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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 5/07/2025 and 5/25/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 1-8 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.
The term “unevenness” in claim 5 is a relative term which renders the claim indefinite. The term “unevenness” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, unevenness and its measurement as it compares to the wavelength of the generated light is unclear. Claim 5 will be rejected below as best understood.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “refractive surface” in claims 1-5 and 7-8 appears to be used by the claim to mean “surface in which the incident light is reflected,” while the accepted meaning is a surface in which the incident light is transmitted and deflected. The term is indefinite because the specification does not clearly redefine the term. As best understood, the “refractive surface” is in fact a “reflective surface”. Claims
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.
Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baxter et al. (US 6,102,905, hereinafter Baxter).
In regards to claim 1, as best understood, Baxter discloses in Figure 4, a light diffusion device (10) for photoimmunotherapy or photodynamic therapy (Abstract, noting a recitation of the intended use of an invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). In this case, the patented structure of Baxter was considered capable of performing the cited intended use), the light diffusion device (10) comprising: an optical transmission cable (14) configured to transmit light emitted from a light source (illustrated by Fig. 4) and emit the transmitted light from an emission surface of a distal end part (see Fig. 4); a reflective member (19) having a refractive surface (surface of 19) that refracts the light emitted from the emission surface (see Fig. 4); and a tubular member (20) made of resin (Col. 6 lines 1-10) into which the optical transmission cable and the reflective member are inserted (see Fig. 4), wherein the refractive surface is disposed at a predetermined distance from the emission surface in the tubular member (see Fig. 4) and is inclined with respect to an axial direction of the optical transmission cable (see Fig. 4), and the light emitted from the emission surface is emitted in a direction that is inclined at a predetermined angle or more with respect to the axial direction of the optical transmission cable (see Fig. 4).
In regards to claim 5, as best understood, Baxter discloses in Figure 4, an unevenness of the refractive surface on which the light is incident (surface of 19) is equal to or less than a wavelength of the light generated from the light source (as such a surface is not suggested of having any “unevenness”, it is interpreted as meeting this limitation).
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.
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, 2, 4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Griffin (US 5,562,657) in view of Baxter.
In regards to claim 1, as best understood, Griffin teaches in Figure 2, a light diffusion device (10) for photoimmunotherapy or photodynamic therapy (Abstract, Col. 1 lines 5-10, noting a recitation of the intended use of an invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). In this case, the patented structure of Griffin was considered capable of performing the cited intended use), the light diffusion device (10) comprising: an optical transmission cable (12) configured to transmit light emitted from a light source (illustrated by Fig. 2) and emit the transmitted light from an emission surface of a distal end part (18); a reflective member (inside of 30, including 56) having a refractive surface (surface of 56) that refracts the light emitted from the emission surface (see Fig. 2); and a tubular member (outside of 30) into which the optical transmission cable (12) and the reflective member (56) are inserted (see Fig. 2), wherein the refractive surface is disposed at a predetermined distance from the emission surface in the tubular member (see Fig. 2) and is inclined with respect to an axial direction of the optical transmission cable (see Fig. 2), and the light emitted from the emission surface is emitted in a direction that is inclined at a predetermined angle or more with respect to the axial direction of the optical transmission cable (see Fig. 2) as recited in Claim 1 .
Griffin fails to disclose or fairly suggest the tubular member (30) made of resin (Col. 6 lines 1-10).
Baxter teaches a tubular member (20) made of resin (Col. 6 lines 1-10).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to use a resin material for the tubular member of Griffin, as such is well known alternative material to metal and the like, such being “a softer material than metal, to reduce wear on and inhibit scrapping of the lumen of the delivery instrument” (Baxter, Col. 2 lines 63-67). Additionally, it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945).
In regards to claim 2, as best understood, Griffin teaches in Figure 2, the reflective member (56) is a rod-shaped member (see Fig. 2) made of quartz or silicon (quartz, Col. 3 lines 28-39) and is spaced apart from the optical transmission cable in the tubular member (see Fig. 2), and wherein the refractive surface (56) is formed on an end part of the rod-shaped member (see Fig. 2) on a side adjacent to the optical transmission cable (see Fig. 2).
In regards to claim 4, as best understood, Griffin teaches in Figure 2, the optical transmission cable (12) is a fiber comprising a core having an outer diameter and a cladding (Col. 4 lines 39-41) and formed on an outer periphery of the core (see Fig. 4), and wherein an outer diameter of the refractive surface (56) viewed from the axial direction of the optical transmission cable (left to right) is larger than the outer diameter of the core (of 12, diameter of all of 12 is less than diameter of 56, see Fig. 2).
