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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/3/2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on 4/3/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,076,138 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 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.
Claims 1, 4, 5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tchang et al. (US 20180263597).
Regarding claim 1, Tchang shows a patient interface comprising a holder (device for holding an interchangeable ultrasound probe, abstract; device 100, figs. 1 - 11C) having a hole opening (“insertion opening or through hole arranged for inserting or removing the ultrasound probe 200 … insertion opening can define a passage-way for the ultrasound probe through the device, so that a contacting interface between the head (distal end) of the ultrasound probe and a patient's skin can be established”, [0092] and openings in figs. 1 - 11c).
Examiner notes that the device of claim 1 does not comprise an ultrasound probe or an optoacoustic probe. Regarding the functional language of claim 1, applicant is reminded that recitation of intended use or functional language in a claim to a device must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or recited functions, then it meets the claim. In particular:
Regarding the claim’s preamble, the patient interface of Tchang is at least physically capable of being used “for ultrasound guided optoacoustic measurement of blood oxygenation in a blood vessel”, and therefore meets the claim.
Regarding the limitations reciting that the opening “is dimensioned to securely hold an ultrasound probe, and, in the same hole opening, securely hold a subsequently applied optoacoustic probe to a site on a patient where the ultrasound probe is able to detect a major blood vessel and the optoacoustic probe is able to detect blood oxygenation in the detected major blood vessel”, the opening of Tchang has dimensions that do not preclude the claimed functions. In other words, the device of Tchang is at least physically capable of being used to hold an ultrasound probe and subsequently applied optoacoustic probe as recited.
Regarding the limitations reciting that “a geometry of the holder is configured to sequentially hold and insert the ultrasound probe and the optoacoustic probe successively in the hole opening such that an axis of the ultrasound probe coincides with an axis of the optoacoustic probe”, the holder of Tchang has a geometry that does not preclude the claimed functions. In other words, the device of Tchang is at least physically capable of being used to “sequentially hold and insert the ultrasound probe and the optoacoustic probe successively in the hole opening such that an axis of the ultrasound probe coincides with an axis of the optoacoustic probe”.
Tchang therefore meets the claim.
Regarding claim 4, Tchang discloses the claimed invention substantially as noted above. Further, the patient interface of Tchang is capable of being used with an ultrasound probe and optoacoustic probe that have different geometric shapes, and therefore meets the claim.
Regarding claim 5, Tchang discloses the claimed invention substantially as noted above. Further, the patient interface of Tchang includes a sloping rest structure adjacent to the hole opening, as any sloped surface in figs. 1 - 11C is “adjacent to the hole opening”, at least indirectly, and is interpreted as being a “rest structure”, lacking any further limiting features. As non-limiting examples, the curved exterior surface of element 101 in fig. 2 or a rear edge of element 121 in fig. 8 meet the claim.
Regarding claim 7, Tchang discloses the claimed invention substantially as noted above. Tchang further shows a disposable cover that is applied over a surface of the patient interface (“parts of the device that are to be brought in contact with a patients skin … comprise disposable covers or sleeves”, [0125]).
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 8 - 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tchang in view of Clingman (US 2013/0338501).
Regarding claim 8, Tchang discloses the patient interface of claim 1 substantially as noted above. Tchang further shows the ultrasound probe (ultrasound probe 200, [0089]).
Tchang fails to show the optoacoustic probe.
Clingman discloses optoacoustic imaging. Clingman teaches an optoacoustic probe (probe 102, [0043] - [0044] and fig. 12).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Tchang to include the optoacoustic probe, as taught by Clingman, in order to evaluate oxygenation, as suggested by Clingman ([0258]).
Regarding claim 9, the combined invention of Tchang and Clingman discloses the claimed invention substantially as noted above.
Tchang fails to show a processor configured to approximate blood oxygenation of the detected blood vessel.
Clingman teaches a processor configured to approximate blood oxygenation of the detected blood vessel (oxygenation map, [0258]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Tchang to include a processor configured to approximate blood oxygenation of the detected blood vessel, as taught by Clingman, in order to facilitate the evaluation of the oxygenation, as suggested by Clingman ([0258]).
Allowable Subject Matter
Claims 10 - 21 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 10, the prior art of record, either singly or in combination, fails to teach or reasonably suggest the combination of features required by the claim, particularly with respect to the limitations directed towards the manner in which the ultrasound and optoacoustic probes are used in tandem with the holder of the patient interface, culminating in a step of performing optoacoustic monitoring of the blood vessel using the optoacoustic probe held by the patient interface on the skin of the patient. Claim 10 is thus allowable over the prior art. Claims 11 - 21 are allowable at least by virtue of dependency.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4 - 5, and 7 - 9 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIE R DAVIS whose telephone number is (571)270-7240. The examiner can normally be reached Monday-Friday, 9:30 - 6:00 PST.
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, Pascal Bui-Pho can be reached at (571)272-2714. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMELIE R DAVIS/Primary Examiner, Art Unit 3798
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