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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on May 5, 2026 is acknowledged. As documented in the Interview Summary mailed November 13, 2025, Applicant’s representative was previously notified that the identification of Group I as encompassing claims 1-18 in the restriction requirement was a typographical error and the Group I properly encompasses claims 1-11. Accordingly, Applicant’s reference in the May 5, 2026 replay to “Group I, claims 1-18” is treated as an inadvertent repetition of the previously corrected typographical error.
Claims 1-12 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 5, 2026.
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, and 6-11 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation " the output of the source of pulsed infrared radiation". There is insufficient antecedent basis for this limitation in the claim.
Claims 6-8 likewise recite “the source of radiation” or “the source of pulsed infrared radiation” without depending from claim 2 or otherwise positively introducing the recited source. Claims 9-11 depend from claim 1 and do not cure the ambiguity concerning whether the source is part of the claimed device. Accordingly, claims 6-11 are indefinite for the same reason.
Examiner’s Note: If claim 1 is amended to introduce a source of pulsed infrared radiation, claim 2 should be correspondingly amended. Otherwise, the phrase “further comprising a source of pulsed infrared radiation” in claim 2 may create ambiguity as to whether claim 2 refers to the source recited in claim 1 or requires an additional source.
Claim Objections
Claims 1 is objected to because of the following informalities: the phrase “an tunable focal length” should read “a tunable focal length”
Appropriate correction(s) is required.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-9 and 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-9 of U.S. Patent No. 11971535. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claims 1-4, 6-9 and 11 in the present application is fully disclosed or would have been obvious from the subject matter of claims 1-4 and 6-9 of the referenced patent. Specifically, the differences between the claims are minor and do not result in a patentably distinct invention, as they merely involve variations in implementation that do not confer any unexpected results or inventive step. Accordingly, a terminal disclaimer is required to overcome this rejection.
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.
Claims 1, 2 are rejected under 35 U.S.C. 103 as being unpatentable over Rolland et al. (US20090133170A1), hereinafter referred to as Rolland, in view of Lee et al. (US20070239031A1), hereinafter referred to as Lee.
Regarding claim 1, Rolland discloses optical imaging device comprising (See ¶¶ [0012]- [0014] and [0019]- [0020] and Fig. 1)
a flexible lightguide having a first end and a second end (See ¶¶ [0013]- [0014] and [0016] and Fig. 1), the output of the source of pulsed infrared radiation being optically coupled to the first end of the flexible lightguide (See ¶¶ [0013]-[0014] and [0018]);
a lens assembly attached to and optically coupled to the second end of the flexible lightguide (See ¶¶ [0024]- [0025] and [0035]-[0038] and Figs. 2 and 5A-5C) , the lens assembly comprising a variable-focus lens element, the variable-focus lens element having an tunable focal length (See ¶¶ [0013]-[0014], [0019]-[0020] and [0024]-[0025])
Rolland does not explicitly disclose a photodetector coupled to the flexible lightguide to detect radiation propagating from the second end toward the first end of the flexible lightguide.
However, Lee from the same or similar endeavor of image systems discloses a photodetector coupled to the flexible lightguide to detect radiation propagating from the second end toward the first end of the flexible lightguide (See ¶¶ [0025], [0027] and [0030]-[0033]).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings disclosed by Rolland to add the teachings of Lee as above, in order to detect and process the backscattered and fluorescent radiation returned through Rolland’s fiber optics (Lee, [0025]).
Regarding claim 2, Rolland and Lee disclose all the limitations of claim 1, and is analyzed as previously discussed with respect to that claim.
Furthermore, Rolland discloses the optical imaging device according to claim 1, further comprising a source of pulsed infrared radiation having an output optically coupled to the first end of the flexible lightguide, wherein the source of pulsed infrared radiation has a peak wavelength within the range of about 700 nm to about 1125 nm (See ¶ [0018])
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Rolland, in view of Lee, and further, in view of Xu (US20060018668A1), hereinafter referred to as Xu668 and Liu (US20070177643A1), hereinafter referred to as Liu.
Regarding claim 3, Rolland and Lee disclose all the limitations of claim 2, and is analyzed as previously discussed with respect to that claim.
Rolland does not explicitly disclose the optical imaging device according to claim 2, wherein the source of radiation comprises
a continuous wave diode laser coupled to an intensity modulator to provide pulsed radiation;
a phase modulator coupled to receive the pulsed radiation and to spectrally broaden the pulsed radiation;
a dispersion compensation element coupled to receive the spectrally broadened pulsed radiation and to narrow the temporal pulse width; and
a section of optical fiber coupled to receive the temporally narrowed pulsed radiation and adapted to further narrow the temporal pulse width through nonlinear broadening.
