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 Species E (Fig. 5b) in the reply filed on 12/29/25 is acknowledged.
Claims 37-39 are withdrawn from further consideration by the Examiner pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/29/25.
Specifically, claim 37 is directed to the convex lens of Species A; claim 38 is directed to the concave lens of Species B; and claim 39 is directed to the reflective surface of the lens as described in Species C (Fig. 4a). Accordingly, claims 37-39 are directed to non-elected species and have been withdrawn herein.
Priority
This application repeats a substantial portion of prior Application No. 16/834,424, filed 3/30/2020 (priority to 4/24/2019), and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
The Examiner notes that the newly added range of between 9 and 11 micrometers in claim 1 is not supported by the original disclosure, or the parent applications. Specifically, the parent application only supports a range of about 9 and about 10 micrometers (from the claims) and 9 to 10 micrometers from the specifications. Accordingly, the range of 9-11 is not supported in claim 1, and Applicant may 1) amend claim 1 to recite the supported range and maintain the priority date of the parent application or b) amend the continuing date of the instant application to be a CIP, and add the newly included ranged to the specification (the priority date of the application in option b above would be 5/9/24).
Appropriate correction is required.
Drawings
The drawings are objected to because in Figs. 5a-b, reference numbers 6 and 7 appear to point to the same structure. Additionally, Fig. 5b is unclear as it has several lightly shaded and/or broken lines. The drawings are required to be formed of dark solid lines. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 29 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12011325 in view of Miyagi et al (US 6104853).
Regarding claim 29, US 12011325 discloses a method for dental or surgical treatment of oral tissue, the method comprising: emitting radiation, by a laser source, at a single wavelength and a single power level along a central axis; and directing radiation emitted by the laser source, by a device, through a hand piece to an oral treatment area, the device comprising: a disposable tube attachable to the hand piece and comprising at least one opening along a sidewall of the tube for directing radiation radially; and a lens, disposed completely within the tube, wherein the lens comprises a first optical material having a first refractive index (n1) and a second optical material having a second refractive index (n2), such that the first refractive index (n1) and the second refractive index (n2) permit transmission of the radiation through the opening along the sidewall and through a distal end of the disposable tube (see US 12011325 claim 16). US 12011325 does not teach wherein a wavelength between 9 and 11 micrometers as required.
Miyagi et al, however, teaches that it is old and well known to use and provide a laser having a wavelength of 9-11 micrometers in dental treatment (see col 1, lines 14-23). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the method of US 12011325 to include Miyagi’s teaching of using a 9-11 micrometer wavelength, as such modification would make use of an old and well known treatment wavelength and laser source, improve efficiency, output and absorption coefficient of water (see Miyagi, citations above), and would merely involve the simple substitution of one known element for another, which has been held to be within the skill of the ordinary artisan.
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 29-36, and 41-42 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.
Regarding claim 29, the term “a central axis” is indefinite, as it is unclear what structure or component the central axis refers too. For example it is unclear if the term refers to the axis of the probe, handpiece, laser beam, another device, etc. Clarification is required.
Regarding claims 31, 36 and 41, the term “directing radiation” is indefinite as it is unclear whether the term intends to refer back to the previously recited step of directing radiation (in which case the term should read “directing the radiation”) or if it refers to another step of directing some other radiation. Clarification is required.
Regarding claims 32-33, the term “the specific direction” lacks antecedent basis in the claims. It is unclear what the terms refer to as no specific directions are recited in claim 29. Additionally the term “direction to the central axis” is indefinite as it is unclear what particularly is meant by “to”. As best understood the term attempts to state “relative to” or the like and will be interpreted as such. Clarification is required.
All other claims not specifically addressed above are rejected based on their dependency on a previously rejected claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 34 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Regarding claim 34, the claim provides a choice of “at least one” of profile and a direction of the radiation being modified by the lens. Claim 29 already recites that the lens modifies the direction by permitting transmission through the opening along the sidewall. Accordingly, in the interpretation where only the direction is modified, the claim does not further limit claim 29 as all limitations are already encompassed therein. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claim(s) 29-36 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Kokubu (US 6179830 B1) in view of Bollinger et al (US 2009/0130622 A1) in view of Miyagi et al (US 6104853).
