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 .
References to the instant application’s as-filed specification has been made using the USPGPub. version of the specification in this Office action.
Response to Amendment
Applicant filed amended claims on May 7, 2025 and addressed all previous 35 USC 112(b) rejections set forth in the Non-Final Office Action mailed December 10, 2024 and the previous rejections have been withdrawn. Upon further consideration, additional issues under 35 USC 112(b) are identified and addressed in the current Office action.
Response to Arguments
Applicant' s arguments with respect to claims 1-12 have been considered but are moot because of the new grounds of rejection. However, below arguments are addressed as they are still applicable to the new grounds of rejection set forth in the current Office action.
Applicant's arguments on page 7-8 of the Response to non-final office action filed May 7, 2025 have been fully considered but they are not persuasive.
Applicant argues that Wei fails to teach or suggest at least the following features recited in claim 1:
"a hollow-core photonic-crystal optical fiber (...) placed under vacuum by the vacuum pump",
"a second connection cell (...) connected to the vacuum pump", and
"the control unit is configured to activate the vacuum pump in order to place the hollow core under vacuum by sucking gases contained in the hollow core of the photonic-crystal optical fiber via the first and second connection cells located at both ends of the optical fiber".
Applicant argues that in Wei the vacuum pump is used to extract the air contained in the hollow core fiber, but not to generate a vacuum since the second cell is connected to the inert gas reservoir to fill said hollow core fiber with gas instead of air. In other words, in the system of Wei, the vacuum pump allows sucking the air contained into the hollow core fiber to replace it with the noble gas contained in the gas reservoir. Moreover, the applicant argues that in Wei the vacuum pump is connected only to one cell and not to both cells.
Above arguments have been fully considered but are not found persuasive. On Pg. 4, ¶2 of the English language translation of Wei et al. (CN 106768859, herein after referred to as Wei) Wei teaches that the vacuum pump is used for removing air in the spectrum widening device, with a vacuum pressure of 10-4 bar, keeping the vacuum state in the system before inflation. On Pg. 4, ¶2, Wei describes a process of inflating and pumping the system. The first step in that process involves having vales 10 and 12 opened while value 13 is closed (see annotated figure below). It is clear from the figure that with both valves 10 and 12 open, the vacuum pump is connected to both the first and second chambers. Value 13 separates the chambers from the gas reservoir. In the described configuration, with valves 10 and 12 open while valve 13 is closed, both chambers experience vacuum with no influx of noble gas from the reservoir.
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The applicant also argues that Wei does not teach or suggest placing a hollow-core photonic crystal fiber under vacuum to improve the homogeneity of energy distribution between multiple points generated simultaneously. This argument is moot because of the new grounds of rejection.
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 control unit that allows piloting the shaping system, the optical scanner, and the optical focusing system" in claims 1-12.
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.
In the specification of the instant application states “The control unit 6 can be composed of one (or more) workstation(s), and/or one (or more) computer(s) or can be of any other type known to those skilled in the art. The control unit 6 can for example comprise a mobile phone, an electronic tablet (such as an IPAD®), a Personal Digital Assistant (or “PDA”,), etc. In all cases, the control unit 6 comprises a processor programmed to allow the piloting of the femtosecond laser 1, of the shaping system 2, of the optical scanner 4, of the optical focusing system 5, etc.”” in [0134]. Therefore, for the purpose of compact prosecution, “control unit” is interpreted as a mobile phone, an electronic tablet (such as an IPAD®), a Personal Digital Assistant (or “PDA”,), processor or any equivalents thereof.
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.
Claims 1-10 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 claim 1, the antecedent basis of “a focusing plane” in line 9 is indefinite as it is unclear if the second occurrence of “a focusing plane” in line 9 is the same as the first occurrence of “a focusing plane” in line 8. For the purpose of examination, the two occurrences of “a focusing plane” in lines 8 and 9 have been interpreted as the same. Dependent claims 2-10 are rejected for the same reasons set forth for claim 1 above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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 1-4 & 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Bernard et al. (US 20170304118, herein after Bernard) in view of Dantus (WO 2012135073), Hertwig (US 20160334570), and Wei (CN 106768859).
