DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Information Disclosure Statement
2. The Information Disclosure Statement submitted on 29 August 2025 and 02 March 2026 has been considered by the Examiner.
Claim Objections
3. Claim 10 is objected to because of the following informality.
Claim 10 contains a minor grammatical error.
Claim 10, lines 3-4: The Examiner suggests changing “a second degree of flexibility different form the first degree of flexibility” to “a second degree of flexibility different from the first degree of flexibility”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 2, 4, 6-8, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Hipsley (US 2014/0316388 A1).
Regarding claim 2, Hipsley teaches a system configured to perform an intraocular procedure ([0189]), said system comprising:
a laser unit comprising an excimer laser source (the laser system 102 may comprise an excimer laser [0059-0061, 0077, 0088]); and
a laser probe couplable to said laser unit (the handheld probe 130 is connected to the laser system 102 [0059-0061, 0077, 0088]), the laser probe comprising a handheld component (handheld probe 130 [0059-0061, 0077, 0088]) and a fiber optic core configured to transmit laser energy from the excimer laser source to a target tissue for treatment thereof (the laser system 102 delivers a laser beam via the laser delivery fiber 120 to the handheld probe 130 and into the patient’s eye 140 [0077]).
Hipsley does not explicitly teach a plurality of laser probes couplable, one at a time, to said laser unit.
The Examiner respectfully submits, as Hipsley teaches the use of a laser probe and a laser unit (the handheld probe 130 is coupled to the laser system 102 [0059-0061, 0077, 0088]), configuring the exact number of laser probes that are coupled to the laser unit would be a matter of duplicating the known elements without producing a new and unexpected result, with such matters having been held by the Courts as being obvious to the skilled artisan (MPEP 2144.04).
Hipsley teaches wherein the plurality of laser probes comprises different laser probes having different characteristics (the handheld probes 130 can have one or more tips with different characteristics [0082, 0092]. For example, each tip can be configured to be flat, angled, or rounded [0082, 0092]), wherein the plurality of laser probes further comprises:
a first laser probe comprising a first handheld component having a first size or shape (the first handheld probe 130 has a size dimension, such as the diameter of the probe tip ranging from 100 to 600 microns [0082, FIG. 1]. Furthermore, the structure of the first handheld probe 130 would inherently comprise other dimensions, such as a width and a length [FIG. 1]. Alternatively, it is considered inherent that the first handheld probe 130 would comprise a shape [FIG. 1]), and a second laser probe comprising a second handheld component having a second size or shape (as stated previously, the laser system 102 was modified to comprise a plurality of handheld probes 130 [0059-0060, 0082, 0088]. The second handheld probe 130 has a size dimension, such as the diameter of the probe tip ranging from 100 to 600 microns [0082, FIG. 1]. Furthermore, the structure of the second handheld probe 130 would inherently comprise other dimensions, such as a width and a length [FIG. 1]. Alternatively, it is considered inherent that the first handheld probe 130 would comprise a shape [FIG. 1]), wherein each of the first laser probe and the second laser probe are each compatible for use with the laser unit (the handheld probes 130 are compatible for use with the laser system 102 [0059-0060, 0077, 0088]).
Regarding claim 4, Hipsley teaches wherein the fiber optic core of each of the plurality of laser probes further comprises a proximal end detachably couplable to the laser unit (the proximal end of laser delivery fiber 120 has a connector that is coupled to the laser system 102 [0059, FIG. 1]) and a distal end including a delivery tip configured to emit laser energy from the excimer laser source (the distal end of the delivery fiber 120 is configured to deliver the laser energy through the handheld probe 130 and into the patient’s eye [0059-0060, 0077, FIG. 1]).
Regarding claim 6, Hipsley suggests the system of claim 2. Hipsley teaches wherein the first size or shape of the first handheld component comprises a first width of the first handheld component (the first handheld probe 130 comprises a diameter [0082, FIG. 1]. Furthermore, the structure of the first handheld probe 130 would inherently comprise other dimensions, such as a width and a length [FIG. 1]) and the second size or shape of the second handheld component comprises a second width of the second handheld component (as stated previously in claim 2, the laser system was modified to comprise a plurality of handheld probes 130 [see claim 2 above]. Specifically, the second handheld probe 130 comprises a diameter [0082, FIG. 1]. Furthermore, the structure of the second handheld probe 130 would inherently comprise other dimensions, such as a width and a length [FIG. 1]).
