIC, microcontroller with controlling software, RISC, DSP, a processor with controlling software, PLD, FPGA, PSOC [0024] | detectors 182, figure 6c) configured to determine whether the safety light is received at the light source-side of the light guide from an instrument-side of the light guide (detector further generates a signal indicative of the receipt of visible light…signal is provided to control the amount of visible light provided by an illuminator; Col. 3, lines 14-21 | interpreted as a circuit component), and in response to the determining, control the first light source to selectively deactivate or reduce an intensity of the illumination light (control the amount of visible light…; Col. 3, lines 14-21). Hopkins is silent regarding wherein the safety light is supplied from the light port to the surgical instrument via a first optical safety fiber that is separate from the first light channel used to provide the illumination light.
Ito teaches an optical fiber lighting apparatus with multiple light sources ( semiconductor lasers 10-1, 10-2, and 10-3, figure 10). There are single fibers (20-1, 20-2, and 20-3, figure 10) that respectively guide exciting light beams emitted from the semiconductor lasers ([0048]). The exciting light beams exit from the single fibers are led to the fiber bundle (40, figures 10-11), where the fiber bundle comprises partial fiber bundles (40-1, 40-2, and 40-3, figure 11).
It would have been obvious to one of ordinary skill in the art before the time of filing to modify the system with individual fibers for each illumination path as taught by Ito (see 20-1, 20-2, and 20-3, figure 10). Doing so would provide light beams that can be emitted independently ([0053]). The modified system would have wherein the safety light is supplied from the light port to the surgical instrument via a first optical safety fiber (see single fibers 20-1, 20-2, and 20-3, figure 10; Ito) that is separate from the first light channel used to provide the illumination light (light from 112 and 180 would be supplied via separate fibers).
Regarding claim 11, Hopkins further discloses the surgical instrument is an arthroscope of an endoscopy system (endoscope; abstract | determining the present of an endoscope or any other illumination attenuator; Col. 1, lines 66-67; can be an arthroscope), the arthroscope including a light post (see 150, figure 5; Hopkins).
Regarding claim 12, Hopkins further discloses the second light source is arranged in the light port (see 180 in 500, figures 5 and 6c).
Regarding claim 13, Hopkins further discloses the light port is arranged in an endoscopic console (see illumination supply device 110, figure 5).
Regarding claim 14, Hopkins further discloses the light port includes an optical receiver (182, figures 5 and 6c; Hopkins) configured to receive the safety light and generate an output indicating whether the safety light is received by the optical receiver (detector further generates a signal indicative of the receipt of visible light…signal is provided to control the amount of visible light provided by an illuminator; Col. 3, lines 14-21).
Regarding claim 15, Hopkins further discloses the instrument-side of the light guide includes an optical switch (see reflector 250, figure 3; Hopkins) configured to receive the safety light from the second light source and supply the safety light to the optical receiver (reflected radiation 262, figure 3).
Regarding claim 18, Hopkins further discloses the safety light is supplied from the second light source to the optical switch (see 530, figure 6c; Hopkins) and the safety light is received at the optical receiver from the optical switch using the first optical safety fiber (see 532, figure 6c).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA F WU whose telephone number is (571)272-9851. The examiner can normally be reached M-F: 8-4 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached at 571-270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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PAMELA F. WU
Examiner
Art Unit 3795
June 14, 2026
/RYAN N HENDERSON/Primary Examiner, Art Unit 3795
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