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 .
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 16-17, and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2,10-11, and 13-15 of U.S. Patent No. 12,083,045 (Goos). Although the claims at issue are not identical, they are not patentably distinct from each other because the broader claims of the current application is anticipated by the broader claims of Goos.
Regarding claim 16:
Goos discloses a method, comprising:
generating a laser beam (Claim 10);
directing, by one or more focusing optics (claim 10), a focal point of the laser beam towards a zero- surface, the zero-surface corresponding to a zero-plane (Claim 10);
receiving at least a portion of the laser beam reflected by the zero-surface (Claim 10);
receiving, by one or more detector optics, the reflected portion (Claim 10);
directing the reflected portion towards a photon-detecting device (Claim 10, directed to a detector);
sensing, by the photon-detecting device (Claim 10), a peak intensity of the reflected portion, the peak intensity indicating a proximity of a position of the focal point of the laser beam to the zero- surface (Claim 10, sensing a peak intensity by the detector); and
determining, by a computer, whether the position of the focal point of the laser beam is substantially at the zero-surface (Claim 10, determination of a position).
Regarding claim 17:
Goos discloses the method of claim 16, wherein determining, by the computer, whether the position of the focal point of the laser beam is substantially at the zero-surface includes determining whether the peak intensity is at a maximum (claim 11, max peak intensity), the peak intensity being at a maximum corresponding to the position of the focal point of the laser beam being substantially at the zero-surface (claim 11, position determination).
Regarding claim 25:
Goos discloses the method of claim 16, wherein the photon-detecting device includes a two-photon absorption detector (Claim 10).
Regarding claim 26:
Goos discloses the method of claim 16, further comprising repeating, by the computer, the following until the peak intensity is a maximum peak intensity:
determining whether the peak intensity is a maximum peak intensity (Claim 13); and
when the peak intensity is not the maximum peak intensity, adjusting the focusing optics to direct the focal point of the laser beam to a different point of a z-axis (Claim 13), the z-axis in line with a direction of the laser beam as it approaches the zero-surface (Claim 10).
Regarding claim 27:
Goos discloses the method of claim 26, further comprising:
adjusting, by the computer, the focusing optics to direct the focal point along a plurality of larger intervals to locate a general region of the zero-surface (Claim 14); and
adjusting the focusing optics to direct the focal point of the laser beam along a plurality of smaller intervals of the general region to determine the location of the zero-surface (Claim 14).
Regarding claim 28:
Goos discloses the method of claim 16, further comprising generating, by the computer, a graph representing the peak intensity of the reflected portion (claim 15).
Regarding claim 29:
Goos discloses a system, comprising:
a laser configured to generate a laser beam (Claim 1);
one or more focusing optics (Claim 1) configured to:
direct a focal point of the laser beam towards a zero-surface, the zero-surface corresponding to a zero-plane (Claim 1); and
receive at least a portion of the laser beam reflected by the zero-surface (Claim 1);
one or more detector optics (Claim 1) configured to:
receive the reflected portion from the focusing optics (Claim 1); and
direct the reflected portion towards a photon-detecting device (Claim 1);
the photon-detecting device (Claim 1) configured to:
sense a peak intensity of the reflected portion (Claim 1), the peak intensity indicating a proximity of a position of the focal point of the laser beam to the zero-surface (Claim 1); and
generate a signal representing the peak intensity of the reflected portion (claim 1); and
a computer configured to determine whether the position of the focal point of the laser beam is substantially at the zero-surface (Claim 1).
Regarding claim 30:
Goos discloses the system of claim 29, wherein determining whether the position of the focal point of the laser beam is substantially at the zero-surface includes determining whether the peak intensity is at a maximum (claim 2), the peak intensity being at a maximum corresponding to the position of the focal point of the laser beam being substantially at the zero-surface (Claim 2).
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.
Claims 16, 19, 28-29, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Warm (U.S. 2012/0083771) in view of Holmberg (U.S. 2011/0317153).