Hipsley does not explicitly teach wherein the second width of the second handheld component is different from the first width of the first handheld component.
The Examiner respectfully submits, as Hipsley teaches the handheld components to comprise a width (each of the handheld probes 130 comprises a diameter [0082, FIG. 1]. Furthermore, its inherent that the handheld probes 130 would contain a width and a length [FIG. 1]), configuring the width of the handheld components to be different would be a matter of changing the size of the known elements without producing a new and unexpected result, with such matters having been held by the Courts as being obvious to the skilled artisan (MPEP 2144.04).
Regarding claim 7, Hiplsey suggests the system of claim 2. Hipsley teaches wherein the first size or shape of the first handheld component comprises a first length of the first handheld component (the first handheld probe 130 comprises a diameter [0082, FIG. 1]. Furthermore, the structure of the first handheld probe 130 would inherently comprise other dimensions, such as a width and a length [FIG. 1]) and the second size or shape of the second handheld component comprises a second length of the second handheld component (as stated previously in claim 2, the laser system was modified to comprise a plurality of handheld probes 130 [see claim 2 above]. Specifically, the second handheld probe 130 comprises a diameter [0082, FIG. 1]. Furthermore, the structure of the second handheld probe 130 would inherently comprise other dimensions, such as a width and a length [FIG. 1]).
Hipsley does not explicitly teach wherein the second length of the second handheld component is different from the first length of the first handheld component.
The Examiner respectfully submits, as Hipsley teaches the handheld components to comprise a length (each of the handheld probes 130 comprises a diameter [0082, FIG. 1]. Furthermore, its inherent that the handheld probes 130 would contain a width and a length [FIG. 1]), configuring the length of the handheld components to be different would be a matter of changing the size of the known elements without producing a new and unexpected result, with such matters having been held by the Courts as being obvious to the skilled artisan (MPEP 2144.04).
Regarding claim 8, Hipsley suggests the system of claim 2. Hipsley teaches wherein the first size or shape of the first handheld component comprises a first diameter of the first handheld component (the first handheld probe 130 comprises a diameter [0082, FIG. 1]) and the second size or shape of the second handheld component comprises a second diameter of the second handheld component (as stated previously in claim 2, the laser system was modified to comprise a plurality of handheld probes 130 [see claim 2 above]. Specifically, the second handheld probe 130 comprises a diameter [0082, FIG. 1]).
Hipsley does not explicitly teach wherein the second diameter of the second handheld component is different from the first diameter of the first handheld component.
The Examiner respectfully submits, as Hipsley teaches the handheld components to comprise a diameter (each of the handheld probes 130 comprises a diameter [0082, FIG. 1]), configuring the diameter of the handheld components to be different would be a matter of changing the size of the known elements without producing a new and unexpected result, with such matters having been held by the Courts as being obvious to the skilled artisan (MPEP 2144.04).
Regarding claim 19, Hipsley teaches a system configured for use in performing an intraocular procedure ([0189]), said system comprising:
a laser unit comprising a laser source (the laser system 102 may comprise an excimer laser [0059-0061, 0077, 0088]); and
a laser probe couplable to said laser unit (the handheld probe 130 is connected to the laser system 102 [0059-0061, 0077, 0088]), the laser probe comprising a handheld component (handheld probe 130 [0059-0061, 0077, 0088]) and a fiber optic core configured to transmit laser energy from said laser source to a target tissue for treatment thereof (the laser system 102 delivers a laser beam via the laser delivery fiber 120 to the handheld probe 130 and into the patient’s eye 140 [0077]).
Hipsley does not explicitly teach a plurality of laser probes couplable to said laser unit.
The Examiner respectfully submits, as Hipsley teaches the use of a laser probe and a laser unit (the handheld probe 130 is coupled to the laser system 102 [0059-0061, 0077, 0088]), configuring the exact number of laser probes that are coupled to the laser unit would be a matter of duplicating the known elements without producing a new and unexpected result, with such matters having been held by the Courts as being obvious to the skilled artisan (MPEP 2144.04).
