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
Applicant’s amendments and remarks merit new grounds for rejection in view of Hargis et al. (U.S. Patent Application Publication No. 2016/0334618) hereinafter referred to as Hargis.
Hargis teaches altering beam width and aspect ratio to elongate a beam spot (¶¶[0088-0089]) and Hargis further teaches that the shape of a beam spot is results-effective, such that a change in the beam spot shape causes a known change in the results of using said beam spot shape (¶[0088]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the beam spot size of Laudenslager as modified to include additional beam spot shape changes, such as width and aspect ratio as taught by Hargis, because Hargis teaches a benefit of more uniform distribution of light (Hargis ¶[0088]) and because “where 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to the Double Patenting rejections and Applicant’s statements on p. 7 of the Remarks dated 12/8/2025, there does not appear to be a corresponding Terminal Disclaimer filed.
Applicant’s arguments with respect to claim(s) 1-5, and 7-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant’s remarks on pp. 8-9 are solely directed to whether the previous references of Laudenslager, Li, Cui, and Chuang teach the newly added claim amendments taught in view of Hargis in the rejection below. Therefore, they are considered unpersuasive and/or moot.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 5, 10-12, 15-16 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,864,042. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘042 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claims 2-4, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 and 10 of U.S. Patent No. 10,864,042. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘042 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 of U.S. Patent No. 10,864,042. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘042 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claims 8-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 10,864,042. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘042 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 10,864,042. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘042 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 10,864,042. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘042 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-8 of U.S. Patent No. 10,864,042. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘042 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claims 1-2/10-11, 5, and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 16 of U.S. Patent No. 12,016,625. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘625 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claims 3, 7-9, 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3, 6-7, 9, 16-17 of U.S. Patent No. 12,016,625. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘625 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,016,625. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘625 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claims 15-16, are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,016,625. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘625 patent anticipate the claims of the instant application as they are narrower than the instant claims.
Claims 17-20, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-8 and 12-14 of U.S. Patent No. 12,016,625. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘625 patent anticipate the claims of the instant application as they are narrower than the instant claims.
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.
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) 1-5, 7-8, 10-16, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laudenslager et al. (U.S. Patent No. 5,383,199) hereinafter referred to as Laudenslager; in view of Li et al. (CN 203117537-U) hereinafter referred to as Li; in view of Hargis et al. (U.S. Patent Application Publication No. 2016/0334618) hereinafter referred to as Hargis.
Regarding claim 1, Laudenslager teaches a laser generator (Abstract) comprising:
a laser source configured to produce a first beam having first beam characteristics (element 12, the laser beam has beam characteristics);
a prism (31) comprising a first surface configured to receive the first beam having the first beam characteristics and a second surface configured to produce a second beam having second beam characteristics (col. 4, lines 16-21, no detail of the beam characteristics are claimed and therefore any beam characteristics meet this claim)
a lens (51) configured to receive the second beam from the prism, converge the second beam (Fig. 2, lens directs beam from prism, with intervening elements visible in Fig. 1), and transmit the converged second beam to a coupler (56).
Laudenslager further teaches wherein the material comprises fused silica (col. 3, lines 60-62).
Laudenslager does not explicitly teach wherein the prism itself is formed of a material configured to change the first beam characteristics into the second beam characteristics, wherein the first beam characteristics and second beam characteristics comprise a beam width, a beam height, and a beam aspect ratio.
Attention is drawn to the Li reference, which teaches a fused silica prism (¶[0044] machine translation), wherein the prism itself is formed of a material configured to change the first beam characteristics into the second beam characteristics (¶[0030] machine translation), wherein the first beam characteristics and second beam characteristics comprise at least one of a beam width, a beam height, or a beam aspect ratio (Figs. 1-3, original document, the dimensionality of the beam is changed by refraction through the prism).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the laser generator of Laudenslager to include altering beam characteristics with the prism to control the laser beam size with a simple structure, high processing precision, and small influence on the beam transmission wavefront (Li, Abstract, machine translation).
Laudenslager as modified does not explicitly teach an altered beam shape, e.g. a round spot to an elliptical spot, comprising all of a changed length, width, and aspect ratio.
Attention is drawn to the Hargis reference, which teaches altering beam width and aspect ratio to elongate a beam spot (¶¶[0088-0089]) and Hargis further teaches that the shape of a beam spot is results-effective, such that a change in the beam spot shape causes a known change in the results of using said beam spot shape (¶[0088]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the beam spot size of Laudenslager as modified to include additional beam spot shape changes, such as width and aspect ratio as taught by Hargis, because Hargis teaches a benefit of more uniform distribution of light (Hargis ¶[0088]) and because “where 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager further teaches wherein the prism is a wedge prism (col. 4, lines 16-21).