Regarding claim 16:
Warm discloses a method, comprising:
generating a laser beam ([0041], laser);
directing, by one or more focusing optics, a focal point of the laser beam towards a zero- surface (Fig. 1, laser 12 directed toward 30), the zero-surface corresponding to a zero-plane (Fig. 1, 30);
receiving at least a portion of the laser beam reflected by the zero-surface ([0044]-[0046], signal reflects back towards beam splitter);
receiving, by one or more detector optics, the reflected portion ([0044]-[0046], signal reflects back towards beam splitter);
directing the reflected portion towards a photon-detecting device ([0042], beam deflection);
sensing, by the photon-detecting device, a peak intensity of the reflected portion, the peak intensity ([0060]-[0062], peak detection); and
determining, by a computer, whether the position of the focal point of the laser beam is substantially at the zero-surface ([0051], focal position determination).
However, Warm fails to disclose the peak intensity indicating a proximity of a position of the focal point of the laser beam to the zero- surface.
Holmberg teaches the peak intensity indicating a proximity of a position of the focal point of the laser beam to the zero- surface ([0034], peak energy indicates the focal point).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the method of Warm with the peak intensity taught by Holmberg in order to improve the accuracy of focal point determination for increased resolution (Holmberg; [0004] and [0034]). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 19:
The combination of Warm and Holmberg discloses the method of claim 16, wherein the zero-surface corresponds to a target- side surface of a patient interface (Warm; Fig. 1, M).
Regarding claim 28:
The combination of Warm and Holmberg discloses the method of claim 16, further comprising generating, by the computer, a graph representing the peak intensity of the reflected portion (Holmberg; Fig. 4).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the method of Warm with the peak intensity taught by Holmberg in order to improve the accuracy of focal point determination for increased resolution (Holmberg; [0004] and [0034]). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 29:
Warm discloses a system, comprising:
a laser (Fig. 1, 10) configured to generate a laser beam ([0041], laser);
one or more focusing optics (Fig. 1, 12, 14, 16, 18, 22, 24, and 26; focusing optics) configured to:
direct a focal point of the laser beam towards a zero-surface (Fig. 1, laser 12 is directed toward 30), the zero-surface corresponding to a zero-plane (Fig. 1, 30); and
receive at least a portion of the laser beam reflected by the zero-surface ([0044]-[0046], signal reflects back towards beam splitter);
one or more detector optics (Fig. 1, L1) configured to:
receive the reflected portion from the focusing optics ([0044]-[0046], signal reflects back towards beam splitter); and
direct the reflected portion towards a photon-detecting device ([0042], beam deflection);
the photon-detecting device (Fig. 1, D1 and D2) configured to:
sense a peak intensity of the reflected portion, the peak intensity ([0060]-[0062], peak detection); and
generate a signal representing the peak intensity of the reflected portion ([0051], signal generated); and
a computer configured to determine whether the position of the focal point of the laser beam is substantially at the zero-surface ([0051], focal position determination).
However, Warm fails to disclose the peak intensity indicating a proximity of a position of the focal point of the laser beam to the zero-surface.
Holmberg teaches the peak intensity indicating a proximity of a position of the focal point of the laser beam to the zero-surface ([0034], peak energy indicates the focal point).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the system of Warm with the peak intensity taught by Holmberg in order to improve the accuracy of focal point determination for increased resolution (Holmberg; [0004] and [0034]). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 31:
The combination of Warm and Holmberg discloses the system of claim 29, further comprising a patient interface (Warm; Fig. 1, M) and wherein the zero-surface corresponds to a target-side surface of the patient interface (Warm; Fig. 1, M).
Allowable Subject Matter
Claims 17-18, 20-27, 30, and 32-35 are 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:
The closest prior arts are Warm (U.S. 2012/0083771) and Holmberg (U.S. 2011/0317153).
Regarding claim 17:
The combination of Warm and Holmberg discloses the method of claim 16.