Hipsley teaches wherein the plurality of laser probes comprises one or more characteristics tailored to a respective user (the handheld probes 130 can have one or more tips with different characteristics [0082, 0092]. For example, each tip can be configured to be flat, angled, or rounded [0082, 0092]. The Examiner respectfully submits that the user may select either the flat, angled, or rounded tip for the procedure [0082, 0092]).
Regarding claim 20, Hipsley teaches wherein said intraocular procedure is a laser trabeculostomy (the laser may target any desired connective tissue, such as the trabecular meshwork or Schlemm’s canal [0054-0055, 0057]).
Regarding claim 21, Hipsley teaches wherein said target tissue comprises at least one of a trabecular meshwork or Schlemm's canal (the laser may target any desired connective tissue, such as the trabecular meshwork or Schlemm’s canal [0054-0055, 0057]).
6. Claims 3, 9, 12, 14-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hipsley in view of Mordaunt et al. (US 2007/0265602 A1).
Regarding claim 3, Hipsley suggests the system of claim 2. Hipsley does not explicitly teach wherein the plurality of laser probes are each single-use, disposable probes.
The prior art by Mordaunt is analogous to Hipsley, as they both teach surgical lasers for the eye ([0027]).
Mordaunt teaches wherein the plurality of laser probes are each single-use, disposable probes (the disposable endophotocoagulation probes 14 can be disposed after usage [0002, 0024, 0027, 0029]. Specifically, only one probe 14 is attached at a time with the laser unit 10 [FIG. 1, 0002, 0024, 0027, 0029]).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to modify each of the respective probes suggested by Hipsley to be disposable probes, as taught by Mordaunt. The advantage of this modification will improve the sterility of the laser system by disposing each probe after usage (see paragraph [0029] by Mordaunt).
Regarding claim 9, Hipsley suggests the system of claim 2. Hipsley does not explicitly teach wherein each of the plurality of laser probes further comprises an outer jacket surrounding the fiber optic core.
However, Mordaunt teaches wherein each of the plurality of laser probes further comprises an outer jacket surrounding the fiber optic core (the probe 14 comprises a jacket 60 that surrounds the fiber bundle 12 [0027, FIG. 1]).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to modify each of the respective probes suggested by Hipsley to comprise an outer jacket surrounding the fiber optic core, as taught by Mordaunt. This modification is beneficial, as the outer jacket will help maintain the fiber bundle (see paragraph [0027] by Mordaunt).
Regarding claim 12, Hipsley teaches a method for performing intraocular procedures ([0189]), said method comprising:
coupling a first laser probe to a laser unit (the handheld probe 130 is connected to the laser system 102 [0059-0061, 0077, 0088]);
applying first laser energy to an eye of a first patient during a first intraocular procedure using the laser unit and the first laser probe (the laser system 102 delivers a laser beam through the handheld probe 130 and into the patient’s eye [0077]);
removing the first laser probe from the laser unit (the laser system 102 is detachably connected with the hand piece 130 [0059, 0081-0082, 0085]. Specifically, a connector is used to facilitate the connection between the laser system 102 and the handheld probe 130 [0059]).
Hipsley does not explicitly teach coupling a second laser probe to the laser unit.
The Examiner respectfully submits, as Hipsley teaches the use of a laser probe and a laser unit (the handheld probe 130 is coupled to the laser system 102 [0059-0061, 0077, 0088]), configuring the exact number of laser probes that are coupled to the laser unit would be a matter of duplicating the known elements without producing a new and unexpected result, with such matters having been held by the Courts as being obvious to the skilled artisan (MPEP 2144.04).
