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 .
Detailed Action
Response to Arguments
Applicant's arguments filed 3-30-2026 have been fully considered but they are not persuasive.
In Section (A) the applicant argues that the combination of Fan with Eggleston is motivated by hindsight reasoning and cherry picks the two references to arrive at the claimed features. Further, the applicant states, “Applicant respectfully submits that the modifications appears to be driven by hindsight, as the Examiner has not explained reasons for combining each of these references to demonstrate why a person of ordinary skill in the art (POSITA) would look at teachings from Fan and Eggleston collectively and would use the teachings to provide a configuration as recited in the currently pending claims.” Firstly, the standard in 103 combinations is whether the combination is reasonable whereas unreasonable combinations are considered impermissible hindsight reconstruction. Thus, all 103’s are somewhat a form of hindsight reconstruction because the examiner is expected to note what the primary reference lacks and then show that in a different art. Notably, the applicant states the examiner, “has not explained reasons for combining each of these references,” but fails to address the examiner’s stated reasons for combination. Thus this part of the arguments are unconvincing.
In Section (A)(a) the applicant argues the art fails to teach a handheld optical apparatus then goes on to quote an unrelated section of the limitation stating the apparatus comprises a housing and the interferometer having waveguides on a photonic integrated circuit. Then again reiterates their position about using hindsight reasoning and that the examiner has not adequately stated his reasons for combination. Once again, the examiner is confused with this line of argument since he did state his reasons for combination in his motivation statement. For clarity’s sake that examiner state’s in the rejection that one would combine Fan with Eggleston because, “integrating an optical train onto a chip creates a more robust product less susceptible to damage from shock and further having an separate output and collection waveguide provides such advantages as the collected light can be channeled directly into the reference beam channel and avoid being passed through the beam splitter thus reducing the optical signal loss and providing a better signal to noise ratio for the detection,” and further one would use a housing because, “housing are well known in the art for protecting optical devices from contamination that may affect the detection, protecting them from damage, and further for helping reducing light noise from stray light outside the system and keeping the photonic integrated circuit inside a housing would be common sense.” The applicant’s inability to address these motivations points to the lack of any good argument for the combination being unreasonable hindsight reconstruction and thus these arguments are not convincing.
Note: the examiner notes that the applicant has the term “handheld optical apparatus” into the preamble of the claims. First, this has no patentable weight. Further, “handheld” without any corresponding structure to make it so is a meaningless term because anything can be described broadly as handheld.
In Section (A)(b) the applicant argues the proposed modification cannot change the principle operation of the cited reference. The applicant states, “Such a combination would render Fan's OCT imaging apparatus inoperable without fundamental restructuring because Eggleston's wearable OCT device is configured to be strapped, e.g., secured, to a particular body part of the subject to perform OCT which would prevent the operation of the (emphasis added) "intraoral probe 30" of Fan. Eggleston, at col. 1, lines 15-18, col. 8, lines 51-53; col. 9, lines 4-6, FIG. 7; Fan at [0053]. Thus, the Office Action's suggested combination of the two references would require a substantial reconstruction and redesign of the elements shown in Fan's "OCT imaging apparatus" as well as a change in the basic principle under which the Fan's "OCT imaging apparatus" construction was designed to operate”. To which the examiner is confused. How exactly would the strapping of the OCT of Fan’s disclosure to one’s back stop it from operation? The examiner notes that the applicant just flatly states this is the case without doing the work of explaining this assertion. The framing itself is non-sensical since the examiner brings in Eggleston to teach integrating an interferometer and its waveguides onto a photonic integrated circuit which in no way requires one to strap the OCT to one’s back. Also, this would not rise to the level of a modification that changes the principle operation of the cited reference. Thus, these arguments are not convincing.