Regarding claim 3, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager further teaches wherein the wedge prism is a right angle wedge prism (col. 4, lines 16-21).
Regarding claim 4, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager further teaches wherein the material comprises fused silica (col. 3, lines 60-62).
Regarding claim 5, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager further teaches wherein the first surface is configured to receive the first beam at an incoming angle of incidence relative to a first surface normal (Fig. 1, element 31, col. 3, lines 50-55),
wherein the second surface is configured to transmit the second beam at an exit angle relative to a second surface normal (Fig. 1, element 31, col. 3, lines 50-55 transmits after reflection on second surface, hypotenuse col. 3, lines 64-67).
Regarding claim 7, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager further teaches wherein the second surface of the prism includes a coating configured to reflect at least a portion of the second beam (col. 3, lines 64-67).
Regarding claim 8, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager further teaches wherein the second surface is a hypotenuse surface (Fig. 1, element 31, col. 3, lines 50-55).
Regarding claim 10, Laudenslager as modified teaches the laser generator of claim 1.
Li further teaches wherein the first beam characteristics and the second beam characteristics comprise at least one of: a beam size, a beam divergence, or a beam long axis (Figs. 1-3 original document).
Regarding claim 11, Laudenslager as modified teaches the laser generator of claim 1.
Li further teaches wherein at least one prism variable is configured to affect the first beam to produce the second beam (¶¶[0031-0033], machine translation),
wherein the at least one prism variable comprises at least one of an angle of incidence of the first beam entering the first surface, an angle of the prism, an index of refraction of the material, or a wavelength of the first beam (¶¶[0031-0033], machine translation).
Regarding claim 12, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager further teaches wherein the lens is configured to converge the second beam to a focal point located between the lens and the coupler and diverges between the focal point and the coupler (Fig. 1, diverges and converges between these elements, Applicant does not claim in what order the divergence and convergence occurs).
Regarding claim 13, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager further teaches wherein the lens is a plano-convex lens (col. 4, lines 39-42).
Regarding claim 14, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager further teaches wherein the prism and the lens are together configured to alter beam divergence of the first beam (Fig. 1, beam divergence is altered through the beam path and optical elements) characteristics to produce the second beam having the second beam characteristics that are compatible with a particular catheter coupled via the coupler (the catheter is an unclaimed element that the claimed laser generator is configured to operate with, therefore the catheter is the intended use or environment to the device claimed and is given limited patentable weight; the laser generator of Laudenslager is capable of this use, col. 7, lines 21-37).
Regarding claim 15, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager teaches further comprising the coupler that includes a first coupling plane at a first distance from the lens and a second coupling plane at a second distance from the lens, wherein the coupler is configured to receive the second beam from the lens (Figs. 1-2, col. 4, lines 54-end).
Regarding claim 16, Laudenslager as modified teaches the laser generator of claim 15.
Laudenslager further teaches wherein the second beam comprises third beam characteristics at the first coupling plane and fourth beam characteristics at the second coupling plane (Figs. 1-2, beam characteristics at the coupler).
Regarding claim 21, Laudenslager as modified teaches the laser generator of claim 1.
Li further teaches wherein the material comprises an index of refraction (¶[0032], machine translation), and
wherein the material is configured to change the first beam characteristics into the second beam characteristics by refraction (¶¶[0031-0033], machine translation, Figs. 1-3 original document).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laudenslager, Li, and Hargis as applied to claim 1 above, and further in view of Cui et al. (U.S. Pre-Grant Publication No. 2018/0228374,) hereinafter referred to as Cui and Chuang et al. (U.S. Pre-Grant Publication No. 2015/0372446) hereinafter referred to as Chuang.
Regarding claim 9, Laudenslager teaches the laser generator of claim 1.
Laudenslager further teaches wherein the prism comprises: a bottom incident face configured to receive the first beam (Fig. 1), the first beam having a first beam width and a first beam height (Fig. 1); a side face connected to the bottom incident face by an edge at an angle of 90 degrees (Fig. 1); and, a hypotenuse face connecting the bottom incident face and the side face (Fig. 1).
Laudenslager as modified does not teach where the prism receives the laser beam at an angle of 15 to 30 degrees off normal to the bottom incident face. Laudenslager further does not teach the hypotenuse exit face configured to emit the second beam at an angle of 50 to 70 degrees off normal to the hypotenuse exit face, the second beam having a second width and a second height, wherein the second width is less than the first width, and wherein the second height is the same or equal to the first height.
Attention is brought to the Cui reference, which teaches wherein the prism comprises a hypotenuse surface, and the surface by which light exits is the hypotenuse surface (¶[0061]). Cui further teaches the emitted beam having a second beam width and a second beam height, wherein the second beam width is less than the first beam width, and wherein the second beam height is the same or equal to the first beam height (¶[0061]).