Hipsley teaches applying second laser energy to an eye of a second patient during a second intraocular procedure using the laser unit and the second laser probe (as stated previously above, the laser system 102 is designed to deliver the laser beam through the handheld probe 130 and into the patient’s eye 140 [0077]. Furthermore, the handheld probe 130 was previously modified to comprise a plurality of probes that are used with the laser system 102 [see the modification above]. The Examiner respectfully submits that the laser system is designed for intraocular procedures on a variety of patients [0212]), wherein the laser probes comprise:
a handheld component (handheld probe 130 [0059-0061, 0077, 0088]);
and a fiber optic core including a proximal end detachably coupleable to the laser unit (the proximal end of laser delivery fiber 120 has a connector that is coupled to the laser system 102 [0059, FIG. 1]) and a distal end including a delivery tip for emitting laser energy (the distal end of the delivery fiber 120 is configured to deliver the laser energy through the handheld probe 130 [0059-0060, 0077, FIG. 1]), transmitted via the fiber optic core from said laser source when coupled thereto (the laser system 102 delivers a laser beam via the laser delivery fiber 120 to the handheld probe 130 and into the patient’s eye 140 [0077]), to a target tissue for ablation thereof ([0077, 0096, FIG. 1]), wherein each of said plurality of laser probes comprises one or more characteristics tailored to a respective user (the handheld probes 130 can have one or more tips with different characteristics [0082, 0092]. For example, each tip can be configured to be flat, angled, or rounded [0082, 0092]), such that the first laser probe has a first personalization and the second laser probe has a second personalization different from the first personalization (the Examiner respectfully submits that each of the handheld probes 130 can be coupled with a different delivery tip [0082, 0092]. For example, the first probe may have an angled delivery tip and the second probe may have a flat delivery tip [0082, 0092]).
Hipsley does not explicitly teach wherein the first laser probe is one of a plurality of single-use, disposable laser probes coupleable, one at a time, to the laser unit;
wherein the second laser probe is one of the plurality of single-use, disposable laser probes; and
the fiber optic core extending through the handheld component.
The prior art by Mordaunt is analogous to Hipsley, as they both teach surgical lasers for the eye ([0027]). Mordaunt teaches wherein the first probe is one of a plurality of single-use, disposable probes coupleable, one at a time, to the laser unit (the disposable endophotocoagulation probes 14 can be disposed after usage [0002, 0024, 0027, 0029]. Specifically, only one probe 14 is attached at a time with the laser unit 10 [FIG. 1, 0002, 0024, 0027, 0029]);
wherein the second laser probe is one of the plurality of single-use, disposable laser probes (disposable endophotocoagulation probes 14 [0002, 0024, 0027, 0029]); and
the fiber optic core extending through the handheld component (the fiber bundle 12 extends through the jacket 60, the handle 62, and the tip 64 [0027, FIG. 1]).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to modify each of the respective probes suggested by Hipsley to be one of a plurality of disposable probes, as taught by Mordaunt. The advantage of this modification will improve the sterility of the laser system by disposing each probe after usage (see paragraph [0029] by Mordaunt). Furthermore, it would have been obvious to a person having ordinary skill in the art to modify Hipsley’s delivery fiber to extend through the handheld component, as taught by Mordaunt. The advantage of this modification may provide a more secure fit between the handheld component and the delivery fiber (see paragraph [0027] by Mordaunt).
Regarding claim 14, Hipsley in view of Mordaunt suggests the method of claim 12. Hipsley teaches wherein the first personalization comprises a first delivery tip with a first delivery tip bevel angle (the delivery tip of the first handheld probe 130 may be angled, rounded, or flat [0082, 0092]) and the second personalization comprises a second delivery tip with a second delivery tip bevel angle (as stated previously in claim 12, the laser system was modified to comprise a plurality of handheld probes 130 [see claim 12 above]. The delivery tip of the second handheld probe 130 may be angled, rounded, or flat [0082, 0092]).
Hipsley and Mordaunt do not explicitly teach wherein the second delivery tip bevel angle is different from the first delivery tip bevel angle.
The Examiner respectfully submits, as Hipsley teaches the probes to comprise a delivery tip bevel angle (the delivery tip may be angled [0082, 0092]), configuring each of the delivery tips to have a different bevel angles would be a matter of changing the shape of the known elements without producing a new and unexpected result, with such matters having been held by the Courts as being obvious to the skilled artisan (MPEP 2144.04).
Regarding claim 15, Hipsley in view of Mordaunt suggests the method of claim 12. Hipsley teaches wherein the first personalization comprises a first size of said handheld component of the first laser probe (the first handheld probe 130 has a size dimension, such as the diameter of the probe tip ranging from 100 to 600 microns [0082, FIG. 1]. Furthermore, the structure of the first handheld probe 130 would inherently comprise other dimensions, such as a width and a length [FIG. 1]) and the second personalization comprises a second size of said handheld component of the second laser (as stated previously in claim 12, the laser system was modified to comprise a plurality of handheld probes 130 [see claim 12 above]. The second handheld probe 130 has a size dimension, such as the diameter of the probe tip ranging from 100 to 600 microns [0082, FIG. 1]. Furthermore, the structure of the second handheld probe 130 would inherently comprise other dimensions, such as a width and a length [FIG. 1]).