In Section (A)(c) the applicant argues Eggleston does not cure the deficiencies of Fan. Once again, the applicant argues that Eggleston is a wearable device. The applicant states this means that one wouldn’t use a housing for a wearable device with the invention of Fan. This argument is again not logically consistent at all. Eggleston was brought in to teach integrating an interferometer and its waveguides onto a photonic integrated circuit. The examiner took official notice as to using a housing around a device. The applicant notably has not contested that. Nothing about Eggleston being wearable matters in this matter. Further, and most notably, a device being worn is more an argument of size than anything else and changing the size of a device is not patentable without specific structures one invents to make it so. Still further, the applicant has failed to argue the motivations for combining. Arguing that Eggleston does not cure the deficiencies of Fan because it’s wearable, an unrelated aspect of Eggleston, is not logical at all. Lastly, housing is so well known in the art that most patents in the art of do not even bother to talk about it since it is below the level for a duty to disclose unless they have invented a special feature of the housing that requires disclosure.
Thus, for these reasons the examiner finds the applicant’s arguments unconvincing and will maintain the rejection as is.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-8, 10, 14, 15, & 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al (PGPub 2020/0129068) (Fan) in view of Eggleston et al (US PAT 12,064,210) (Eggleston).
Regarding Claim 1, Fan discloses a handheld optical apparatus for imaging a sample, the apparatus comprising:
an interferometer (Fig. 1, Paragraph 23) having at least an output waveguide and a collection waveguide. The fiber of the sample arm (44) as shown functions both as an output and collection waveguide (Paragraph 49);
a light source (10) configured to generate light of wavelengths above a threshold wavelength;
a first signal detector (46) configured to obtain an interference signal from the interferometer between a first portion of the light scattered from the sample and a reference portion of the light (Paragraph 49); and
a processor (60) that is programmed with instructions to perform optical coherence tomography processing on the obtained interference signal (Paragraph 50);
Fun fails to explicitly disclose a housing; wherein the output waveguide and the collection waveguide are formed on a photonic integrated circuit substrate, where the photonic integrated circuit substrate is within the housing;
However, Eggleston teaches wherein the output waveguide (205A) and the collection waveguide (205B) are formed on a photonic integrated circuit substrate (Fig. 5, Column 6, lines 62-67 & Column 7, lines 1-19). An integrated optoelectronic circuit is applicant’s photonic integrated circuit;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Fan with wherein the output waveguide and the collection waveguide are formed on a photonic integrated circuit substrate because integrating an optical train onto a chip creates a more robust product less susceptible to damage from shock and further having an separate output and collection waveguide provides such advantages as the collected light can be channeled directly into the reference beam channel and avoid being passed through the beam splitter thus reducing the optical signal loss and providing a better signal to noise ratio for the detection;
Fan as modified by Eggleston still fails to explicitly teach a housing; where the photonic integrated circuit substrate is within the housing;
However, the examiner takes official notice this would be obvious to one of ordinary skill in the art at the time of filing;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Fan as modified by Eggleston with a housing; where the photonic integrated circuit substrate is within the housing because housing are well known in the art for protecting optical devices from contamination that may affect the detection, protecting them from damage, and further for helping reducing light noise from stray light outside the system and keeping the photonic integrated circuit inside a housing would be common sense.
Regarding Claim 2, Fan as modified by Eggleston discloses the aforementioned. Further, Fan discloses where the light source (10) is a superluminescent diode, where the light source is a wavelength tunable laser, where the light source is a wavelength tunable vertical-cavity surface-emitting laser, where the light source is an external cavity diode laser, or where the light source has a tunable range of about 60nm bandwidth centered about 1300nm (Paragraph 49).
Regarding Claims 3 & 4, Fan as modified by Eggleston discloses the aforementioned. Fan fails to explicitly disclose where the light source is within the housing; and where the light source is formed on the photonic integrated circuit substrate;
However, Eggleston discloses where the light source is formed on the photonic integrated circuit substrate (Column 6, lines 41-42);
Further, given the arguments above of the chip being in the housing the light source would also be within the housing;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Fan with where the light source is formed on the photonic integrated circuit substrate because integrating a light source onto a chip creates a more robust product less susceptible to damage and misalignment from shock.
