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Claims 64-71 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/3/2026.
Applicant’s election without traverse of group I, claims 55-63, 72-74 in the reply filed on 9/3/2026 is acknowledged.
The status of the claim(s) are:
Claim(s) 1-54 is/are cancelled;
Claim(s) 55-74 is/are presently pending;
Claim(s) 64-71 is/are withdrawn;
Claim(s) 55-63, 72-74 is/are examined on the merits.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim(s) 55, 59-62, 72 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-2, 13, 28, 51 of U.S. Patent No. 11318323. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim(s) is/are broader than the corresponding claim(s) in the reference patent and thus the corresponding claim(s) is/are a species of the more generic instant claim(s). It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Furthermore, they are not patentably distinct from each other because the instant application claim(s) overlap in scope with and are anticipated and/or obvious over the reference claim(s).
Regarding claim 55, U.S. Patent No. 11318323 teaches a handheld probe configured to be optically connected to a coherent light generator, the handheld probe comprising (claim 51):
a shaft (claim 51);
an optical box at a distal end of the shaft, the optical box including at least one of an emission lens or a reflector that is angled with respect to a central axis of the optical box in at least one position of the optical box, the optical box forming a closed tip (claim 51); and
a fiber optic cable extending at least to a proximal end of the shaft (claim 51 “an optical box at a distal end of a shaft and the fiber optic cable extends through the shaft to the optical box”).
Claim 72 is rejected under substantially the same basis as claim 55 above.
Regarding claim 59, wherein the optical box is configured to at least one of collimate or diffuse coherent light from the coherent light generator for delivery to a treatment site (claim 28 “diffusing lens”).
Regarding claim 60, U.S. Patent No. 11318323 teaches wherein the optical box is configured to reflect coherent light from the coherent light generator (claim 1 “coherent”) in a non-Gaussian light distribution pattern for delivery to a treatment site (claim 13).
Regarding claim 61, U.S. Patent No. 11318323 teaches further comprising a handle and a coupler configured to selectively couple the shaft to the handle (claim 1 “handheld probe”; it is inherent that handheld probe would have handle and coupler to shaft as claimed.
Regarding claim 62, U.S. Patent No. 11318323 teaches wherein the coupler includes at least one electrical contact configured to provide electrical communication between the handle and the shaft (claims 1-2; processor, memory; inherent to have electrical contact).
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.
Claim(s) 55-57, 59, 72, 73 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tearney (US 20070282403 A1; 12/6/2007).
Regarding claim 55, Tearney teaches a handheld probe configured to be optically connected to a coherent light generator (Fig. 22-23; [0088]; [0124]-[0125]; endoscope is handheld), the handheld probe comprising:
a shaft (Fig. 22-23; [0124]-[0125]);
an optical box at a distal end of the shaft, the optical box including at least one of an emission lens or a reflector that is angled with respect to a central axis of the optical box in at least one position of the optical box, the optical box forming a closed tip (Fig. 22-23); and
a fiber optic cable extending at least to a proximal end of the shaft (Fig. 23).
Claim 72 is rejected under substantially the same basis as claim 55 above.
Regarding claim 56, Tearney teaches wherein the optical box is selectively rotatable between a plurality of positions (Fig. 23; [0125] “manual rotation”).
Claim 73 is rejected under substantially the same basis as claim 56 above.
Regarding claim 57, Tearney teaches further comprising a handle having a probe tip rotator configured to receive input from a user to selectively rotate the optical box (Fig. 23; [0125] “manual rotation…automated rotation”).
Regarding claim 59, Tearney teaches wherein the optical box is configured to at least one of collimate or diffuse coherent light from the coherent light generator for delivery to a treatment site (Fig. 4; [0088]).
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.
Claim(s) 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tearney as applied to claim 57 above, in view of Crozier (US 20170367760 A1; 12/28/2017).
Regarding claim 58, Tearney does not teach wherein the probe tip rotator is a thumb wheel configured to move one or more control cables to selectively rotate the optical box. However, Crozier teaches in the same field of endeavor (Abstract; Fig. 8) wherein the probe tip rotator is a thumb wheel configured to move one or more control cables to selectively rotate the optical box ([0097]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Tearney to include this feature as taught by Crozier because this enables operator control of rotation ([0097]).
Claim(s) 60 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tearney as applied to claim 55 above, in view of Beaurepaire (US 20110147616 A1; 6/23/2011).
Regarding claim 60, Tearney does not teach wherein the optical box is configured to reflect coherent light from the coherent light generator in a non-Gaussian light distribution pattern for delivery to a treatment site. However, Beaurepaire teaches in the same field of endeavor (Abstract; Fig. 1) wherein the optical box is configured to reflect coherent light from the coherent light generator in a non-Gaussian light distribution pattern for delivery to a treatment site (claim 17). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Tearney to include this feature as taught by Beaurepaire because this enables obtaining better optical measurements ([0032]-[0037]; [0059]; claim 17).
Claim(s) 61-63 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tearney as applied to claim 55 above, in view of Weber (US 20010025190 A1; 9/27/2010).
Regarding claim 61, Tearney does not teach further comprising a handle and a coupler configured to selectively couple the shaft to the handle. However, Weber teaches in the same field of endeavor (Abstract; Fig. 1) further comprising a handle and a coupler configured to selectively couple the shaft to the handle (Fig. 11; [0101]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Tearney to include this feature as taught by Weber because this enables connecting the device to function ([0101]).
Regarding claim 62, in the combination of Tearney and Weber, Weber teaches wherein the coupler includes at least one electrical contact configured to provide electrical communication between the handle and the shaft (Fig. 11; [0101]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Tearney to include this feature as taught by Weber because this enables connecting the device to function ([0101]).
Regarding claim 63, in the combination of Tearney and Weber, Weber teaches further comprising at least one temperature sensor arranged in or on at least one of the shaft or the optical box, and the at least one electrical contact provides electrical communication between the handle and the at least one temperature sensor (Fig. 11; [0101]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Tearney to include this feature as taught by Weber because this enables connecting the device to function ([0101]).
Claim(s) 74 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tearney as applied to claim 72 above, in view of Onimura (US 20110237958 A1; 9/29/2011).
Regarding claim 74, Tearney does not teach wherein the fiber optic cable includes an emission portion configured to emit coherent light from a coherent light generator out of the optical box, and the method further comprises moving at least a portion of the fiber optic cable to adjust the emission portion. However, Onimura teaches in the same field of endeavor (Abstract; Fig. 1) wherein the fiber optic cable includes an emission portion configured to emit coherent light from a coherent light generator out of the optical box (claim 6), and the method further comprises moving at least a portion of the fiber optic cable to adjust the emission portion (claim 6). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Tearney to include these features as taught by Onimura because this enables control of the light delivered (claim 6; Fig. 6).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan T Kuo whose telephone number is (408)918-7534. The examiner can normally be reached M-F 10 a.m. - 6 p.m. PT.
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/JONATHAN T KUO/Primary Examiner, Art Unit 3792
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