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 .
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.
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: “light-splitting unit” and “reflecting unit” in claims 1 and 9.
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.
Claims 1-20 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 regards to claims 1, 9 and 13, the phrase in the preamble “a photodynamic therapy and photoacoustic measurement coexistence” system/method is vague. First, it is unclear whether the recited purpose of the systems and method require a structural or manipulative difference based on the preamble recitation. The preamble does not appear to “tie in” to the body of the claim (such as requiring that the first split light or second split light are suitable for photodynamic therapy or photoacoustic measurement), and so it is unclear what relation, if any, the preamble’s recitation of purpose/intended use have to the first and second split light recited in the body of the claim. Second, it is unclear what a “coexistence” system or method entails. For instance, do the claims require that the system and method provide both photodynamic therapy and photoacoustic measurement via the first and second split light, or do they merely require the elements and steps of the bodies of the claims are capable of “coexisting” independently with photodynamic therapy and/or photoacoustic measurement, or some other scope? The examiner is considering the claim to merely require that the elements and steps are capable of “coexisting” with photodynamic therapy or photoacoustic measurement independently provided for prior art purposes, but clarification is respectfully requested.
The remaining claims are rejected by virtue of their dependency.
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.
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, 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Xiang et al. (US 2019/0170695, hereinafter “Xiang”) in view of Cook et al. (US 2021/0369348, hereinafter “Cook”).
In regards to claims 1 and 13 (as best understood), Xiang discloses a photodynamic therapy and photoacoustic measurement coexistence system/method (see section 112 rejection above -- Xiang discloses photoacoustic measurement (abstract) and is capable of “coexisting” with photodynamic therapy independently provided elsewhere on the body), comprising:
a pulsed light source, configured to emit a pulsed light (Fig. 1, element 105, “pulse laser system”);
a light-splitting unit, disposed on an optical path of the pulsed light, and configured to split the pulsed light into a first split light and a second split light (Fig. 1, element 110, “polarization beam splitter”);
a reflecting unit, disposed on an optical path of the first split light, and configured to reflect the first split light into a reflected light (Fig. 1, element 185, reflecting probe beam 130 to specimen 170);
a first lens, disposed on an optical path of the reflected light, and configured to refract the reflected light to an irradiated surface to form a first light spot (element 180, par. 0070); and
a second lens, disposed on an optical path of the second split light, and configured to refract the second split light to the irradiated surface to form a second light spot (element 160, par. 0070).
Although Xiang discloses that the light-splitting ratio between the first split light and the second split light can be continuously adjusted by rotating a half wave plate (par. 0076), Xiang does not expressly disclose wherein a light-splitting ratio of the light-splitting unit is equal to or greater than about 3/7 and equal to or less than about 1/2. However, Cook in the same field of endeavor of light therapy or measurement teaches providing a rotatable half-wave plate that allows a user to split light at any proportion from 0-100% (par. 0283) to provide the predictable results of customizable power without significant power loss (par. 0179); Xiang recognizes that, by providing a continuously adjustable half-wave plate, that this ratio is a “results-effective variable”; and it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In light of the fact that the body of the claim does not appear to require any particular purpose or effect of the first and second split light (and so applicable to any potential therapeutic or measurement light), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Xiang to provide a light-splitting ratio of the light-splitting unit that is equal to or greater than about 3/7 and equal to or less than about 1/2 to provide no more than predictable results.
In regards to claim 9, (as best understood), Xiang discloses a photodynamic therapy and photoacoustic measurement coexistence system (see section 112 rejection above -- Xiang discloses photoacoustic measurement (abstract) and is capable of “coexisting” with photodynamic therapy independently provided elsewhere on the body), comprising:
a pulsed light source, configured to emit a pulsed light (Fig. 1, element 105, “pulse laser system”);
a light-splitting unit, disposed on an optical path of the pulsed light, and configured to split the pulsed light into a first split light and a second split light (Fig. 1, element 110, “polarization beam splitter”);
a first lens, disposed on an optical path of the first split light, and configured to refract the first split light into a refracted light (element 180, par. 0070);
a reflecting unit, configured to reflect light to an irradiated surface to form a first light spot (Fig. 1, element 185, reflecting probe beam 130 to specimen 170);
and
a second lens, disposed on an optical path of the second split light, and configured to refract the second split light to the irradiated surface to form a second light spot (element 160, par. 0070).
Although Xiang discloses that the light-splitting ratio between the first split light and the second split light can be continuously adjusted by rotating a half wave plate (par. 0076), Xiang does not expressly disclose wherein a light-splitting ratio of the light-splitting unit is equal to or greater than about 3/7 and equal to or less than about 1/2, or that the reflecting unit is disposed on an optical path of the refracted light (i.e., reversal of the reflection unit 185 and lens 180 of Xiang). However, Cook in the same field of endeavor of light therapy or measurement teaches providing a rotatable half-wave plate that allows a user to split light at any proportion from 0-100% (par. 0283); Xiang recognizes that, by providing a continuously adjustable half-wave plate, that this ratio is a “results-effective variable”; and it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, it has been held that reversal of parts is an obvious modification absent a showing of unpredictable results (See In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955)). The examiner’s position is that reversing the functions of refracting the first split light before reflecting would be based on the particular form factor of the system, and would be a design choice well within the skill of the hypothetical artisan.
In light of the fact that the body of the claim does not appear to require any particular purpose or effect of the first and second split light (and so applicable to any potential therapeutic or measurement light), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Xiang to provide a light-splitting ratio of the light-splitting unit that is equal to or greater than about 3/7 and equal to or less than about 1/2 and reversing the orientation of the lens and reflector to provide no more than predictable results.
Allowable Subject Matter
Claims 2-8, 10-12 and 14-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The closest prior art is to Xiang above, but Xiang is drawn to a low-power, high-frequency system (pars. 0070, “20 mJ/cm2”; 0081, “50 MHz”). These disclosures directly teach away from providing the power and energy intensities and frequencies recited in claims 2, 3, 6, 10, 11, 14, 15, and 18. Further, these disclosures indirectly teach away from the pulse widths and laser power recited in claims 7, 8, 12, 19 and 20 because of the high frequency signal that would not allow for such pulse widths and a laser power not suitable for Xiang’s low-power system. Lastly, Xiang discloses a spot size on the nanometer scale (par. 0097), teaching away from the spot sizes recited in claims 4, 5, 16 and 17. The remaining prior art fails to fairly render the claims unpatentable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wang et al. (US 2018/0303349) is another example of applying two light paths with a single source, and Chamberland et al. (US 2008/0221647) is an example of providing both photodynamic therapy and photoacoustic measurement.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL W KAHELIN whose telephone number is (571)272-8688. The examiner can normally be reached M-F, 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Klein can be reached at (571)270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL W KAHELIN/Primary Examiner, Art Unit 3792