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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim(s) 1, 2, 13, 14 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 2, 14, 15 of copending Application No. 18/305605 (reference application); published as US 20230248432 A1; note, latest entered claim set filed 10/14/2025 as of this writing is relied upon. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim(s) is/are broader than the corresponding claim(s) in the reference application and thus the corresponding claim(s) is/are a species of the more generic instant claim(s). It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Furthermore, they are not patentably distinct from each other because the instant application claim(s) overlap in scope with and are anticipated and/or obvious over the reference claim(s).
Regarding claim 1, Application No. 18/305605 teaches a surgical laser system (claim 1 “surgical”; claim 2 “laser”), comprising:
two or more laser sources each configured to generate respective laser beams (claim 1 “produced by respective energy sources”; claim 2 “laser”; there is at least two laser energy sources since “respective energy sources” means more than one);
a feedback analyzer configured to receive a reflected signal from a single target in response to electromagnetic radiation directed at the single target (claim 1 “feedback analyzer”); and
a controller circuit in operative communication with the feedback analyzer (claim 1 “controller circuit”), the controller circuit configured to:
determine a target characteristic using the received reflected signal from the single target (claim 1 “determine two or more distinct types of composition at two or more distinct portions of the same target”); and
based at least in part on the determined target characteristic, selectively activate at least one of the two or more laser sources to generate and emit a laser beam to the single target (claim 1 “deliver respective distinct treatment energies…based at least in part on the determined two or more distinct types of composition”; claim 2 “laser”).
Regarding claim 2, Application No. 18/305605 teaches wherein to determine the target characteristic includes to identify two or more distinct compositions of respective portions of the single target (claim 1 “determine two or more distinct types of composition at two or more distinct portions of the same target”).
Regarding claim 13, Application No. 18/305605 teaches a method of operating a surgical laser system comprising two or more laser sources to treat a single target in a patient (claim 14 “respective energy sources”; claim 15 “laser”; there is at least two laser energy sources since “respective energy sources” means more than one), the method comprising:
directing electromagnetic radiation at the single target (claim 14 “directing electromagnetic radiation at a target”);
receiving a reflected signal from the signal target in response to the electromagnetic radiation (claim 14 “receiving a reflected signal from the target”);
determining a target characteristic using the received reflected signal from the single target (claim 14 “determining two or more distinct types of composition at two or more distinct portions of the same target using the received reflected signal”); and
selectively activating, via a controller circuit of the surgical laser system, at least one of the two or more laser sources to generate and emit a laser beam to the single target based at least in part on the determined target characteristic (claim 14 “deliver respective distinct treatment energies…based at least in part on the determined two or more distinct types of composition”; claim 15 “laser”).
Regarding claim 14, Application No. 18/305605 teaches wherein determining the target characteristic includes identifying two or more distinct compositions of respective portions of the single target (claim 14 “determining two or more distinct types of composition at two or more distinct portions of the same target”).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chia (US 20150289937 A1; 10/15/2015; cited in IDS).
Regarding claim 1, Chia teaches a surgical laser system (Abstract; Fig. 1), comprising:
two or more laser sources each configured to generate respective laser beams (Fig. 4; 140A and 140B; [0015]);
a feedback analyzer configured to receive a reflected signal from a single target in response to electromagnetic radiation directed at the single target (Fig. 1; Fig. 8; [0014] “stone analyzer comprises a laser induced breakdown spectrometer”; [0059]); and
a controller circuit in operative communication with the feedback analyzer (Fig. 1; [0014]), the controller circuit configured to:
determine a target characteristic using the received reflected signal from the single target ([0014] “stone analyzer…output a spectrometer reading indicative of a composition of the targeted stone”; [0059]); and
based at least in part on the determined target characteristic, selectively activate at least one of the two or more laser sources to generate and emit a laser beam to the single target (Fig. 4; Fig. 8; [0014]-[0015]; [0059]).
Claim 13 is rejected under substantially the same basis as claim 1 above.
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.
Claim(s) 2, 3, 7-11, 14, 15, 18, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chia as applied to claims 1, 13 above, in view of Yoo (US 20110100967 A1; 5/11/2011; cited in IDS).