Regarding Claim 5, Fan as modified by Eggleston discloses the aforementioned. Further, Fan discloses where the first signal detector is a spectrometer (Paragraph 46).
The motivation for the light source being within the housing remains the same as in the rejection of claim 1.
Regarding Claim 6, Fan as modified by Eggleston discloses the aforementioned. Further, Fan discloses where the first signal detector is a balanced detector (Paragraph 6).
Regarding Claims 7 & 8, Fan as modified by Eggleston discloses the aforementioned. Fan fails to explicitly disclose where the first signal detector is within the housing; and where the first signal detector is formed on the photonic integrated circuit substrate;
However, Eggleston discloses where the first signal detector is formed on the photonic integrated circuit substrate (Column 5, lines 33-36);
Further, given the arguments above of the chip being in the housing first signal detector would also be within the housing;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Fan with where the first signal detector is formed on the photonic integrated circuit substrate because integrating a signal detector onto a chip creates a more robust product less susceptible to damage and misalignment from shock.
The motivation for the signal detector being within the housing remains the same as in the rejection of claim 1.
Regarding Claim 10, Fan as modified by Eggleston discloses the aforementioned. Further, Eggleston discloses where the output waveguide and the collection waveguide are formed in proximity to each other for collecting the light scattered from the sample (See fig. 5).
The reasons for combination remain the same as in claim 1.
Regarding Claim 14, Fan as modified by Eggleston discloses the aforementioned. Further, Fan discloses a wireless transmitter that is configured to provide optical coherence tomography or frequency-modulated continuous wave (FMCW) data, where the wireless transmitter is within the housing (Paragraph 39).
Regarding Claim 15, Fan as modified by Eggleston discloses the aforementioned but fails to explicitly disclose a battery, where the battery is within the housing;
However, the examiner takes official notice this would be obvious to one of ordinary skill in the art at the time of filing;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Fan as modified by Eggleston with a battery, where the battery is within the housing because batteries are well-known power sources that allow a device to be used where not wired electricity can be sourced or for a device to continue functioning in case of a power outage.
The motivation for the battery being within the housing remains the same as in the rejection of claim 1.
Regarding Claim 17, Fan as modified by Eggleston discloses the aforementioned but fails to explicitly disclose where the processor is formed from embedded electronics, where the processor is within the housing;
However, the examiner takes official notice this would be obvious to one of ordinary skill in the art at the time of filing;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Fan as modified by Eggleston with where the processor is formed from embedded electronics, where the processor is within the housing because integrating the processing onto the chip allows for one to create a compact self-contained device can be easily moved and used in various places without need for an external computing device to operate it.
The motivation for the processor being within the housing remains the same as in the rejection of claim 1.
Regarding Claim 18, Fan as modified by Eggleston discloses the aforementioned. Further, Fan discloses further comprising a beam combiner (FC1) and a reflectance image detector (52) within the housing (Paragraph 50).
Regarding Claim 19, Fan as modified by Eggleston discloses the aforementioned. Further, Fan discloses where the light source (10) is a first light source, and further comprising: a second light source (52, Paragraph 50) to emit light in a visible range within the housing;
where the beam combiner (FC1) lies in a first path of the light to and from the sample and in a second path of light from the second light source (See fig. 1); and an image acquisition apparatus to obtain reflectance image data from the sample (Paragraph 50).
The motivation for the second light source being within the housing remains the same as in the rejection of claim 1.
Regarding Claim 20, Fan as modified by Eggleston discloses the aforementioned. Further, Fan discloses where the sample is an intraoral feature of a patient (Paragraph 47).
Claim(s) 9, 11, & 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fan in view of Eggleston and further in view of Tao et al (PGPub 2022/0133446) (Tao).