With regard to claims 1, 6, & 11 Bernard teaches an apparatus and method for cutting a tissue, said apparatus including: a femtosecond laser (“the invention relates to a device and a method for cutting-out a human or animal tissue, such as a cornea, or a lens, by means of femtosecond laser” in [0002]) which emits an initial LASER beam in the form of pulses (2 & 4 in Fig. 1 and “emit a L.A.S.E.R. beam as ultra-short pulses” in [0004]), a shaping system including a Spatial Light Modulator (SLM) positioned downstream of the femtosecond laser (4 in Fig. 1 and “a spatial light modulator” in [69]), wherein said shaping system transforms the initial LASER beam into a unique phase-modulated LASER beam by modulating the phase of the wave front of the initial LASER beam (9 in Fig. 1, 38 in Fig. 7, and “The SLM (9) is a device … for dynamically forming the wave front, and therefore the phase of the L.A.S.E.R. beam (4) in [0070]” ) according to a modulation instruction (“instruction determined to modulate the distribution of energy of the L.A.S.E.R. beam” in [0025]) calculated to distribute the energy of the unique phase-modulated LASER beam into at least two peaks of intensity spatially separated in a focusing plane, wherein said at least two peaks of intensity induce the simultaneous production of at least two impact points forming a pattern in a focusing plane (36d & 36 e in Fig. 7 and “production of several intensity peaks 36d, 36e spatially separated in the focal plane 34 of the L.A.S.E.R. beam” in [0091]), and wherein each impact point generates a cavitation bubble into the tissue (“generating several simultaneous cavitation bubbles without any multiplication of the initial L.A.S.E.R. beam” in [0092]), an optical scanner, positioned downstream of the shaping system (“the phase-modulated L.A.S.E.R. beam according to the invention is compatible with use of an optical sweeping scanner” in [0103]), to move the pattern along a predefined movement path in the focusing plane (“an optic scanner … displaces the pattern of impact points … in the cutting-out plane” in [0104], an optical focusing system, positioned downstream of the optical scanner (24 in Fig. 1), to move the focusing plane of the modulated LASER beam in a desired cutting plane of the tissue (“a focusing lens (24) able of reflecting, directing and focusing some of the intensity of the beam … towards the surface of the cornea” in [0085]), and a control unit that allows piloting the shaping system (“control means for controlling the shaping means” in [0025]) and the optical scanner (“a displacement system may be controlled by the control means of the cutting-out device” in [0104]) wherein the control unit transmits a phase mask to the shaping system (“The phase mask… is recorded as a modulation set value in the memories of control means of devices to control their respective SLM” in [0096]).
Bernard does not teach a control unit that allows piloting the optical focusing system, an optical coupler between the femtosecond laser and the shaping system, including: a hollow-core photonic-crystal optical fiber which filters the initial LASER beam derived from the femtosecond laser, said hollow-core photonic-crystal fiber including a hollow core placed under vacuum by a vacuum pump and at least one sheath surrounding the hollow core, a first and second connection cell for linking the optical coupler to the femtosecond laser, said first and second connection cells having at least one connection terminal opening out towards the outside of the first and second connection cell, wherein the at least one connection terminal of the first and second connection cells is connected to a vacuum pump, and wherein the control unit is configured to activate the vacuum pump in order to place the hollow core under vacuum by sucking gases contained in the hollow core of the photonic-crystal optical fiber via the first and second connection cells located at both ends of the optical fiber.
However, attention is draw to the Dantus reference. Dantus teaches an adaptive laser system for ophthalmic use (abstract) that includes a temporal focusing of the laser beam pulse that assists in accurately controlling a depth of cut by a laser beam pulse without harming adjacent tissue ([0006]) used with a controller-based software, that automatically scans the laser beam and moves the focal plane (a control unit that allows piloting the optical focusing system) to achieve full xyz positioning” ([0057]).
It would have been obvious to one of ordinary skill in the art at the time of filing of the instant application to apply the use of a controller-based software to move the focal plane taught by Dantus to the apparatus and method taught by Bernard for the purpose of achieving full xyz positioning control.