Regarding claim 2, Chia does not teach wherein to determine the target characteristic includes to identify two or more distinct compositions of respective portions of the single target. However, Yoo teaches in the same field of endeavor (Fig. 4-5) wherein to determine the target characteristic includes to identify two or more distinct compositions of respective portions of the single target (Fig. 1; [0015]; [0036]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Chia to include this feature as taught by Yoo because this enables high efficiency and precision laser application to a target material (Fig. 1; Fig. 4; [0008]; [0036]).
Claim 14 is rejected under substantially the same basis as claim 2 above.
Regarding claim 3, the combination of Chia and Yoo does not teach wherein to determine the target characteristic further includes to determine respective percentages of the two or more distinct compositions contained in the single target. However, Yoo teaches discriminating between different material types in the target (Fig. 1; [0015]; [0036]) with accuracy “in the range of a few percentage points” ([0073]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Chia and Yoo to use percentages as a unit of measurement since this is a suitable unit of measurement; MPEP 2144.07.
Claim 15 is rejected under substantially the same basis as claim 3 above.
Regarding claim 7, the combination of Chia and Yoo teaches wherein the two or more distinct compositions include a first composition of a first portion and a second composition of a second portion of the single target (Yoo Fig. 1; [0015]; [0036]),
wherein the controller circuit is configured to activate at least one first laser source to generate and emit a first laser beam to the first portion of the single target (Chia Fig. 4; Fig. 8 [0014]-[0015]; [0059]; Yoo Fig. 1; [0015]; [0036]), and to activate at least one second laser source to generate and emit a second laser beam to the second portion of the single target, the at least one first laser source and the at least one second laser source being different laser sources respectively selected from the two or more laser sources (Chia Fig. 4; Fig. 8 [0014]-[0015]; [0059]; Yoo Fig. 1; [0015]; [0036]).
Claim 18 is rejected under substantially the same basis as claim 7 above.
Regarding claim 8, the combination of Chia and Yoo teaches wherein the at least one first laser source emits the first laser beam in a first wavelength or wavelength range, the at least one second laser source emits the second laser beam in a second wavelength or wavelength range different than the first wavelength or wavelength range (Chia Fig. 4; Fig. 8; [0012]; [0014]-[0015]; [0059]).
Regarding claim 9, in the combination of Chia and Yoo, Chia teaches wherein the first and the second wavelengths or wavelength ranges are within an ultraviolet to infrared wavelength region ([0042]).
Claim 19 is rejected under substantially the same basis as claim 9 above.
Regarding claim 10, the combination of Chia and Yoo teaches wherein the at least one first laser source differs from the at least one second laser source by one or more of a laser wavelength, a laser output power, a laser emission range, or a laser pulse shape (Chia Fig. 4; [0012]; [0042]; Yoo Fig. 1; Fig. 4; [0041]).
Regarding claim 11, the combination of Chia and Yoo teaches wherein the controller circuit is configured to activate the at least one second laser source to generate and emit the second laser beam to the second portion of the single target while analyzing and identifying the first composition of the first portion of the single target (Yoo Fig. 1; Fig. 4; [0036]; different laser pulses 110 are emitted in Fig. 1 and the feedback process in Fig. 4 means the first laser pulse reflections is analyzed while second laser pulse is emitted).
Claim(s) 4-6, 12, 16, 17, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chia and Yoo as applied to claims 1, 2, 13, 14 above, and further in view of Nair (US 20140180273 A1; 6/26/2014; cited in IDS).
Regarding claim 4, the combination of over Chia and Yoo does not explicitly teach wherein the two or more distinct compositions include two or more calculi compositions of the respective portions of the single target. Note that Chia teaches treating calculi stones ([0003]) in which spectrometer is used to obtain composition of the stone target ([0014]) and Yoo teaches identifying two or more distinct compositions in a target (Fig. 1; [0015]; [0036]). However, Nair teaches in the same field of endeavor (Abstract; Fig. 1) wherein the two or more distinct compositions include two or more calculi compositions of the respective portions of the single target (Fig. 6; Fig. 12-14; [0010] “different tissue components”; [0011] “classification conditions sored in a data structure”; [0065]; [0086] “employs two imaging apparatuses positioned on either side of the ablative element…identifying different signal characteristics along each scan line allows for a correlation to the type of tissue and a certain level of ablation”; [0093]; [0094] “types of components with the object…determination as to the location of the corresponding tissue within the object”; [0095] “components include calcium…calcified-necrosis”). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Chia and Yoo to include these features as taught by Nair because this enables ablating based on characterized tissue components ([0010]).
