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 .
Response to Arguments
Rejections under 112
Applicant’s arguments, see pages 10-13, filed on 06/29/2026, with respect to the 112a enablement rejection of claims 1-20 have been fully considered and are persuasive. The 112a enablement rejection of claims 1-20 has been withdrawn.
Rejections under 101
Applicant's arguments filed on 06/29/2026 with respect to the pending 101 rejection have been fully considered but they are not persuasive.
Applicant argues that the Examiner failed to analyze the claims as a whole and concluded that the claims are directed to an abstract idea simply from select features pulled from the claims. Examiner respectfully disagrees and maintains that each limitation of the claim was included in the analysis.
Applicant further argues that the claims are directed to determining, in real time during a medical laser procedure, the power of laser energy actually delivered to a stone or tissue based on feedback received via the optical fiber. Examiner notes that gathering data via an optical fiber and using a processor to determine a power of the laser energy based on the gathered data merely amounts to using a generic computer component to analyze gathered data which fails to practically apply the abstract idea.
Applicant further argues that in viewing the claim language as a whole, the medical procedure treats a target within a urinary tract with laser energy delivered via an optical fiber. Examiner respectfully disagrees and notes that as currently written, the claims as a whole fail to recite a treatment using laser energy. As currently written, the claims recite receiving data from a laser and making determinations based on the received data. Applicant further argues that the claims provide an advance over conventional lithotripsy systems that have no real-time knowledge of the power actually delivered to the target. Examiner further notes that accelerating a manual process fails to show an improvement to computer functionality when any increased speed comes solely from the capabilities of a general-purpose computer (MPEP 2106.05(a)(I)).
Applicant further argues that the claims are directed towards providing real-time feedback to a physician during a surgical laser procedure on the power actually delivered to a stone or tissue, which is significantly more than a mere mental process. Examiner respectfully disagrees and maintains that determining a bubble duration and a power of a portion of emitted laser energy based on gathered data is a mental process. As currently written, the claims do not practically apply the abstract idea because they do not require anything to be done with the determinations.
Applicant further argues that the claims are directed towards a technical improvement in medical laser devices. Examiner respectfully disagrees and maintains that a generic processor providing real-time feedback to a physician after analyzing gathered data fails to show an improvement to the technology.
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 1-20, 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 towards a stone or tissue 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 (processor).
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, at a processor, an electrical signal generated by a light sensor, the electrical signal comprising an indication of a power of a light received at the light sensor, wherein the light received at the light sensor corresponds to a portion of a laser light reflected from a distal end of an optical fiber, wherein another portion of the laser light is emitted from the distal end of the optical fiber into a liquid environment” 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]
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 towards a stone or tissue into the liquid environment based on the duration.
Altman (US 2022/0166178) discloses modulating laser energy based on bubble dynamics to save invested energy of the initial pulse while increasing energy delivery to a target [0071-0072], but fails to disclose determining a power of the portion of the laser light emitted from the distal end of the optical fiber towards a stone or tissue 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. Altman (US 2022/0166178) is directed towards modulating laser energy based on bubble dynamics (Abstract, [0071-0072]).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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