Griffin fails to disclose or fairly suggest a plastic fiber comprising a core having an outer diameter of 500 µm or more and a cladding (18) made of resin.
However, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to use a plastic fiber comprising a core having an outer diameter of 500 µm or more and a cladding made of resin for the fiber of Griffin, resin being well known alternative material to metal and the like, such being “a softer material than metal, to reduce wear on and inhibit scrapping of the lumen of the delivery instrument” (Baxter, Col. 2 lines 63-67). Plastic being a well known alternative material to glass, quartz, and the like, such known for being less expensive, greater flexibility and moldability, and less easily broken. Such a diameter as one would naturally arrive at depending on the desired amount of light and wavelength traveling through said optic. Additionally, it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945). It has also been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only ordinary skill in the art. In re Aller, 105 USPQ 233.
In regards to claim 6, as best understood, Griffin teaches in Figure 2, the emission surface of the optical transmission cable (18) is inclined with respect to the axial direction of the optical transmission cable (12, see Fig. 2).
In regards to claim 7, as best understood, Griffin teaches in Figure 2, the emission surface (18) is inclined with respect to the axial direction of the optical transmission cable (12, see Fig. 2) so as to face the refractive surface (56) substantially in parallel (see Fig. 2).
Claims 1, 3, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Gardetto et al. (US 5,370,649, hereinafter Gardetto) in view of Baxter.
In regards to claim 1, as best understood, Gardetto teaches in Figures 2 and 8, a light diffusion device (10) for photoimmunotherapy or photodynamic therapy (Abstract, Col. 1 lines 34-38, noting a recitation of the intended use of an invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). In this case, the patented structure of Gardetto was considered capable of performing the cited intended use), the light diffusion device (10) comprising: an optical transmission cable (16) configured to transmit light emitted from a light source (illustrated by Fig. 8) and emit the transmitted light from an emission surface of a distal end part (end of 22); a reflective member (38) having a refractive surface (84/104) that refracts the light emitted from the emission surface (see Figs. 2 and 8); and a tubular member (20) into which the optical transmission cable (16) and the reflective member (38) are inserted (see Fig. 8), wherein the refractive surface (104) is disposed at a predetermined distance from the emission surface in the tubular member (see Fig. 8) and is inclined with respect to an axial direction of the optical transmission cable (see Fig. 8), and the light emitted from the emission surface is emitted in a direction that is inclined at a predetermined angle or more with respect to the axial direction of the optical transmission cable (see Fig. 8) as recited in Claim 1 .
Gardetto fails to disclose or fairly suggest the tubular member (30) made of resin (Col. 6 lines 1-10).
Baxter teaches a tubular member (20) made of resin (Col. 6 lines 1-10).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to use a resin material for the tubular member of Griffin, as such is well known alternative material to metal and the like, such being “a softer material than metal, to reduce wear on and inhibit scrapping of the lumen of the delivery instrument” (Baxter, Col. 2 lines 63-67). Additionally, it has been held by the courts that selection of a prior art material on the basis of its suitability for its intended purpose is within the level of ordinary skill. In re Leshing, 125 USPQ 416 (CCPA 1960) and Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297 (1945).
In regards to claim 3, as best understood, Gardetto teaches in Figures 2 and 8, the refractive surface (104) comprises a vapor-deposited metal (Col. 5 lines 48-54, noting 84 is the equivalent structure and material to that of 104).
In regards to claim 8, as best understood, Gardetto teaches in Figures 2 and 8, the refractive surface (104) is formed in a curved surface shape that is concave with respect to the emission surface (see Fig. 8).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please review the cited references found on the attached PTO-892, namely Watanabe et al. (US 2021/0186612), Li et al. (US 2009/0323076), Shimizu et al. (US 2021/0259771), Yoshihara et al. (US 5,836,941), and Daikuzono (US 5,496,307), which teach either alone or in combination lighting devices including optical transmission cable, reflective member having a refractive surface, and tubular member, structurally and materially similar to that which is currently claimed above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER K GARLEN whose telephone number is (571)272-3599. The examiner can normally be reached M-F 8:00-5:00 PM.
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/ALEXANDER K GARLEN/Primary Examiner, Art Unit 2896