However, Xu668 from the same or similar endeavor of image systems discloses the optical imaging device according to claim 2, wherein the source of radiation comprises
a continuous wave diode laser coupled to an intensity modulator to provide pulsed radiation (See ¶¶ [0007], [0023]- [0025] and Figs. 1A-1D);
a phase modulator coupled to receive the pulsed radiation and to spectrally broaden the pulsed radiation (See ¶¶ [0006]- [0007], [0018]- [0020] and [0023]- [0025] and Fig. 1A);
a dispersion compensation element coupled to receive the spectrally broadened pulsed radiation and to narrow the temporal pulse width (See ¶¶ [0006]- [0007], [0018]- [0020] and [0025]- [0026] and Fig. 1A); and
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings disclosed by Rolland and Lee to add the teachings of Xu668 as above, in order to use conventional, independently controlled continuous wave (CW) laser sources to generate a multi-wavelength pulse train having even-spaced compressed pulses (Xu668, [0006]).
Moreover, Liu from the same or similar endeavor of fiber system discloses a section of optical fiber coupled to receive the temporally narrowed pulsed radiation and adapted to further narrow the temporal pulse width through nonlinear broadening (See ¶¶ [0002], [0008]- [0011], [0019]- [0020] and [0022]- [0026] and Figs. 2 and 4).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings disclosed by Rolland and Lee to add the teachings of Liu as above, in order to reduce the pulse width by increasing the pulse spectral bandwidth wherein the spectral bandwidth is broadened by taking advantage of the SPM effects (Liu, [0008]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Rolland, in view of Lee, Xu668 and Liu and further, in view of Xu et al (US 2014/0240702 A1), hereinafter referred to as Xu702.
Regarding claim 4, Rolland, Lee, Xu668 and Liu disclose all the limitations of claim 3, and is analyzed as previously discussed with respect to that claim.
Rolland does not explicitly disclose the optical imaging device according to claim 3, wherein the source of radiation further comprises an optical amplifier coupled between the intensity modulator and the phase modulator to amplify the pulsed radiation.
However, Xu702 from the same or similar endeavor of laser systems discloses the optical imaging device according to claim 3, wherein the source of radiation further comprises an optical amplifier coupled between the intensity modulator and the phase modulator to amplify the pulsed radiation (See [0029] and Fig. 5).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings disclosed by Rolland, Lee, Xu668 and Liu to add the teachings of Xu702 as above, in order to amplify the optical pulse for nonlinear spectral broadening (Xu702, [0029]).
Claims 6, 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Rolland, in view of Lee, and further, in view of Chen (US20100021114A1), hereinafter referred to as Chen
Regarding claim 6, Rolland and Lee disclose all the limitations of claim 1, and is analyzed as previously discussed with respect to that claim.
Rolland does not explicitly disclose the optical imaging device according to claim 1, wherein the flexible lightguide comprises an excitation waveguide having a first end at the first end of the flexible lightguide and a second end at the second end of the flexible lightguide, the excitation waveguide being single-mode at the wavelength of the source of radiation.
However, Chen from the same or similar endeavor of optical fibers and devices utilizing double-clad optical fibers discloses the optical imaging device according to claim 1, wherein the flexible lightguide comprises an excitation waveguide having a first end at the first end of the flexible lightguide and a second end at the second end of the flexible lightguide, the excitation waveguide being single-mode at the wavelength of the source of radiation (See ¶¶ [0035], [0073] and [0076] and Fig. 6).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings disclosed by Rolland and Lee to add the teachings of Chen as above, in order to provide a simpler alternative double-clad fiber an alternative double-clad fiber and endoscope that improve collection efficiency without those manufacturing drawbacks (Chen, [0005]).
Regarding claim 7, Rolland, Lee and Chen disclose all the limitations of claim 1, and is analyzed as previously discussed with respect to that claim.
Rolland does not explicitly disclose the optical imaging device according to claim 1, wherein the flexible lightguide comprises one or more detector waveguides, each of the one or more detector waveguides having a first end at the first end of the flexible lightguide and a second end at the second end of the flexible lightguide, the one or more detector waveguides being multimode at the wavelength of the source of pulsed infrared radiation.
However, Chen from the same or similar endeavor of optical fibers and devices utilizing double-clad optical fibers discloses the optical imaging device according to claim 1, wherein the flexible lightguide comprises one or more detector waveguides, each of the one or more detector waveguides having a first end at the first end of the flexible lightguide and a second end at the second end of the flexible lightguide, the one or more detector waveguides being multimode at the wavelength of the source of pulsed infrared radiation (See [0008], [0071] and [0072] and Fig. 6).
The motivation for combining Rolland, Lee and Chen has been discussed in connection with claim 6, above.
Regarding claim 9, Rolland, Lee and Chen disclose all the limitations of claim 1, and is analyzed as previously discussed with respect to that claim.