Further attention is drawn to the Hertwig reference. Hertwig teaches the use of a hollow-core fiber (hollow-core photonic-crystal optical fiber) with ferrule couplers (an optical coupler) to transport laser-radiation from a laser-source to a use location (16 & 18 in Fig. 1, and [0017]) (between the femtosecond laser and the shaping system). Hertwig explains that the use of a hollow-core fiber consists of a central hollow region surrounded by cladding material typically referred to as photonic crystal where the laser-radiation propagates primarily in air, some other gas, or vacuum (said hollow-core photonic-crystal fiber including a hollow core under vacuum and at least one sheath surrounding the hollow core), and that the use of such a fiber is a known solution to preserve the quality of the pulse in temporal and spectral domains when transporting ultra-short pulsed, high-energy lasers (which filters the initial LASER beam derived from the femtosecond laser), and enables the enables the transport of high energy picosecond (ps) and femtosecond (fs) pulses through the fiber with only minimal change to pulse-duration and pulse-shape [0004-0006].
It would have been obvious to one of ordinary skill in the art at the time of filing of the instant application to substitute the use of a hollow-core fiber taught by Hertwig in place of the mirror-based transport used in the method and apparatus taught by Bernard in view of Dantus for the purpose of preserving the quality of the pulse in temporal and spectral domains when transporting ultra-short pulsed, high-energy laser radiation.
Further attention is drawn to the Wei reference. Wei teaches a spectrum widening device, which uses a hollow-core photonic crystal fiber (HC-PCF) under vacuum as a waveguide for a high-efficiency transmission energy channel (6 in Fig. 1, Pg. 1, Abstract and ¶3 ). Wei teaches connecting the HC-PCF to a pair of vacuum chambers (5 & 7 in Fig. 1, see annotated figure, below) (a first and second connection cell) which are in turn connected through a pressure gauge (9 in Fig. 1) to a vacuum pump (11 in Fig 1) ( having at least one connection terminal opening out towards the outside wherein the at least one connection terminal is connected to a vacuum pump). Wei’s vacuum chambers contain a Brewster window (4 & 8 in Fig. 1, ) through which the LASER is focused into the vacuum cavity so that the focus of the light spot and the core position of the optical fibre are overlapped (Pg. 3, ¶2-¶4). This system of chambers and vacuum pumps form a closed system that can be kept in a vacuum state (Pg. 4, ¶2-¶3).
It would have been obvious to one of ordinary skill in the art at the time of filing of the instant application to apply the vacuum chambers and vacuum pump taught by Wei to the method and apparatus taught by Bernard in view of Dantus and Hertwig for the purpose of keeping the HC-PCF in a sealed system under vacuum to facilitate high efficiency laser transmission through the fiber.
Wei is silent regarding the mechanism by which the vacuum pump is controlled, and does not explicitly teach controlling the activation of the pump by means of a control unit used for piloting the shaping system, the optical scanner, and the optical focusing system. In [0134] applicant describes the control unit as “one (or more) workstation(s), and/or one (or more) computer(s) or can be of any other type known to those skilled in the art… In all cases, the control unit comprises a processor programmed to allow the piloting of the femtosecond laser, of the shaping system, of the optical scanner, of the optical focusing system, etc.” The use of a generic computer as known to those skilled in the art suggests that this control unit does not provide a criticality to the invention that separates it from other means of automation or computer control of a manual activity known to those skilled in the art. In In re Venner the court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art (See MPEP § 2144.04(III) Automating a Manual Activity). It would therefore have been obvious for one of ordinary skill in the art to automate the activation of vacuum pump using the control unit in the device of Bernard in view of Dantus, Hertwig, and Wei since court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.
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With regard to claim 2-3, Bernard in view of Dantus, Hertwig, and Wei teaches the cutting apparatus of claim 1.
As discussed above claim 1, Wei teaches connecting the HC-PCF (wherein each connection cell is sealingly mounted at a respective end of the photonic-crystal fiber) to a pair of vacuum chambers (5 & 7 in Fig. 1) (an outer shell) containing a Brewster window (4 & 8 in Fig. 1) (a window transparent to the LASER radiation at one end of the transmission channel) through which the LASER is focused into the vacuum cavity (a transmission channel housed in the shell) so that the focus of the light spot and the core position of the optical fibre are overlapped (Pg. 3, ¶2-¶4).
With regard to claim 4 & 7-8, Bernard in view of Dantus, Hertwig, and Wei teaches the cutting apparatus of claim 1.