Hipsley and Mordaunt do not explicitly teach wherein the second size of said handheld component of the second laser probe is different from the first size.
The Examiner respectfully submits that Hipsley teaches the handheld probes to comprise a size (the handheld probes 130 comprises a diameter [0082, FIG. 1]. Additionally, its inherent that the handheld probes 130 would contain a width and a length [FIG. 1]). Thus, configuring the size of the handheld probes to be different would be a matter of changing the shape of the known elements without producing a new and unexpected result, with such matters having been held by the Courts as being obvious to the skilled artisan (MPEP 2144.04).
Regarding claim 17, Hipsley teaches wherein said intraocular procedures are laser trabeculostomies; and said target tissue comprises at least one of a trabecular meshwork or Schlemm's canal (the laser may target any desired connective tissue, such as the trabecular meshwork or Schlemm’s canal [0054-0055, 0057])
7. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hipsley in view of Rose et al. (US 2007/0027443 A1).
Regarding claim 11, Hipsley suggests the system of claim 2. Hipsley does not explicitly teach wherein the handheld component of each of the plurality of laser probes further comprises a finger grip portion.
The prior art by Rose is analogous to Hipsley, as they both teach lasers that can be used for ophthalmic applications ([0017]).
Rose teaches wherein the handheld component of each of the plurality of laser probes further comprises a finger grip portion (Rose teaches serval hand pieces or handheld probes that can be interchanged [0044]. Specifically, the hand piece 12 may include surface features such as a roughened surface, patterns of nubs, patterns of divots, knurling, contoured finger intents, silicon rubber, or combinations thereof [0046]. These surface features are designed to aid in providing a secure grip [0046]); and
the finger grip portion further comprises depressions (the hand piece 12 may include surface features such as a pattern of divots [0046]. These surface features are designed to aid in providing a secure grip [0046]).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to modify the each of the probes suggested by Hipsley to comprise a grip pattern consisting of depressions, as taught by Rose. The advantage of such modification will allow each surgeon to select a probe based on the grip pattern that is comfortable for their hand size (see paragraph [0046] by Rose).
8. Claims 16 is rejected under 35 U.S.C. 103 as being unpatentable over Hipsley in view of Mordaunt et al., further in view of Searle et al. (US 2017/0304001 A1).
Regarding claim 16, Hipsley in view of Mordaunt suggests the method of claim 12. Mordaunt teaches an outer jacket surrounding said fiber optic core (jacket 60 surround fiber bundle 12 [0027, FIG. 1]).
Hipsley and Mordaunt do not explicitly teach wherein said outer jacket has a degree of rigidity or flexibility based on a preference of said respective user.
The prior art by Searle is analogous to Hipsley, as they both teach lasers for surgical procedures ([0067]).
Searle teaches wherein said outer jacket has a degree of rigidity or flexibility based on a preference of said respective user ([0070]).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time application was effectively filed to modify the outer jacket suggested by Hipsley in view of Mordaunt to be flexible, as taught by Searle. The benefit of this modification will allow the outer jacket to be easily formed over the optic fiber (see paragraph [0070] by Searle).
Double Patenting
9. 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.
10. Claims 1-11 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,257,189 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a system comprising a laser unit, a first laser probe, a first handheld component, a second laser probe, a second handheld component, and a fiber optic core. Specifically, both sets of claims recite the first laser probe and the second laser probe having different characteristics.
Although not exhaustive, a brief matching of the pending claims to those of U.S. Patent No. 12,257,189 B2 is provided below.
Application no. 19/062,902
U.S. Patent No. 12,257,189 B2
2
1
3
2
4
3
5
4
6
6
7
7
8
8
9
1
10
1
11
11, 12
19
1
20
10
21
9, 10
11. Claims 12-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9 of U.S. Patent No. 11,666,482 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a method comprising a laser unit, a first laser probe, a second laser probe, a handheld component, and a fiber optic core, a delivery tip, a first personalization, and a second personalization.