Rolland does not explicitly disclose the optical imaging device according to claim 1, wherein the lightguide is about 2 mm or less in diameter.
However, Chen from the same or similar endeavor of optical fibers and devices utilizing double-clad optical fibers discloses the optical imaging device according to claim 1, wherein the lightguide is about 2 mm or less in diameter. (See ¶[0030]).
The motivation for combining Rolland, Lee and Chen has been discussed in connection with claim 6, above.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Rolland, in view of Lee, and Chen and further, in view of Seibel (US20100021114A1), hereinafter referred to as Seibel.
Regarding claim 8, Rolland, Lee and Chen disclose all the limitations of claim 7, and is analyzed as previously discussed with respect to that claim.
Rolland does not explicitly disclose the optical imaging device according to claim 7, wherein the flexible lightguide comprises a bundle of optical fibers comprising an excitation fiber and a plurality of detector fibers, each of the excitation fiber and detector fibers having a first end at the first end of the flexible lightguide and a second end at the second end of the flexible lightguide, wherein the output of the source of radiation is optically coupled to the first end of the excitation fiber, and the photodetector is optically coupled to the first ends of the plurality of detector fibers.
However, Seibel from the same or similar endeavor of optical fibers and devices utilizing double-clad optical fibers discloses the optical imaging device according to claim 7, wherein the flexible lightguide comprises a bundle of optical fibers comprising an excitation fiber and a plurality of detector fibers, each of the excitation fiber and detector fibers having a first end at the first end of the flexible lightguide and a second end at the second end of the flexible lightguide, wherein the output of the source of radiation is optically coupled to the first end of the excitation fiber, and the photodetector is optically coupled to the first ends of the plurality of detector fibers (See ¶¶ [0052]- [0053] and Fig. 9).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings disclosed by Rolland, Lee and Chen to add the teachings of Seibel as above, in order to provide side-viewing scope small enough for narrow ducts, such as the pancreatic duct, while still providing high-resolution scanning and useful imaging modes like polarization and fluorescence (Seibel, ¶¶ [0004] and [0005]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Rolland, in view of Lee, and further, in view of Valyukh (US20110043717A1), hereinafter referred to as Valyukh
Regarding claim 10, Rolland and Lee disclose all the limitations of claim 1, and is analyzed as previously discussed with respect to that claim.
Rolland does not explicitly disclose the optical imaging device according to claim 1, wherein the focal length of the lens assembly is tunable over a range of at least 10 μm with applied voltages in the range of 0 V to about 20 V.
However, Valyukh from the same or similar endeavor of image systems discloses the optical imaging device according to claim 1, wherein the focal length of the lens assembly is tunable over a range of at least 10 μm with applied voltages in the range of 0 V to about 20 V (See ¶¶ [0040], [0043]-[0044] and [0046] and Figs. 6 and8 ).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings disclosed by Rolland and Lee to add the teachings of Valyukh as above, in order to provide a simpler liquid crystal optical device with variable focal length that can still be electronically controlled (Valyukh, [0032]).
Claim 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rolland, in view of Lee, and further, in view of Kroupenkine (US20030048541A1), hereinafter referred to as Kroupenkine
Regarding claim 11, Rolland and Lee disclose all the limitations of claim 1, and is analyzed as previously discussed with respect to that claim.
Rolland does not explicitly disclose the optical imaging device according to claim 1, wherein the variable-focus lens element has, in addition to the tunable focal length, a tunable focal position in a dimension perpendicular to the direction of propagation of radiation through the lens assembly.
However, Kroupenkine from the same or similar endeavor of lenses with variable focal length discloses the optical imaging device according to claim 1, wherein the variable-focus lens element has, in addition to the tunable focal length, a tunable focal position in a dimension perpendicular to the direction of propagation of radiation through the lens assembly (See ¶¶ [0034]-[0036] and Fig. 2E).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings disclosed by Rolland and Lee to add the teachings of Kroupenkine as above; in order to add a lubricating layer between the conductive droplet and the insulating layer so the droplet does not directly contact a potentially rough or contaminated surface. This creates a smoother, more uniform interface and reduces contact-angle hysteresis and stick-slip behavior. Electrodes are then selectively biased to change the droplet’s contact angle and lateral position, enabling both focal-length tuning and focal-spot repositioning. (Kroupenkine, ¶¶ [0008]-[0009], [0036]-[0041).
Allowable Subject Matter
Claim 5 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for additional references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FABIO S LIMA whose telephone number is (571)270-0625. The examiner can normally be reached on Monday through Friday, 7:30 AM - 4:00 PM (EST).
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, JAMIE ATALA can be reached on (571)272-7384. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FABIO S LIMA/Primary Examiner, Art Unit 2486
Prosecution Insights