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 21, 28 & 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, & 16 of U.S. Patent No. 12,133,218. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following analysis:
Claim 21 of present invention (18/935852)
Claim 6 of U.S. Pat. No. 12,133,218
A device comprising an image capturing component…to capture images;
A device comprising an image capturing component…to capture images;
an adaptive optical projector…output a laser beam towards a portion of an absorptive element
a light projection system…output a laser beam towards a portion of an absorptive element…including laser source and an optical imager, one or more memories, and…
…and wherein the laser beam is configured to cause the absorptive element to produce…acoustic energy…
…one or more processors…configured to: process…the images captured to…derive signals for controlling the laser source to generate the laser beam
…and one or more processors configured to: process the images captured by the image capturing component;
…the absorptive element configured to be disposed over a portion of retina…
and provide signal to the adaptive optical projector to…generate the laser beam.
…the laser beam causing the absorptive element to produce…acoustic energy…be alleviated from pain, and/or be manipulated to perform a movement of a body part of the user.
The claims are not patentably distinct because claim recites the same image-responsive, processor-controlled laser projection system and photoacoustic absorptive element for depolarizing neuronal cells as patented claim 6 from U.S. Pat. No. 12,133,218.
Characterizing the projection system as an “adaptive optical projector” and selecting an external-eye placement for the absorptive element constitute obvious variations of the parent device, while omitting the parent claim’s real-time processing, raster-scanning, and resolution limitations merely broadens the claim without producing a patentably distinct invention.
Claims 28 & 35 of present invention (18/935852)
Claims 1 & 16 of U.S. Pat. No. 12,133,218
A method/non-transitory computer-readable medium comprising capturing, by a device, one or more images;
A method/non-transitory computer-readable medium comprising obtaining…information relating to an environment of a user…
generating…one or more laser beams…
processing…the information to derive one or more signals representative of the information…
…outputting…the one or more laser beams toward one or more portions of an absorptive element disposed outside a cavity of an eye…
…generating…a laser beam based on the one or more signals, and outputting…the laser beam toward a portion of an absorptive element after generating the laser beam…
…wherein the one or more laser beams cause the absorptive element to produce…acoustic energy that causes depolarization of neuronal cells…
…the absorptive element configured to be disposed over a portion of retina…
…the laser beam causing the absorptive element to produce…acoustic energy…be alleviated from pain, and/or be manipulated to perform a movement of a body part of the user.
The claims are not patentably distinct because claims 28 & 35 recites the same image-based generation and output a laser beam toward an absorptive element to produce photoacoustic energy that depolarizes neuronal cells as patent claim 1 of U.S. PAT NO. 12,133,218. Capturing images is encompasses by obtaining information relating to the user’s environment, and generating multiple laser beams merely duplicated the signal-beam operation of the patented claims 1 & 16. Positioning the absorptive element outside the eye cavity is an obvious selection within the parent claim’s broader placement proximate to a neuronal region, while omission of the focusing, controlled-spatiotemporal-resolution, and resulting-stimulation limitations merely broadens the method without establishing a patentably distinct invention.
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) 21-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Khuri-Yakub et al. (US 2013/0245505) in view of Wang et al. (US 2013/0319123) and further in view of Chayet al. (US 2015/0238362).
Claim 21.
Khuri-Yakub et al. teaches a device comprising:
An ultrasonic transducer positioned proximate to the eye and configured to direct focused acoustic energy toward retinal neuronal cells; and
Acoustic stimulation producing retinal ganglion-cell firing, thereby causing neuronal depolarization {Abstract, [0003], [0007]-[0009], [0019]-[0029], [0033]; Figs. 2-12).
Khuri-Yakub et al. does not expressly teach generating the acoustic energy by directing a laser beam toward an absorptive element.
Wang et al. teaches:
A laser-activated photoacoustic transducer comprising an energy-absorptive film; and
Directing laser energy toward the film to produce acoustic energy through the photoacoustic effect (Abstract, claim 1, [0029], [0042]; Figs. 1, 7-9).
It would have been obvious to substitute Wang’s photoacoustic transducer for Khuri-Yakub’s piezoelectric ultrasound transducer because Wang et al. teach the photoacoustic transducer as a replacement for conventional ultrasonic probes, predictably generating acoustic energy for stimulating the targeted neuronal cells. The resulting absorptive element would be positioned proximate to the eye and outside the eye cavity. The combination does not expressly teach the claimed image-responsive adaptive optical-projector control.
Chayet et al. teaches:
An image-capturing component configured to capture images;
A laser-based optical projector comprising laser source 120; optical scanner 130, and projection optics 140; and
A processor configured to process captured image information and generate modulation and synchronization signals controlling generation and direction of the laser beam ([0024]-[0030], [0039]-[0045], [0051]-[0056]; Figs. 1-4)
It would have been obvious to incorporate Chayet’s image-capturing and processor
controlled adaptive optical projector into the combined system of Khuri-Yakub et al. and Wang
et al. to dynamically control and align the activating laser beam with the photoacoustic absorptive element, thereby improving targeted delivery of acoustic stimulation.
Claim 22.
The references teach the device of claim 21 as set forth above.
Khuri-Yakub further teaches an external transducer coupled to the eye and flexible transducer disc configured to cover the front portion of the eye ([0069], [0071]-[0073]; Figs. 5A-5C).
Upon substituting Wang’s photoacoustic absorptive element for the ultrasonic transducer, the absorptive element would likewise be disposed over a portion of the eye.
Claim 23.
Khuri-Yakub et al. teaches implementing the retinal-stimulation device as a contact-lens-like device positioned over the front of the eye ([0068]-[0073]; Figs 5A-5C).
