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 .
DETAILED ACTION
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: ILLUMINATION DEVICE WITH A HANDPIECE AND LIGHT GUIDE UNIT AND CONVERTER FOR CONVERTING THE RADIATION TO ILLUMINATING LIGHT.
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 3 and 9-11 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.
Claim 3 is indefinite as it recites an improper Markush group. See MPEP § 2173.05(h) I. Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1925).
Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. However, in this case the claim is ambiguous as to whether it is claiming alternative material compositions of the converter material or if all the material compositions for the converter material are collectively included or combined.
Claim 9 recites the limitation "the outer lying converter element" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
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.
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 applicant is respectfully advised that in examining a pending application, the claims are interpreted as broadly as their terms reasonably convey. In re American Academy of Science Tech Center, 70 USPQ2d. 1827, 1834 (Fed. Cir. May 13, 2004). MPEP § 2111.01.
Claims 1-2, 4-8 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Jung (U.S. PG Publication No. 2018/0256033).
Regarding Claim 1, Jung discloses in Figures 1-4, an Illumination system, comprising a handpiece 10 having an illumination unit and a semiconductor lighting element 17, wherein the at least one semiconductor lighting element 17 has in the operating state a radiation of essentially blue light in the wavelength range between 400 nm and 500 nm (blue LED 17 Para 0036), and a light guide unit 120 which is releasably connected and/or connectable to the handpiece 10 wherein the light guide unit 120 comprises a fiber-optic light guide rod, having a proximal end face and a distal end face, and a sleeve 13, wherein the fiber-optic light guide rod 120 is fixed in the sleeve 13 in a portion starting from the proximal end face, and wherein the light guide 120 unit comprises a one converter 130, the converter converting the radiation of the semiconductor lighting element in the operating state into a distal radiation of the fiber-optic light guide rod at its distal end face so that the distal radiation in the operating state has essentially white and/or color-neutral light L2 (Para 0036), or colored light, of a one wavelength or of a one wavelength range in the visible spectral range.
Jung does not explicitly disclose the fiber-optic light guide rod 120 is fixed in the sleeve 13 by a first adhesive.
It would have been obvious to one of ordinary skill in the art to use an adhesive to fix the light guide pipe 120 into the sleeve (coupling pipe 13), because a person of ordinary skill would have had good reason to pursue the known option(s) of adhesive to fix the light guide to the sleeve which is considered to be within his or her technical grasp. This leads to the anticipated success of proving a simple and cost-effective mode for fixable connecting the two elements and it is determined that the usse of adhesive for jolinint a fiber optic to supporting sleeve or coupling pipe 13 is not of innovation, but of ordinary skill and common sense. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Regarding Claim 2, Jung discloses the illumination system according to claim 1, wherein the converter 130 is assigned to the proximal end face of the fiber-optic light guide rod 120 and at least partially overlaps the proximal end face, and is arranged facing towards the illumination unit 17 when the light guide unit 120 and the handpiece 10 are connected.
Regarding Claims 4-6,Jung discloses the converter as a disc shaped but is silent as to the thickens he illumination system according to claim 1, wherein the converter is formed as one or more disc-shaped converter elements consisting of a converter material, each of which has a thickness of from 30 μm to 200 μm.
It would have been obvious to one of ordinary skill in the art at the time of filing to have the thickness as claimed depending on the size requirements of the light guide rod, since it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984),
Regarding Claim 7, Jung does not disclose the illumination system according to claim 4, wherein the one or more converter elements of the converter 130 are adhesively bonded by a second adhesive onto the proximal end face of the fiber-optic light guide rod and/or to one another, the second adhesive being substantially optically clear, transparent and permanently elastic in the cured state.
It would have been obvious to one of ordinary skill in the art to use a second adhesive for bonding the converter element to the light guide rod 120, because a person of ordinary skill would have had good reason to pursue the known option(s) of using an adhesive to join optical elements together which is considered to be within his or her technical grasp. This leads to the anticipated success easily and cost effectively fixedly joining the converter to the light guide rod and it is determined that the use of adhseive in this case is not of innovation, but of ordinary skill and common sense. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Regarding Claim 8, Jung discloses the illumination system according to claim 1, further comprises on: the color location in the case of colored distal radiation or the color temperature in the case of white or color-neutral distal radiation is adjustable by the composition of the converter and/or of the one or more converter elements, the color location in the case of colored distal radiation or the color temperature in the case of white or color-neutral distal radiation is adjustable by the thickness of the converter and/or of the one or more converter elements, or the color location in the case of colored distal radiation or the color temperature in the case of white or color-neutral distal radiation is adjustable by the porosity of the converter and/or of the one or more converter elements (the two color filters of Red and Green combined form a white emitted light, Para 0037).
Regarding Claim 12, Jung discloses. the illumination system according to claim 1, wherein a color filter (red and green) is arranged between the converter and the proximal end face of the fiber-optic light guide rod 120 (Para 0137).
Regarding Claim 13, Jung discloses in Figures 1-4, the illumination system according to claim 1, wherein the sleeve 13 has a widening of the inner diameter in the region of the converter and/or of the cover, so that an adhesive reservoir is formed or formable.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Jung (U.S. PG Publication No. 2018/0256033) as applied to claim 1 above, and further in view of Schultheis (U.S. PG Publication No. 2021/0169316).
Regarding Claim 3, as best understood, Jung does not disclose the illumination system according to claim 1, further comprising: the converter comprises a ceramic converter material of the type Ce:YAG, the converter comprises a ceramic converter material of the type Ce:YAG with additional Ga doping, the converter comprises a ceramic converter material of the type Ce:LuAG, the converter comprises a ceramic converter material of the type Ce:LuAG with additional Gd doping, the converter comprises a ceramic converter material of the type Eu:SiN, Eu:SiON and/or Eu:SiAlON, the converter comprises a converter material as a material composite of a glass matrix with particles of a phosphor incorporated therein, the converter comprises a converter material as a material composite of a ceramic matrix with particles of a phosphor incorporated therein, the converter comprises a converter material as a material composite of a polymer matrix with particles of a phosphor incorporated therein, or the converter comprises a combination of at least two converter materials.
Schultheis discloses a converter material used in an endoscope lighting system having at least two ceramic converter materials (Para 0170).
It would have been obvious to one of ordinary skill in the art to use the ceramic materials of Schultheis for the converter 130 in Jung. All the claimed elements in Jung and Schultheis were known in the prior art and one skilled in the art could have combined the ceramic converter materials as claimed with no change in their respective functions, and the combination would have yielded the predictable result providing a advantageous conversion with a high CRI (Para 0170) to one of ordinary skill in the art at the time of filing. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Allowable Subject Matter
Claims 9-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Schatz (U.S. Patent No. 8,038,439) discloses a handpiece for a medical instrument with blue light emitting diode and converter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J MAY whose telephone number is (571)272-5919. The examiner can normally be reached M-F 10AM-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached at 571-272-7044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J MAY/Primary Examiner, Art Unit 2875