Regarding Claim 9, Fan as modified by Eggleston discloses the aforementioned. Fan does disclose a scanning system for scanning the light (Fig. 9A, 204, Paragraph 74) but fails to explicitly disclose where the photonic integrated circuit substrate further comprises a microelectromechanical systems scanning mirror;
However, Tao discloses where the photonic integrated circuit substrate further comprises a microelectromechanical systems scanning mirror (52, Fig. 3B, Paragraph 43);
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Fan as modified by Eggleston with where the photonic integrated circuit substrate further comprises a microelectromechanical systems scanning mirror because a MEMs scanning mirror is functionally equivalent to the scanner shown and would be chosen based upon availability of parts and cost.
Regarding Claim 9, Fan as modified by Eggleston discloses the aforementioned but fails to explicitly disclose a second signal detector configured to obtain a second interference signal from the interferometer between a second portion of the light scattered from the sample and a reference portion of the light;
However, Tao discloses a polarization selective OCT (Fig. 10, Paragraph 73) comprising: a second signal detector configured to obtain a second interference signal from the interferometer between a second portion of the light scattered from the sample and a reference portion of the light. As shown the scattered light from the sample (S) and reference light are split at the coupler (58) into a first and second portion and then directed through two polarizing beam splitters to two separate balanced photo detectors thus meeting this limitation;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Fan as modified by Eggleston with a second signal detector configured to obtain a second interference signal from the interferometer between a second portion of the light scattered from the sample and a reference portion of the light because this setup allows for an imaging method that can be used to show aspects of materials interaction within the sample which would only be viewable using polarized light thus offering a more informative analysis of the sample.
Regarding Claim 13, Fan as modified by Eggleston discloses the aforementioned but fails to explicitly disclose where the second signal detector is formed on the photonic integrated circuit substrate;
However, the examiner takes official notice this would be obvious to one of ordinary skill in the art at the time of filing;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Fan as modified by Eggleston with where the second signal detector is formed on the photonic integrated circuit substrate because integrating the second detector on the photonic integrated circuit substrate creates a more robust product less susceptible to damage and misalignment from shock
Claim(s) 9, 11, & 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fan in view of Eggleston and further in view of Haberland et al (Udo Haberland, Peter Jansen, Vladimir Blazek, Hans Juergen Schmitt, "Optical coherence tomography of scattering media using frequency-modulated continuous-wave techniques with tunable near-infrared laser," Proc. SPIE 2981, Coherence Domain Optical Methods in Biomedical Science and Clinical Applications, (22 May 1997); https://doi.org/10.1117/12.274318) (Haberland)
Regarding Claim 16, Fan as modified by Eggleston discloses the aforementioned but fails to explicitly disclose where the processor is programmed with instructions that perform frequency-modulated continuous wave (FMCW) processing on the obtained interference signal;
However, Haberland teaches where the processor is programmed with instructions that perform frequency-modulated continuous wave (FMCW) processing on the obtained interference signal (Section 2. Principle and Theory Pages 21 & 22);
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Fan as modified by Eggleston with where the processor is programmed with instructions that perform frequency-modulated continuous wave (FMCW) processing on the obtained interference signal because this is a way of processing the information from a SS-OCT which does not require a moving mirror and would be common sense to use.
Allowable Subject Matter
Claim 12 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As to Claim 12 the prior art of record, taken alone or in combination, fails to disclose or render obvious, where the first portion of the light scattered from the sample goes through the collection waveguide and the second portion of the light scattered from the sample goes through the output waveguide, in combination with the rest of the limitations of the claim.
Conclusion
THIS ACTION IS MADE FINAL. 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 JONATHON COOK whose telephone number is (571)270-1323. The examiner can normally be reached 11am-7pm.
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/JONATHON COOK/Examiner, Art Unit 2877 June 6, 2026
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877
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