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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 1, 14, and 18 recite the limitation “determining, at the processor, a power of the portion of the laser light emitted from the distal end of the optical fiber into the liquid environment based on the duration”. The disclosure teaches a relationship between the power level of a reflected laser light and a bubble duration in [0046] and Figure 4, but does not provide any insight as to how this relationship is determined or calculated.
Examiner addresses only the most salient of the Wands factors below for brevity, though other factors may also support the conclusion of non-enablement.
The nature of the invention. A person having ordinary skill in the art would be able to determine the creation of a laser induced bubble in a liquid environment. However, little is known about using a duration of a bubble to determine a power of a laser light. As best can be determined, there is no art that teaches a defined relationship between bubble duration and laser light power.
The state of the prior art provides transmitting a laser light to a desired origin of bubble formation and using the reflected light to determine bubble formation or size (Visuri et al (US 6538739) Col. 2, lines 52-62). However, this does not provide any insight into how a duration of a bubble could be used to determine the power of the emitted laser light.
The level of one of ordinary skill in the art. A person having ordinary skill in the art would be able to determine a bubble formation or duration based on reflected light. However, they would not be able to determine the power of an emitted laser based off of a bubble duration. Would the relationship between bubble duration and laser power change in different liquid environments (kidneys, ocular tissue, etc.)? How is the bubble duration determined based on reflected light if the original power of the emitted light is unknown? What is the mathematical relationship between bubble duration and power of an emitted laser light.
The amount of direction provided by the inventor. The inventor in Paragraph [0059] discloses a processor can execute application instructions to determine the power of emitted laser light based on a formula or function where the output is the power of emitted laser light and the input is the duration of the bubble. Inventor further discloses a lookup table correlating a duration of a bubble to emitted power in paragraph [0059]. However, no formulas, functions, or lookup tables are provided in the specification.
The existence of working examples. The disclosure details the use of a formula, function, or a lookup table to determine the power of an emitted laser light based off of a duration of a bubble, but no formulas, functions, or lookup tables are provided in the specification.
For at least these reasons, it is clear that one of ordinary skill in the art endeavoring to make and use the claimed invention could not do so without undue experimentation, and the claims thus fails the enablement requirement of 35 USC 112(a).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (mental process of determining a power of a laser light based on a bubble duration) without significantly more.
Step 1
The claimed invention in claims 1-20 are directed to statutory subject matter as the claims recite a method/system for determining a power of a laser light based on a bubble duration.
Step 2A, Prong One
Regarding claims [XXXXX], the recited steps are directed to mental processes of performing concepts in a human mind or by a human using a pen and paper (See MPEP 2106.05(a)(2) subsection (III)).
Regarding claims 1, 14, and 18, the limitations of “determining…a duration of a bubble formed in the liquid environment based on the electrical signal” and “determining…a power of the portion of the laser light emitted from the distal end of the optical fiber into the liquid environment based on the duration” are a process, as drafted, that can be performed by a human mind (including an observation, evaluation, and judgment) under the broadest reasonable interpretation but for the recitation of generic computer components.
Step 2A, Prong Two
For claims 1-20, the judicial exception is not integrated into a practical application. For claims 1, 14, and 18, the additional limitation of “a processor” and “a memory” are recited at a high level of generality and amount to nothing more than parts of a generic computer. Merely including instructions to implement an abstract idea on a computer does not integrate a judicial exception into a practical application.
Further, the limitations of “receiving…an electrical signal generated by a light sensor” amounts to nothing more than the pre-solution activity of mere data gathering (MPEP 2106.05(g)).
Step 2B
The claims do not include additional elements that are sufficient enough to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional limitations of “receiving…an electrical signal…” are directed to nothing more than the pre-solution activity of data gathering, which does not amount to an inventive concept. In addition, a “light sensor” and an “optical fiber” are recited at a high level of generality and considered to be well known, routine, and conventional in the art. For examples see:
optical fiber
Bratchenia et al (US 2015/0133848) [0042]
Yamashita et al (US 2018/0084982) [0032]
light sensor
Yamashita et al (US 2018/0084982) [0029]
Ben Oren et al (US 2017/0027645) [0052]
Dependent claims 2-3, 8-9, 12-13, 16, and 19-20 are further directed towards the abstract idea. The above mentioned claims do not introduce any additional elements which amount to significantly more under the Step 2A prong 2 and Step 2B analyses.
Dependent claims 4-7, 10-11, and 17 are further directed towards extra-solution activities. The above mentioned claims do not introduce any additional elements which amount to significantly more under the Step 2A prong 2 and Step 2B analyses. Moreover the limitations of “a laser source”, “a beam splitter”, and “a lens” are generally recited and considered to be well-known, routine, and conventional in the art. For examples see:
Laser source
Bratchenia et al (US 2015/0133848) [0042]
Yamashita et al (US 2018/0084982) [0029]
Beam splitter
Bratchenia et al (US 2015/0133848) [0042]
Yamashita et al (US 2018/0084982) [0033]
Lens
Bratchenia et al (US 2015/0133848) [0042]
Yamashita et al (US 2018/0084982) [0033]
Claim 18 is rejected under 35 U.S.C. 101 as not falling within one of the four statutory
categories of invention and thus fail as eligible subject matter. Claim 18 characterizes the invention
as a “computer-readable storage device”. A broadest reasonable interpretation of this language typically covers forms of non-transitory tangible media and transitory propagating signals per se, which are not patentable under 35 U.S.C. 101. Claims that cover both statutory and non-statutory embodiments under the broadest reasonable interpretation of the claims when read in light of the specification and in view of one skilled in the art, embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. The claims are considered to be broad enough to cover a transitory propagating signal that carries a programmed instruction set. The specification discloses that “The term “computer-readable medium” should be understood to include tangible items and exclude carrier waves and transient signals, i.e., non-transitory” in paragraph [0051]. Examiner suggests amending the claims to recite this distinction. Furthermore, even when claims are directed to one of the four statutory categories of invention, the claims must not be wholly directed to subject matter encompassing a judicially recognized exception without a particular practical application. In the instant case, in addition to failing to fall within one of the four statutory categories of invention, the claims recite only instructions, i.e. an algorithm that is not limited to a particular practical application. It is suggested to add “non-transitory” to the claim body to distinguish over non-statutory subject matter.
Examiner’s Note Regarding Prior Art
While claims 1-20 are rejected under 35 USC 112 and 35 USC 101, Examiner notes there have been no prior art rejections made. Examiner has not found any prior art that teaches or suggests in combination the limitations recited in claims 1, 14, and 18. Specifically, Examiner has not found any references that teach or suggest:
“determining, at the processor, a power of the portion of the laser light emitted from the distal end of the optical fiber into the liquid environment based on the duration.”
Visuri et al (US 6538739) discloses transmitting a laser light to a desired origin of bubble formation and using the reflected light to determine bubble formation or size (Col. 2, lines 52-62), but fails to disclose determining…a power of the portion of the laser light emitted from the distal end of the optical fiber into the liquid environment based on the duration.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Visuri et al (US 6538739) is directed towards bubble diagnostics.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLOW GRACE WELCH whose telephone number is (703)756-1596. The examiner can normally be reached Usually M-F 8:00am - 4:00pm.
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/WILLOW GRACE WELCH/Examiner, Art Unit 3792
/Benjamin J Klein/Supervisory Patent Examiner, Art Unit 3792