It would have been obvious to position the substituted photoacoustic absorptive element over the lens portion of the eye to maintain the disclosed, external non-invasive alignment with the visual axis and retina.
Claim 24.
Chayet et al. teaches that the adaptive optical projector comprises a controller/video processor 170 and laser light source 120, with the processor generating signals controlling the laser source and scanner ([0029]-[0031], [0039]-[0043], [0051]-[0056]; Figs. 1-4).
Claim 25.
Chayet et al. teaches outputting laser beams in predefined horizontal-and-vertical raster patterns controlled by scanner 130 ([0041]-[0045], [0053]-[0056]; Fig 1-4).
Khuri-Yakub et al. additionally teaches predefined spatial and temporal stimulation patterns ([0064]-[0068]).
Claim 26.
Wang et al. teaches independently exciting spatially arranged absorption films 84 and 86 with patterned laser activation and selected time delays to generate corresponding acoustic-wave interference patterns ([0040]-[0045]; Figs. 8A-8C; claim 41).
Claim 27.
Khuri-Yakub et al. teaches that the acoustic energy stimulating the retinal neuronal cells is focused ultrasound (Abstract, [0019]-[0026], [0029]-[0033], [0062]-[0068]).
Wang et al. likewise expressly identifies the photoacoustically generated energy as ultrasound ([0016], [0040]-[0045]).
Claim 28.
The combined references teach the claimed method for the reasons stated regarding claim 21:
Capturing images- Chayet et al. via the disclosed external video-source camera and camera 262 ([0050], [0052]).
Generating laser beams based on processing the images- Chayet et al. via the disclose video processor 170 and laser source 120 ([0029]-[0031], [0039]-[0041], [0051]-[0053])
Outputting the laser beam towards an externally positioned absorptive element- Wang et al. via the activating lasers and energy absorption films, as substituted into Khuri-Yakub’s external retinal stimulation arrangement (Wang [0016], [0040]-[0045]; Khuri-Yakub, [0069]-[0073]).
Producing acoustic energy via the photoacoustic effect- Wang et al. ([0016], [0040]-[0045]); and
Causing neural depolarization- Khuri-Yakub et al. via the ultrasound-induced retinal ganglion firing ([0019]-[0029], [0033], [0062]-[0068]).
Claim 29.
Chayet et al. teaches outputting laser beams in predefined horizontal-and-vertical raster patterns controlled by scanner 130 ([0041]-[0045], [0053]-[0056]; Fig 1-4).
Khuri-Yakub et al. additionally teaches predefined spatial and temporal stimulation patterns ([0064]-[0068]).
Claim 30.
Wang et al. teaches pulsed activating lasers, selected triggering times, and spatially arranged absorption films independently excited to generate a controlled acoustic pattern ([0040]-[0045]).
Claim 31.
Khuri-Yakub et al. teaches acoustic stimulation using focused ultrasound ([0019]-[0029], [0033], [0062]-[0068]), and
Wang et al. identifies the photoacoustically generated energy as ultrasound ([0016], [0040]-[0045]).
Claim 32.
Wang et al. teaches independently generated acoustic signals forming a controlled acoustic-wave interference pattern ([0040]-[0045]; Figs. 8A-8C)
Claim 33.
Wang et al. teaches that the acoustic-wave interference pattern corresponds to the spatial arrangement, independent excitation, and timing of the activating laser beams applied to the absorption films 84 and 86 ([0040]-[0045]; Figs 8A-8C)
Claim 34.
Khuri-Yakub et al. teaches a contact-lens like retinal stimulation device disposed over the front portion of the eye ([0068]-[0073]; Figs. 5A-5C).
It would have been obvious to position Wang’s substituted absorption element over the lens portion to preserve Khuri-Yakub’s external, non-invasive alignment with the retina.
Claim 35.
The combined references teach the claimed image capture, image-responsive laser generation, laser output, photoacoustic conversion, and neuronal depolarization operations for the reasons stated regarding claims 21 and 28. Chayet et al. further teaches process-implemented mapping and analysis software and storage of video frames in a buffer ([0051]-[0067]).
Therefore, it would have been obvious to store the instructions implementing these processor operations on a conventional non-transitory computer-readable memory to permit their execution by the processor.
Claim 36.
Chayet et al. teaches processor-controlled output of laser beams in predefined raster patterns ([0041]-[0045], [0053]-[0056]), and
Wang et al. teaches patterned activation of the photoacoustic films ([0040]-[0045]).
Claim 37.
Wang et al. teaches pulsed activating lasers, selected trigger timing, and laser excitation of absorptive films at distinct spatial locations ([0040]-[0045])
Claim 38.
Khuri-Yakub et al. teaches focused ultrasound stimulation of retinal neuronal cells ([0019]-[0029], [0033], [0062]-[0068]), and
Wang et al. teaches photoacoustic generation of ultrasound ([0016], [0040]-[0045]).
Claim 39.
Wang et al. teaches a pattern of acoustic signals formed by independently exciting an array of absorptive films to produce an acoustic-wave interference pattern ([0040]-[0045]; Figs 8A-8C)
Claim 40.
Wang et al. teaches that the acoustic-signal pattern corresponds to the pattern and timing of laser excitation applied to spatially arranged absorption films 84 and 86 ([0040]-[0045]; Fig. 8A-8C)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE F JOHNSON whose telephone number is (571)270-5040. The examiner can normally be reached Monday-Friday 8:00am-5:00pm EST.
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/NICOLE F JOHNSON/Primary Examiner, Art Unit 3796
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