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 with traverse of Group I.a (i.e. claims 1-5) in the reply filed on 1/12/2026 is acknowledged.
The main point of applicant’s argument regarding the restriction requirement is that the examiner’s assertion is incorrect since the combination claim (i.e. claim 11; Group I) requires the same structural elements recited in in the subcombination claims (Group II and Group III). However, the examiner disagrees with this argument. It should be noted that where claims to two or more subcombinations are presented along with a claim to a combination that includes the particulars of at least two sub-combinations, the presence of the claim to the second subcombination is evidence that the details of the first subcombination are not required for patentability (and vice versa). For example, if an application claims ABC/B/C wherein ABC is a combination claim and B and C are each subcombination that are properly restrictable from each other, the presence of a claim to C provides evidence that the details of B are not required for the patentability of combination ABC. Thus, the examiner asserts that the combination as claimed does not require the particulars of the subcombination as claimed for patentability.
In response to applicant’s argument that the species requirement is improper. In view of MPEP 806.04(b), it should be noted that species may be either independent or related under the particular disclosure. It should also be noted that two different subcombination usable with each other may each be a species of some common generic invention. If so, restriction practice under election of species and the practice applicable to restriction between combination and subcombination must be addressed (MPEP 806.04(b)).
In response to applicant’s argument that restriction requirement was not made in the parent application, it should be noted that while the parent application has some similarities to the present application, the metes and bounds of the claimed subject matter are different from each other. The examiner asserts that the principle of making restriction requirement for the present application is not bound by the existence of restriction requirement of the parent application. The examiner has fulfilled the requirement for preparation of a requirement for species requirement for species election as specifically set forth in MPEP 809.02 and MPEP 806.04(b).
In response to applicant’s argument that no serious search burden exists given the prior examination of similar claims in the parent application, the examiner disagrees with this argument. First, it should be noted that applicant amended the claimed subject matter for the present application. With the amendment to claims, the intended scope of the claimed invention for the present application is different from that of the parent application. The fact that the search for two applications may overlap does not necessarily eliminate a serious burden in examining different applications. Furthermore, the examiner asserts that it put a serious burden on the examiner since the examiner should employ different search queries in finding prior art pertinent to those patentably distinct inventions.
The requirement is still deemed proper and is therefore made FINAL.
The non-elected claims (6-13 and 15-21) should be canceled in view of expediting the prosecution.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “RFID chip” in claim 5 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Claim Rejections - 35 USC § 112
Claim 5 is 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 5, due to lack of description in the specification and the drawings, it is unclear what exactly constitutes the claimed “RFID chip”. Clarification is required. Furthermore, it is suggested to clearly define the abbreviation (i.e. RFID) in reciting claim limitations.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klopotek (US 5,772,656).
Regarding claim 1, a qualitative beam assessment device (col.2, lines 14-15; Fig.8, “16”) configured to interface with an ablation system (12) comprising an optical box, the qualitative beam assessment device comprising: a camera configured to record an image of a beam emitted by the optical box (col.2, lines 56-64; Fig.8); and a communication component in electrical communication with the camera, wherein the communication component is configured to transmit the recorded image from the camera to a processor (col.2, line 56-col.3, line 5; Fig.8).
Regarding claim 2, Klopotek discloses the recited attenuator (14; Figs.3 and 8).
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.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klopotek (US 5,772,656).
Regarding claims 3-4, the specific arrangement of a camera, if not inherent in the system of Klopotek, would have been obvious to one of ordinary skill in the art in view of meeting different design requirements and achieving the particular desired performance.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klopotek (US 5,772,656) in view of King et al (US 2017/0007352).
Regarding claim 5, as far as the claim is understood, although Klopotek doesn’t disclose the use of a RFID chip, such use is known in the art as disclosed by King et al (paragraphs 21) and it would have been obvious to one of ordinary skill in the art to utilize the teachings of King et al in the device of Klopotek in view of the desire to effectively control the beam intensity resulting in improving the laser ablative system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN K PYO whose telephone number is (571)272-2445. The examiner can normally be reached 9:00-5:30 PM.
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, Georgia Y Epps can be reached at 571-272-2328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN K PYO/Primary Examiner, Art Unit 2878