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the prism of Laudenslager as modified to allow for light to escape via the hypotenuse surface, because Cui teaches that it is a compact form-factor for creating an annular beam (Cui ¶[0061]) which is desirable for use with a catheter (Cui ¶[0061]).
It appears that the combination of Laudenslager and Cui teaches all of the elements of claim 16 except for the ranges of incidence angles.
Attention is drawn to the Chuang reference, which teaches that the incidence angles of light to a prism is a results-effective variable for monitoring beam parameters (¶[0131]).
Therefore it would have been prima facie obvious to modify the beam incidence angles to the prism of the combination of Laudenslager as modified and Cui to where the prism receives the laser beam at an angle of 15 to 30 degrees off normal to the bottom incident face and the hypotenuse exit face configured to emit the second beam at an angle of 50 to 70 degrees off normal to the hypotenuse exit face because “It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
Claim(s) 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laudenslager, Li, and Hargis as applied to claim 1 above, and further in view of Chuang et al. (U.S. Pre-Grant Publication No. 2015/0372446) hereinafter referred to as Chuang.
Regarding claim 17, Laudenslager as modified teaches the laser generator of claim 1.
Laudenslager further teaches wherein the optical assembly further comprises a first sensor (element 71, e.g.) and a mirror (wedge 56) disposed at an angle (Fig. 1), wherein the first sensor is configured to measure a first energy of the first beam (col. 5, lines 46-60),
Laudenslager further teaches where a sensor element should receive a small percentage of the laser beam for monitoring purposes (col. 4, lines 53-58).
Laudenslager as modified does not teach wherein the mirror is between the laser source and the prism, wherein the mirror reflects the first beam onto the prism, wherein the mirror further transmits at least a portion of the first beam to the first sensor.
Attention is brought to the Chuang reference which teaches that mirrors and prisms are interchangeable in the art for splitting beams (which is the function recited by applicant in claim 4) and are equivalent in the art (Fig. 32A) and also teaches specifically an embodiment where a mirror is between a laser source and a prism and the mirror reflects a first beam into the prism (Fig. 8).
Throughout Chuang, prisms and mirrors are seen as interchangeable arrangements for beam splitting, where any one of many combinations of these is appropriate for splitting a beam depending on desired beam characteristics. Applicant further does not recite any criticality to the order of these two devices. Therefore it would have been obvious to one of ordinary skill in the art at the time of invention to modify the laser generator of Laudenslager as modified to substitute a different arrangement of prism and mirror to split the beam recited in claim 17, because an art-recognized equivalence is strong evidence of the obviousness in substituting one component over another.
Regarding claim 18, Laudenslager as modified teaches the laser generator of claim 17.
Laudenslager as modified does not teach further comprising a second sensor configured to measure a second energy of the second beam.
Attention is brought to the Chuang reference, which teaches incorporating a sensor configured to measure an energy of a laser beam (¶[0012]).
It would have been obvious to one of ordinary skill in the art to modify the laser source of Laudenslager as modified to include a second sensor, adding in that which is taught by Chuang, because Chuang teaches that it is desirable to inspect laser parameters when they are being changed by optical elements (¶[0012]), and Laudenslager comprises a multi-stage optical path.
Regarding claim 19, Laudenslager as modified teaches the laser generator of claim 18.
Laudenslager teaches comprising an attenuator, wherein the attenuator is configured to adjust the first energy of the first beam (col. 5, lines 37-45).
Laudenslager as modified does not teach the attenuator disposed between the laser source and the prism. However, it appears that Laudenslager as modified teaches each and every element of claim 11, except that the order of the attenuator and the prism is reversed. As Applicant has disclosed no criticality to this order, it would have been prima facie obvious to rearrange the working parts of this invention, because the courts have held it to be a matter of only routine skill. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Regarding claim 20, Laudenslager as modified teaches the laser generator of claim 19.
Laudenslager teaches comprising a microprocessor executable controller coupled to the attenuator, wherein the microprocessor executable controller adjusts the first energy of the first beam measured by a first sensor with the attenuator (col. 5, lines 37-45).
Laudenslager as modified does not teach further comprising a second sensor configured to measure a second energy of the second beam.
Attention is brought to the Chuang reference, which teaches incorporating a sensor configured to measure an energy of a laser beam (¶[0012]).
It would have been obvious to one of ordinary skill in the art to modify the laser source and attenuator control circuit of Laudenslager as modified to include a second sensor, adding in that which is taught by Chuang, because Chuang teaches that it is desirable to inspect laser parameters when they are being changed by optical elements (¶[0012]), and Laudenslager comprises a multi-stage optical path.
Conclusion
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/AMANDA L STEINBERG/ Examiner, Art Unit 3792