Dantus teaches the use of a variable scanning rate (wherein the control unit transmits, to the optical scanner, a scanning speed) to control the desired pulse-to-pulse overlap where minimizing overlap between pulses maximizes the laser processing speed ([0099]). Dantus also teaches that the system can activate the laser (wherein the control unit transmits an activation signal) in short pulses at low intensity (wherein the control unit transmits power setpoints) to obtains a series of nonlinear optical images at a range of heights (Fig. 10, see annotated figure below). These images are evaluated by the software and use to calibrate the xyz axes (wherein the control unit receives a position of the optical focusing system) ([0087]) and allow the system to calibrate an xyz axis of motion (wherein the control unit receives and transmits a scanning speed reached by the optical scanner) ([0081]).
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It would have been obvious to one of ordinary skill in the art at the time of filing of the instant application to use the control system, which can activate the laser and control both the scanning speed and laser power, taught by Dantus to the method and apparatus taught by Bernard for the purpose of calibrating the control system and optimizing performance.
With regard to claim 9, Bernard in view of Dantus, Hertwig, and Wei teaches the cutting apparatus of claim 1.
Dantus teaches a controller that is able to scan the laser in a spiral pattern (the control unit transmits, to the optical scanner, a position on a predefined movement path) which is superior to a conventional straight row patter, as it avoids the creation of grating-like patterns that disperse light, and undesirable outcome of patients reporting the vision of rainbows when they see lights in the night.
It would have been obvious to one of ordinary skill in the art at the time of filing of the instant application to apply the use of a controller-based software to implement the spiral scanning pattern taught by Dantus to the apparatus and method taught by Bernard for the purpose of avoiding the creation of grating-like patterns that disperse light
With regard to claim 10, Bernard in view of Dantus, Hertwig, and Wei teaches the cutting apparatus of claim 1.
As discussed above, Dantus teaches a temporal focusing of the laser beam pulse that assists in accurately controlling a depth of cut by a laser beam pulse (wherein the control unit transmits, to the optical focusing system, a cutting depth) without harming adjacent tissue ([0006]) used with a controller-based software, that automatically scans the laser beam and moves the focal plane to achieve full xyz positioning” ([0057]).
Claims 5 & 12 are rejected under 35 U.S.C. 103 as being unpatentable over Bernard in view of Dantus, Hertwig, and Wei as applied to claims 4 and 11 above, and further in view of Romano et al. (WO 2017/174711 published Oct 12 2017, herein after referred to as Romano).
Bernard in view of Dantus, Hertwig, and Wei does not teach wherein the control unit is programmed to activate the femtosecond laser after determining that the scanning speed is greater than a pre-determined threshold value.
However, attention is drawn to the Romano reference. Romano teaches a method of controlling an apparatus for cutting a human or animal tissue, such as a cornea, or a lens, said apparatus including a femtosecond laser capable of emitting a beam L.A.S.E.R. in the form of pulses (Pg 6, ¶11 of the English language translation of Romano). Romano teaches that programming the control unit to activate the femtosecond laser when the scanning speed of the optical scanner is greater than a threshold value is advantageous, as this makes it possible to synchronize the emission of the beam L.A.S.E.R. with the scanning of the scanning optical scanner more precisely, which in turn improves the quality of cutting by performing a homogeneous surfacing of the cutting plane (Pg 12, ¶2-¶3).
It would have been obvious to one of ordinary skill in the art at the time of filing of the instant application to use the control unit control unit, which activates the femtosecond laser when the scanning speed of the optical scanner is greater than a threshold value, taught by Romano to the method and apparatus taught by Bernard in view of Dantus, Hertwig, and Wei for the purpose of synchronize the emission of the beam L.A.S.E.R. With the scanning of the scanning optical, and improving the quality of cutting.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 2008014357 A2
Abstract - An optical filter and methods of filtering are provided. The optical filter includes a hollow-core fiber including a first portion and a second portion. The first portion includes a hollow core having a first diameter and a cladding having a second diameter. The second portion includes a hollow core having a third diameter smaller than the first diameter and a cladding having a fourth diameter smaller than the second diameter.
Field of Invention - The present invention relates generally to devices and methods for filtering of optical signals, and more specifically to optical filtering using optical fiber tapers and bitapers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P ADAMS whose telephone number is (571)270-0136. The examiner can normally be reached 9am-6pm M-Th.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Unsu Jung can be reached at (571)272-8506. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.P.A./Examiner, Art Unit 3792
/UNSU JUNG/Supervisory Patent Examiner, Art Unit 3792
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