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 .
Election/Restrictions
Claims 7, 9-13, 15-22 remain withdrawn as being directed towards a non-elected invention.
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.
Claims 1-6 are 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 1, the limitation “is configured to be placed at only one correct possible position on the outer surface of the medium” is confusing because it has not been defined what is meant by “correct” position. Being “correct” is subjective and therefore indefinite. The claim does not say what makes the positioning correct. During examination, “the correct possible position” will be interpreted as meaning “matching to a unique surface” on the outer surface of the medium.
Claims 2-6 are rejected based on their dependency from a rejected claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 does not limit its parent claim 1. In particular, Claim 1 already includes the requirement “wherein the front surface is constrained and is adapted to match the outer surface of the medium” on line 15-16.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 20180192990 to Tanter in view of US 20190308036 to Ebbini (previously cited by Examiner).
Regarding Claim 1, Tanter teaches a self-positioning acoustic lens comprising a front surface and back surface (lens 9, Figure 1), said back surface being opposed to the front surface, said self-positioning acoustic lens being adapted for transmitting an ultrasound wave into a medium comprising at least one aberrating barrier (skull 8, Figure 1) and a substantially homogeneous internal part masked by said aberrating barrier (brain 7, Figure 1), said ultrasound wave being generated by an ultrasound probe located outside of the medium and said back surface facing the emission surface of the ultrasound probe (ultrasound probe 2, Figure 1),
wherein the self-positioning acoustic lens being configured to, when the self-positioning acoustic lens is interposed between the ultrasound probe and the aberrating barrier and when the ultrasound probe transmits a predetermined ultrasonic wave, generate a predetermined objective ultrasonic wave field in at least one predetermined area belonging to said internal part despite the presence of the aberrating barrier (as shown by the predetermined ultrasound wave 13a, which produces the predetermined wavefront 13c as modified by the lens 9 and aberrating layer 8 and focused at the predetermined area F in the brain 7, Figure 4, while the lens 9 is positioned between the aberrating barrier/skull 7 and the ultrasound probe 2; par. 0120-0121),
and wherein the front surface is constrained and is adapted to match the outer surface of the medium in order to be self-positioned on the outer surface of the medium (the lens 9 is constrained within the helmet 4 and constrained against the skull 8, par. 0120, Figure 1; the lens approximately matches to the surface of the skull as seen in Figure 1, as there is good transmission of ultrasound waves, i.e. minimal air gap, par. 0069), said outer surface of the medium not being perfectly spherical (the skull 8 is not perfectly spherical), and wherein the back surface being spaced from the front surface according to a specific self-positioning acoustic lens thickness in order to create the said predetermined objective ultrasonic wave field (the specific thickness of the lens, at each point of the lens, is designed to account for aberrations caused by the skull, par. 0105; for example, as shown by S4 in Figure 3, the thicknesses e extending across the lens in the y direction).
Although the lens in Tanter has variability thickness (S4, Figure 3) and general conformity to the skull (as shown in Figure 1) to perform aberration correction, Tanter does not teach wherein the lens is configured to be placed at only one correct possible position on the outer surface of the medium.
Ebbini teaches an acoustic lens that is made to conform to a specific site on the skull/scalp geometry (par. 0065; lens 170 is shown precisely conforming to the scalp surface 150 with underlying skull 152). Ebbini further teaches this allows for increased precision in the delivery of ultrasound into the skull (par. 0042) and even reduced energy needs for the transducers (par. 0043).
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the lens of Tanter to be custom-fit to a precise location of the skull as in Ebbini, in order to increase the precision of the targeted delivery of the ultrasound energy and even to reduce its power requirements as taught by Ebbini (par. 0042-0043).
Regarding Claim 2, Tanter further teaches wherein the surface of contact between the front surface of the self-positioning acoustic lens and the outer surface of the medium is limited to a restricted and specific area on the outer surface of the medium (the lens 9 is constrained within the helmet 4 and constrained against the skull 8 in a specific area, par. 0120, Figure 1).
Regarding Claim 3, Tanter further teaches wherein the aberrating barrier is a skull (skull 8, Figure 1) and the outer surface is the skin surrounding the skull (as shown in Figure 1), and the restricted and specific area corresponds to a part of the outer surface in contact with the front surface of the self-positioning acoustic lens (the lens 9 is constrained within the helmet 4 and constrained against the skull 8 in a specific area, par. 0120, Figure 1).
Regarding Claim 4, Tanter further teaches the formula (formula 3, par. 0028; variables explained in par. 0025-0030):
PNG
media_image1.png
90
456
media_image1.png
Greyscale
of which is used to calculate the thickness of the self-positioning acoustic lens from each point of the front surface of the self-positioning acoustic lens (to calculate what is shown in S4, Figure 3 which is the thicknesses e extending across the lens in the y direction). Tanter’s formula is identical to what is claimed except that it does not utilize all three dimensions. Instead, it utilizes two dimensions (x, y). One of ordinary skill in the art before the effective filing date of the claimed invention would have found it routine to extend the formula into three dimensions (x, y, z) as claimed because the object thickness being calculated is of a three-dimensional object in a three-dimensional system to produce a three-dimensional wavefield. Where the figure of Tanter (Figure 4) is drawn in two dimensions for simplicity, one of ordinary skill in the art should have no problems extending it into three dimensions.
Regarding Claim 5, Tanter further teaches the formula (formula 3, par. 0028; variables explained in par. 0025-0030):
PNG
media_image1.png
90
456
media_image1.png
Greyscale
of which is used to calculate the thickness of the self-positioning acoustic lens from each point of the front surface of the self-positioning acoustic lens (to calculate what is shown in S4, Figure 3 which is the thicknesses e extending across the lens in the y direction). Tanter’s formula is identical to what is claimed except that it is in Cartesian coordinates instead of polar coordinates. Transforming between Cartesian and polar coordinates in a mathematical system is considered routine for one of ordinary skill in the art and only predictable results would occur.
Regarding Claim 6, Tanter further teaches wherein the front surface is constrained and is adapted to match the outer surface of the medium in a complementary way (the lens 9 is constrained within the helmet 4 and constrained against the skull 8, par. 0120, Figure 1; the lens approximately matches to the surface of the skull as seen in Figure 1, as there is good transmission of ultrasound waves, i.e. minimal air gap, par. 0069).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6 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. It is agreed that Tanter alone does not teach “wherein the front surface is constrained and is adapted to match the outer surface of the medium such that the self-positioning acoustic lens is configured to be placed at only one correct possible position on the outer surface of the medium”. However, Ebbini as newly applied above teaches site-specific lens matching to a skull/scalp surface and motivations why this modification would be beneficial.
Conclusion
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 ANGELA MARIE HOFFA whose telephone number is (571)270-7408. The examiner can normally be reached Monday - Friday 9:30 am - 6:00 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, Keith Raymond can be reached at (571)270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ANGELA M. HOFFA
Primary Examiner
Art Unit 3799
/Angela M Hoffa/Primary Examiner, Art Unit 3799
Prosecution Insights