Claim 16 is rejected under substantially the same basis as claim 4 above.
Regarding claim 5, the combination of over Chia and Yoo does not explicitly teach wherein the two or more distinct compositions include two or more anatomical tissue types of the respective portions of the single target. Note that Chia teaches treating calculi stones ([0003]) in which spectrometer is used to obtain composition of the stone target ([0014]) and Yoo teaches identifying two or more distinct compositions in a target (Fig. 1; [0015]; [0036]). However, Nair teaches in the same field of endeavor (Abstract; Fig. 1) wherein the two or more distinct compositions include two or more anatomical tissue types of the respective portions of the single target (Fig. 6; Fig. 12-14; [0010] “different tissue components”; [0011] “classification conditions sored in a data structure”; [0065] “tissue types”; [0086] “employs two imaging apparatuses positioned on either side of the ablative element…identifying different signal characteristics along each scan line allows for a correlation to the type of tissue and a certain level of ablation”; [0093]; [0094] “types of components with the object…determination as to the location of the corresponding tissue within the object”; [0095] “components include calcium…calcified-necrosis”). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Chia and Yoo to include these features as taught by Nair because this enables ablating based on characterized tissue components ([0010]).
Regarding claim 6, the combination of over Chia and Yoo does not explicitly teach wherein the two or more distinct compositions include at least one anatomical tissue type and at least one calculi composition of the respective portions of the single target. Note that Chia teaches treating calculi stones ([0003]) in which spectrometer is used to obtain composition of the stone target ([0014]) and Yoo teaches identifying two or more distinct compositions in a target (Fig. 1; [0015]; [0036]). However, Nair teaches in the same field of endeavor (Abstract; Fig. 1) wherein the two or more distinct compositions include two or more anatomical tissue types of the respective portions of the single target (Fig. 6; Fig. 12-14; [0010] “different tissue components”; [0011] “classification conditions sored in a data structure”; [0065] “tissue types”; [0086] “employs two imaging apparatuses positioned on either side of the ablative element…identifying different signal characteristics along each scan line allows for a correlation to the type of tissue and a certain level of ablation”; [0093]; [0094] “types of components with the object…determination as to the location of the corresponding tissue within the object”; [0095] “components include calcium…calcified-necrosis”). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Chia and Yoo to include these features as taught by Nair because this enables ablating based on characterized tissue components ([0010]).
Claim 17 is rejected under substantially the same basis as claim 6 above.
Regarding claim 12, the combination of over Chia and Yoo does not teach wherein the controller circuit is further configured to communicate with a cloud computing device to access a cloud service therein including a machine learning based target identification engine,
wherein to determine the target characteristic, the controller circuit is configured to use the machine learning based target identification engine to identify two or more distinct compositions of respective portions of the single target and to determine respective percentages in the signal target.
However, Nair teaches in the same field of endeavor (Abstract; Fig. 1) wherein the controller circuit is further configured to communicate with a cloud computing device to access a cloud service therein ([0062] “network connection….downloading software”; [0071] “plurality of databases and/or remotely located characterization application”; [0216] “network”) including a machine learning based target identification engine ([0080]; [0093] “artificial neural network”; [0094]-[0095]),
wherein to determine the target characteristic, the controller circuit is configured to use the machine learning based target identification engine to identify two or more distinct compositions of respective portions of the single target ([0080]; [0093] “artificial neural network”; [0094]-[0095]).
Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Chia and Yoo to include these features as taught by Nair because this enables ablating based on characterized tissue components ([0010]) with robust remote databases ([0071]; [0093]).
The combination of Chia, Yoo, and Nair does not teach and to determine respective percentages in the signal target. However, Yoo teaches discriminating between different material types in the target (Fig. 1; [0015]; [0036]) with accuracy “in the range of a few percentage points” ([0073]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Chia, Yoo, and Nair to use percentages as a unit of measurement since this is a suitable unit of measurement; MPEP 2144.07.
Claim 20 is rejected under substantially the same basis as claim 12 above.
Conclusion
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/JONATHAN T KUO/Primary Examiner, Art Unit 3792