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 .
Claim Objections
Claims 1, 4-8, 12-13, 16-16 are objected to because of the following informalities:
Claim 1 “dual port” in line 1 should be amended to “dual-port”.
Claim 4 recites “to claim 3 composing” should be amended to “to claim 3, comprising”.
Claim 5 recites “to claim I wherein” should be amended to “to claim 1, wherein”.
Claim 6 recites “to claim I wherein” should be amended to “to claim 1, wherein”.
Claim 7 recites “to claim 6 composing” should be amended to “to claim 6, comprising”.
Claim 8 recites “to claim I further” should be amended to “to claim 1, further”.
Claim 12 recites “to claim 11 having” should be amended to “to claim 11, having”.
Claim 13 recites “to claim 11 wherein” should be amended to “to claim 11, wherein”.
Claim 15 recites “to claim 14 wherein” should be amended to “to claim 14, wherein”.
Claim 16 recites “to claim 9 further” should be amended to “to claim 9, further”.
Appropriate correction is required.
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 2-8, 10-16 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.
Claims 2-8 recites the limitation "an adapter" in line 1 of each claim respectively; it is unclear whether this is the same as the “dual port switching adapter” of claim 1 or not. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "a base unit" in line 1; it is unclear whether this is the same as the “base unit” of claim 1 or not. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "an adaptor"; it is unclear whether this is the same as the “adaptor” of claim 1 or not. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation " flexible wave guide"; it is unclear whether this is the same as the “flexible wave guide” of claim 14 or not. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation " articulated arm"; it is unclear whether this is the same as the “articulated arm” of claim 1 or not. There is insufficient antecedent basis for this limitation in the claim.
Claims 10-16 recites the limitation "a medical laser unit" in line 1 of each claim respectively; it is unclear whether this is the same as the “medical laser unit” of claim 9 or not. 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 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.
Claims 1-4, 6-7, 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent Number 4,532,400 issued to Toida et al (hereinafter “Toida”).
Regarding claim 1. Toida discloses a dual port switching adaptor comprising (e.g. Abstract, Col. 8, lls 25-27 “light guide means for guiding said mixed laser beam and visible guide beam to a desired target”) a connection part for mounting to a base unit (e.g. 801; Fig. 1), an input beam port to receive a main laser beam from a base unit (e.g. exit of 201 and/or second beam 301, Fig. 1), a first output port for connection to a flexible hollow wave guide (beam 502 to light guide 11, fig. 1), a second output port for connection to an articulated arm (beam 202 and/or second beam 301 to light guide 10, fig. 1), and a switching element moveable between a first position and a second position to direct an input beam to one of the first output port and the second output port (e.g. optical path change-over means 8, Fig. 1), the adaptor further comprising an auxiliary guide beam source (e.g. 4, Fig. 1), and a beam combiner to direct an auxiliary guide beam to the first output port (e.g. 7, 8, 9, Fig. 1).
Regarding claim 2. Toida discloses an adaptor according to claim 1, wherein the switching element comprises a mirror (e.g. Fig. 1, 801 mirror movable to redirect laser beam).
Regarding claim 3. Toida discloses an adaptor according to claim 2, wherein the mirror is moveable in a linear direction between the first position and the second position (e.g. Fig. 1, displacing the reflection mirror 801; it is noted that the claim does not provide any details regarding the directions and axes of planes. Under its BRI, any movement could be considered to be in a linear direction).
Regarding claim 4. Toida discloses an adaptor according to claim 3 comprising a linear actuator operable to move the switching element between the first position and the second position (e.g. displacing the reflection mirror 801, Fig. 1).
Regarding claim 6. Toida discloses an adaptor according to claim I wherein the input beam port defines an input beam path extending generally vertically (e.g. 201, Fig. 1), and wherein one of the first and second output ports extend substantially vertically in line with the input beam path (fig. 1), and the other of the first output port and second output port extend at an angle relative to the input beam path (e.g. 502, Figs 1-4).
Regarding claim 7. Toida discloses an adaptor according to claim 6 wherein, in one of the first position and of the second position the switching element extends into the input beam path (mirror 801 at diagonal position indicated by solid line, Fig. 1), and in the other of the first position and second position, is spaced from the input beam path (mirror 801 at vertical position indicated by dashed line, Fig. 1).
Regarding claim 9. Toida discloses a medical laser unit comprising a base unit, the base unit comprising a laser source and a base unit output port, and an adaptor according to an adaptor according to claim 1, the adaptor being mounted on the base unit (fig. 1) such that the input beam port is connected to the base output beam port to receive the main beam from the main laser source (fig 1, see rejection of claim 1), the base unit comprises a main guide beam source (fig 1, see rejection of claim 1) and alignment optics wherein the main guide beam is aligned with the main beam (e.g. “optic axis alignment?”).
Regarding claim 10. Toida discloses a medical laser unit according to claim 9, wherein the main laser source comprises a CO2 laser to provide the main beam (Col 2, ll, 38).
Regarding claim 11. Toida discloses a medical laser unit according to claim 9, but fails to disclose comprising a control unit operable to control the main laser source (Fig. 1; Note: “operable to control the main laser source” is a functional language; in fact, the control unit of Toida controls the operational position of the mirror 801, which therefore controls the light path of the main laser).
Claim 5, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toida as provided above in view of U.S. Patent Publication Number 20070147752 granted to Welsberg et al. (hereinafter “Welsberg”).
