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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/27/2026 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The applicant amended claim 1 to recite that “the system is a handheld device.” The Examiner is interpreting this to mean that the system includes at least one handheld portion, thus making the system a handheld device. If instead the applicant meant to recite that that the system is a single, self-contained handheld device, then there would be potential 112(a) issues (in that the original specification never disclosed the positioning component being within a handheld device) and Drawing objections (as the drawings do not show a handheld device with all the features of claim 1).
Response to Arguments
Applicant’s amendments and/or arguments filed with respect to the objection to the Drawings, the 112(a) rejections, the 112(b) rejections and the 101 rejection have been fully considered and are persuasive. The objection to the Drawings, the 112(a) rejections, the 112(b) rejections and the 101 rejections have been withdrawn.
Applicant’s amendments and associated arguments filed 4/17/2026 with respect to the previous 102 and 103 rejections in view of Bhawalker have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Tettamanti et al. (US 2021/0077824).
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.
Claim 9 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.
Claim 9 recites the limitation "the spot" in the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 2, 4, 8, 13, 15, 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tettamanti et al. (US 2021/0077824, hereinafter Tettamanti).
Regarding claims 1, 2, 4, 13 and 15, Tettamanti discloses a system and method for treating melasma and/or hyperpigmentation disorders (see abstract). Tettamanti discloses an imaging component 300C configured to extract target data in the form of a pixel element (par. 0107). A radiation component in the form of a plurality of diode lasers, such that each laser comprises power up to and above 1W (par. 0059, 0104). At least one positioning component (mirrors and/or a human holding the device) is configured to position the radiation component based on the target data (par. 0107, 0109-0110). A data processing component 340 is included. The system is configured to concentrate at least 2 laser beams to a target, wherein the target is melasma and/or hyperpigmentation disorders (par. 0013 and abstract). The laser beams have a wavelength between 500-1000nm and a width/diameter of 100 micrometers (par. 0061, 0081 and abstract). The laser sources are configured to create an ablative tunnel (par. 0082) and to break the pigment into fragments (par. 0021). The system is a handheld device (par. 0109).
Regarding claim 8, the laser can have a fluence of 100-400 J/cm2 (par. 0028).
Regarding claims 17 and 18, the fluence can be cumulative, such that is each laser has a fluence of 400 J/cm2, then two lasers would have a cumulative fluence of 800 J/cm2.
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.
Claims 9, 11, 12, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tettamanti.
Regarding claims 9, 11, 19 and 20, Tettamanti further discloses that in order to fragment the pigment, the temperature of the pigment molecules is locally and temporarily raised (par. 0021, 0060) and the system eradicates (“ejects”) the pigment fragments (par. 0020) but is silent as to the exact temperature. However, it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). In this case, Tettamanti discloses that the temperature is a result-effective variable that is used to fragment pigments. Finding the exact temperature, including 50-200 degrees Celsius, would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date.
Regarding claim 12, Tettamanti is silent as to the exact size of the fragments. However, it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). In this case, Tettamanti discloses that pigmentes need to be fragmented to a size that can be eradicated from the body. IF the optimal diameter is 1 micron or greater, that would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892, specifically newly cited references US 2015/0230863, US 2018/0110566 and US 2023/0414299, all of which describe using lasers to remover pigmentation from skin.
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 Eric D Bertram whose telephone number is (571)272-3446. The examiner can normally be reached Monday-Friday 8am-6pm Central Time.
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, Jennifer McDonald can be reached at 571-270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eric D. Bertram/Primary Examiner, Art Unit 3796
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