Regarding the above claims, Kokubu discloses a method for dental or surgical treatment of oral tissue (e.g. treatment of any oral tissue, see abstract, col 1, lines 11-22; col 22, lines 42-49), the method comprising: emitting radiation, by a laser source (13), at a single wavelength and a single power level along a central axis (e.g. axis of probe, see col 1, lines 11-22; col 10, lines 5-25 and col 22, lines 42-49; no simultaneous emission of different wavelengths and/or power are disclosed); and directing radiation emitted by the laser source, by a device (14/15/16), through a hand piece (15) to an oral treatment area (see citations above), the device comprising: a disposable tube (16/27; any component is disposable if desired) attachable to the hand piece (see Fig. 1) and comprising an axial emission opening (e.g. distal end of 17); and a lens (9/25/26), disposed completely within the tube (see Figs. 1a-b and 12), wherein the lens comprises a first optical material (25) having a first refractive index (n1) and a second optical material (26) having a second refractive index (n2), such that the first refractive index (n1) and the second refractive index (n2) permit transmission of the radiation through a distal end of the disposable tube (see col 9, line 39 through col 10, line 4; and col 12, line 46-59). Kokubu further discloses wherein direction the radiation comprises diverging, converging or reflecting the radiation in a specific direction using the lens (e.g. light is reflected along fiber inside tube, see citations above; per claim 31); wherein the specific direction is an axial direction to the central axis (e.g. axial emission, see above; per claim 32); further comprises cooling the oral treatment area by directing the radiation though a mist (see col 9, lines 60-61 per claims 35-36); and wherein directing the radiation comprises using the lens to reflect radiation using total internal reflection, frustrated total internal reflection, phase shift total internal reflection or combinations thereof (see shape of tip, Fig. 12; col 18, lines 25-35; per claim 41). Kokubu, however, does not teach wherein the tube comprises at least one opening along a sidewall of the tube for directing radiation radially such that the lens directs the radiation through the opening along the sidewall and axially, or wherein the single wavelength is between 9 and 11 micrometers as required. The Examiner notes that Kokubu discloses that the device is capable of being used with various types of laser sources at various wavelengths to achieve an intended treatment (see col 12, lines 1-5 and col 22, lines 43-49).
Bollinger et al, however, teaches a similar laser device and method for treating dental tissues, comprising providing radial emission windows/at least one opening along a sidewall of a tube (19) in the cladding/tube surrounding an optical fiber/lens, the lens permitting transmission of the radiation through the opening along the sidewall and through a distal end of the tube (see Fig. 2 and 7). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the method of Kokubu to include Bollinger’s sidewall openings, as such modification would provide improved versatility of the tool for a particular dental treatment type, allowing for increased surface area and directions of emission/treatment.
Miyagi et al additionally teaches that it is old and well known to use and provide a laser having a wavelength of 9-11 micrometers in dental treatment (see col 1, lines 14-23). Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the method of Kokubu/Bollinger, as combined above, to include Miyagi’s teaching of using a 9-11 micrometer wavelength, as such modification would make use of an old and well known treatment wavelength and laser source, improve efficiency, output and absorption coefficient of water (see Miyagi, citations above), and would merely involve the simple substitution of one known element for another, which has been held to be within the skill of the ordinary artisan. The Examiner notes that as explained above, Kokubu contemplates such a modification (see above).
Kokubu/Bollinger/Miyagi, as combined above, additionally discloses wherein the wavelength is between about 9 and about 10 micrometers (see Miyagi, citations above; per claim 30); wherein the specific direction is a radial direction to the central axis (see Bollinger, citations above; per claim 33); and modifying, by the lens, at least one of a profile and direction of the radiation emitted from the tube (e.g. lens permits and directs radial radiation emission, see Bollinger, citations above; per claim 34);
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD MORAN whose telephone number is (571)270-5349. The examiner can normally be reached Monday-Friday 7 AM-4 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached at 571-270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD MORAN/Primary Examiner, Art Unit 3772