Regarding claim 5. Toida discloses an adaptor according to claim I But fails to disclose wherein the auxiliary guide beam is controllable to direct the auxiliary guide beam into a cladding layer of the hollow wave guide.
Welsberg teaches wherein providing a flexible hollow wave guide having a cladding layer (e.g. Paras. 0019-0020) the auxiliary guide beam is controllable by a control unit (e.g. Para. 0151) to direct the auxiliary guide beam into the cladding layer of the hollow wave guide (e.g. Para. 0005), providing a control unit to one or more of: control movement of the moveable switching unit, activation of the main beam source and activation of the auxiliary beam source; control unit to control the switch (e.g. Para. 151), activation of invisible to the eye laser (e.g. 110), activation of visible to the eye laser (e.g. 120).
It would have been obvious to one of ordinary skill in the art at the time to modify Toida with the teachings of Welsberg to provide the predictable result of a controller to allow the operator to control the operation and orientation of the output end to direct the radiation to a target location of the patient (e.g. Para. 0016).
Regarding claim 13. Toida discloses a medical laser apparatus according to claim 11 but fails to explicitly disclose wherein the control unit is operable to control the switching element.
Welsberg teaches wherein providing a flexible hollow wave guide having a cladding layer (e.g. Paras. 0019-0020) the auxiliary guide beam is controllable by a control unit (e.g. Para. 0151) to direct the auxiliary guide beam into the cladding layer of the hollow wave guide (e.g. Para. 0005), providing a control unit to one or more of: control movement of the moveable switching unit, activation of the main beam source and activation of the auxiliary beam source; control unit to control the switch (e.g. Para. 151), activation of invisible to the eye laser (e.g. 110), activation of visible to the eye laser (e.g. 120).
It would have been obvious to one of ordinary skill in the art at the time to modify Toida with the teachings of Welsberg to provide the predictable result of a controller to allow the operator to control the operation and orientation of the output end to direct the radiation to a target location of the patient (e.g. Para. 0016).
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Toida as provided above, in view of U.S. Patent Number 4,550,240 issued to Toida ‘240.
Regarding claim 8. Toida discloses an adaptor according to claim I but fails to disclose further comprising a cooling fluid connection to supply cooling fluid to the first output port.
Toida ‘240 teaches a substantially same optical apparatus as that of Toida, and further teaches a cooling fluid connection to supply cooling fluid to the first output port (12, Fig. 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Toida apparatus in combination with Abe by incorporating a cooling fluid connection, as taught by Toida ‘240, because doing so facilitates proper operation of fiber light guide, i.e., the hollow wave guide, of Toida within a safe temperature control.
Regarding claim 16. A medical laser unit according to claim 9 but fails to disclose further comprising a pressurized gas source and a pressurized gas controller, the control unit being operable to control the pressurized gas controller to direct cooling fluid to one of the first output port and an articulated arm.
Toida ‘240 teaches a substantially same optical apparatus as that of Toida, and teaches a first assisted gas that is sent under pressure into the handpiece (12, 13, 17, 18 Fig. 1; Note: the control unit can be an operator or a user who operates the control the pressurized gas controller). It would have been obvious to one of ordinary skill in the art at the time to modify Toida with the teachings of Toida ‘240 to provide the predictable result of providing assist gas to each laser output.
Claims 12 are rejected under 35 U.S.C. 103 as being unpatentable over Toida as provided above, in view of Abe et al (US 2014/0121653; hereinafter “Abe”; Abe’s earlier-filed foreign application JP 2012-239698 (or the corresponding publication JP 2014-87505)
Regarding claim 12. Toida discloses a medical laser unit according to claim 11 having a user input device to receive user instructions (see rejection of claim 11) and but fails to disclose transmit instructions to the control unit. Abe teaches a control unit (24, Fig. 8; Par. 33) to control the medical laser unit comprising a touch panel, which receives user instructions and transmit instructions to the control unit (12, Fig. 7-8; Par. 42-45). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Toida invention by incorporating a touch panel of a control unit, as taught by Abe, because doing so facilitates convenient control to the medical laser unit through user input on the touch panel.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Toida as provided above, in view of Tierney et al (US 2002/0072736; hereinafter “Tierney”).
Regarding claim 14. Toida discloses a medical laser unit according to claim 9, but fail to disclose further comprising a device operable to detect if a flexible wave guide is connected to the first output port.
Tierney teaches a circuitry device that detects a signal of coupling between two components before actuation of the components are performed (Par. 11-12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Toida invention by incorporating a circuitry device, as taught by Tierney, because doing so ensures a connection between the flexible wave guide and the first output port before laser is delivered.
Regarding claim 15. Toida as modified by Tierney renders obvious a medical laser apparatus according to claim 14 wherein, in the event the device detects a flexible wave guide is connected to the first output port, the control unit is operable to; control the switching element to direct the C02 laser beam to the first output port, and control the auxiliary guide beam source (Fig. 1; Col. 4, ll. 34 – Col. 5, ll. 64; Note: in Col. 5, ll. 44-64, Toida teaches that the first output port and the second output port can be replaced with each other; therefore, the CO2 laser beam can then be directed to the first output port).
Double Patenting
Claims 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. US 12242113 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. US 10955619 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. US 10746936 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Conclusion
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/SANA SAHAND/Examiner, Art Unit 3796
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