However, the combination of Warm and Holmberg fails to disclose wherein determining, by the computer, whether the position of the focal point of the laser beam is substantially at the zero-surface includes determining whether the peak intensity is at a maximum, the peak intensity being at a maximum corresponding to the position of the focal point of the laser beam being substantially at the zero-surface.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record, if rewritten in independent form to include all of the limitations of the base claim and any intervening claim. Claim 18 is allowable by virtue of its dependency.
Regarding claim 20:
The combination of Warm and Holmberg discloses the method of claim 19.
However, the combination of Warm and Holmberg fails to disclose further comprising discarding the patient interface after a procedure for one patient is performed with the laser beam passing through the patient interface, the patient interface configured as a one-time-use product.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record, if rewritten in independent form to include all of the limitations of the base claim and any intervening claim. Claims 21-22 are allowable by virtue of their dependency.
Regarding claim 23:
The combination of Warm and Holmberg discloses the method of claim 16.
However, the combination of Warm and Holmberg fails to disclose wherein the determining, by a computer, whether the position of the focal point of the laser beam is substantially at the zero-surface is further based on a diameter of the reflected portion at the photon-detecting device.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record, if rewritten in independent form to include all of the limitations of the base claim and any intervening claim. Claim 24 is allowable by virtue of its dependency.
Regarding claim 25:
The combination of Warm and Holmberg discloses the method of claim 16.
However, the combination of Warm and Holmberg fails to disclose wherein the photon-detecting device includes a two-photon absorption detector.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record, if rewritten in independent form to include all of the limitations of the base claim and any intervening claim.
Regarding claim 26:
The combination of Warm and Holmberg discloses the method of claim 16.
However, the combination of Warm and Holmberg fails to disclose repeating, by the computer, the following until the peak intensity is a maximum peak intensity: determining whether the peak intensity is a maximum peak intensity; and when the peak intensity is not the maximum peak intensity, adjusting the focusing optics to direct the focal point of the laser beam to a different point of a z-axis, the z-axis in line with a direction of the laser beam as it approaches the zero-surface.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record, if rewritten in independent form to include all of the limitations of the base claim and any intervening claim. Claim 27 is allowable by virtue of its dependency.
Regarding claim 32:
The combination of Warm and Holmberg discloses the system of claim 31.
However, the combination of Warm and Holmberg fails to disclose wherein the patient interface is a one-time-use product.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record, if rewritten in independent form to include all of the limitations of the base claim and any intervening claim.
Regarding claim 33:
The combination of Warm and Holmberg discloses the system of claim 31.
However, the combination of Warm and Holmberg fails to disclose wherein the photon-detecting device includes a two-photon absorption detector.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record, if rewritten in independent form to include all of the limitations of the base claim and any intervening claim.
Regarding claim 34:
The combination of Warm and Holmberg discloses the system of claim 31.
However, the combination of Warm and Holmberg fails to disclose the computer further configured to repeat the following until the peak intensity is a maximum peak intensity: determining whether the peak intensity is a maximum peak intensity; and when the peak intensity is not the maximum peak intensity, adjusting the focusing optics to direct the focal point of the laser beam to a different point along a z-axis, the z-axis in line with a direction of the laser beam as it approaches the zero-surface.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record, if rewritten in independent form to include all of the limitations of the base claim and any intervening claim.
Regarding claim 35:
The combination of Warm and Holmberg discloses the system of claim 31.
However, the combination of Warm and Holmberg fails to disclose the computer further configured to: instruct the focusing optics to direct the focal point along a plurality of larger intervals to locate a general region of the zero-surface; and instruct the focusing optics to direct the focal point of the laser beam along a plurality of smaller intervals of the general region to determine the location of the zero-surface.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record, if rewritten in independent form to include all of the limitations of the base claim and any intervening claim.
Conclusion
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/S.K./Examiner, Art Unit 2884
/DAVID J MAKIYA/Supervisory Patent Examiner, Art Unit 2884