Although not exhaustive, a brief matching of the pending claims to those of U.S. Patent No. 11,666,482 B2 is provided below.
Application no. 19/062,902
U.S. Patent No. 11,666,482 B2
12
1
13
1
14
2
15
3
16
4, 5
17
6, 7
18
9
Allowable Subject Matter
12. Claims 5, 10, 13, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the double patenting rejections noted above were overcome.
The following is a statement of reasons for the indication of allowable subject matter: The Examiner has provided an explanation below that describes how the prior art of record fails to suggests the corresponding claims.
Regarding claim 5, Hipsley in view of Mordaunt suggests the system of claim 3. Hipsley teaches wherein the first laser probe comprises a first delivery tip (the delivery tip of the first handheld probe 130 may be angled, rounded, or flat [0082, 0092]) and the second laser probe comprises a second delivery tip (as stated previously in claim 2, the laser system 102 was modified to comprise a plurality of handheld probes 130 [see claim 2 above]. The delivery tip of the second handheld probe 130 may be angled, rounded, or flat [0082, 0092]).
Hipsley and Mordaunt do not explicitly teach wherein the first delivery tip has a first flexibility level and the second delivery tip has a second flexibility level different from the first flexibility level.
Thom (US 2019/0262071 A1) teaches the first delivery tip and the second delivery tip having a flexibility level (flexible tips [0007, 0020, 0032, 0035, FIGS. 1-2]).
However, Thom does not explicitly teach the first delivery tip to have a first flexibility level and the second delivery tip to have a second flexibility level different from the first flexibility level.
The Examiner concludes that the prior art does not provide the requisite teaching, suggestion, and motivation to suggest the recited claim limitation. Therefore, the inventive features recited in the pending claims are not disclosed by the prior art and are not suggested by an obvious combination of the most analogous prior art elements.
Regarding claim 10, Hipsley in view of Mordaunt suggests the system of claim 9. Mordaunt teaches wherein the first handheld component comprises a first outer jacket (the disposable endophotocoagulation probes 14 include a handle 62 and an outer jacket 60 [0002, 0027, 0029, FIG. 1]) and the second handheld component comprises a second outer jacket (the disposable endophotocoagulation probes 14 include a handle 62 and an outer jacket 60 [0002, 0027, 0029, FIG. 1]).
Hipsley and Mordaunt do not explicitly teach wherein the first outer jacket comprises a first degree of flexibility and the second outer jacket comprises a second degree of flexibility different from the first degree of flexibility.
McArdle (US 2006/0100613 A1) teaches wherein the first outer jacket comprises a first degree of flexibility (the flexible protective jacket 403 [0086, 0092]). However, McArdle does not explicitly teach a second outer jacket comprising a second degree of flexibility different from the first degree of flexibility.
The Examiner concludes that the prior art does not provide the requisite teaching, suggestion, and motivation to suggest the recited claim limitation. Therefore, the inventive features recited in the pending claims are not disclosed by the prior art and are not suggested by an obvious combination of the most analogous prior art elements.
Regarding claim 13, Hipsley in view of Mordaunt suggests the method of claim 12. Hipsley and Mordaunt do not explicitly teach wherein the first personalization comprises a first delivery tip with a first flexibility level and the second personalization comprises a second delivery tip with a second flexibility level different from the first flexibility level.
Thom (US 2019/0262071 A1) teaches wherein first personalization comprises a first delivery tip with a flexibility level and the second delivery tip comprises a second delivery tip with a flexibility level (flexible tips [0007, 0020, 0032, 0035, FIGS. 1-2]).
However, Thom does not explicitly teach the first delivery tip to have a first flexibility level and the second delivery tip to have a second flexibility level different from the first flexibility level.
The Examiner concludes that the prior art does not provide the requisite teaching, suggestion, and motivation to suggest the recited claim limitation. Therefore, the inventive features recited in the pending claims are not disclosed by the prior art and are not suggested by an obvious combination of the most analogous prior art elements.
Claim 18 is considered to contain allowable subject matter, as claim 18 depends upon claim 13.
Conclusion
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA BRENDON SOLOMON whose telephone number is (571)270-7208. The examiner can normally be reached 7:30am -4:30pm.
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/JOSHUA BRENDON SOLOMON/Examiner, Art Unit 3792
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