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 .
Claim Objections
Claims 2-3 and 10 are objected to because of the following informalities:
The claims introduce the phrase “laser light”, which is inconsistent with the claim language because of the use of ‘laser’. For example, the limitations “said scanner further configured to scan said beam of laser light” and “to synchronously move said shaped FOV of said optical detector with said spot of laser light” in independent claim 10 should be amended to recite –said scanner further configured to scan said beam of – and –to synchronously move said shaped FOV of said optical detector with said spot of –, respectively, to remain consistent with the claim language by removing the term ‘laser’.
Similar limitations “with said scanned spot of laser light,” in dependent claim 2 and “to scan said beam of laser light” in dependent claim 3 should be amended for consistency in accordance with independent claim 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112
35 USC § 112(b)
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.
Claim(s) 1-9 and 10-14 is/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. Claims 2-9 and 11-14 are also rejected at least by virtue of dependency upon a rejected base claim.
Claim 1 recites the limitations “an optical element, said optical element configured to […], and direct said beam of light at said scanner;”. There is insufficient antecedent basis for this limitation in the claim. The use of ‘said scanner’ is indefinite because there has been no prior recitation of a ‘scanner’ which clearly points out what is being claimed. It is suggested to amend the claim to rearrange the order of the ‘optical element’ and ‘scanner’ clauses.
Claim 1 further recites the limitations “wherein said scanner is configured to direct said image at said first wavelength, received from the target surface, along said second optical path and to said photo detector; wherein said photo detector is positioned in line with said second optical path and is thereby configured to receive said image at said first wavelength;” which renders the claim indefinite because it is not clear what type or form of ‘image’ that the ‘image at said first wavelength’ actually is. The claim language recites that ‘said image’ is generated by “differential amounts of absorption and reflection of said moving spot of light”, but the claim language does not indicate that the ‘image’ itself is comprised of light and possesses a wavelength; optical modalities known in the art utilize beams of light to resolve images which may depict underlying anatomical structures. The claim language appears to indicate that ‘said image’ is light itself by being directed along an optical path and having a wavelength. It is suggested to define the ‘image’ generated by the scanner to clearly indicate that it is comprised of and may behave like light to distinguish from conventional 2D/3D images which may be displayed. Claim 10 recites similar limitations “wherein said scanner is configured to direct said image at said first wavelength, received from the target surface, along said second optical path towards said optical detector; wherein said optical detector is configured to receive said image at said first wavelength;” which are rendered indefinite according to the logic applied to claim 1 above. For the purposes of examination, the broadest reasonable interpretation of the claim language are any type of image or data based on differential amounts of absorption and reflection of light.
Claim 8 recites the limitation “said second laser configured to emit a beam of visible light at a second wavelength to project said image portion onto the target surface”. There is insufficient antecedent basis for this limitation in the claim. The use of ‘said image portion’ is indefinite because there has been no prior recitation of an ‘image portion’ which clearly points out what is being claimed in either the instant claim 8 or independent claim 1. It is suggested to amend the claim(s) to clearly point out what the ‘image portion’ is referring to.
Claim 9 recites the limitation “wherein said second laser projects said image portion onto the target surface delayed with respect to said image portion being received by said photo detector”. There is insufficient antecedent basis for these limitations in the claim. The use of both ‘said second laser’ and ‘said image portion’ is indefinite because there has been no prior recitation of either a ‘second laser’ or an ‘image portion’ which clearly points out what is being claimed in either the instant claim 9 or independent claim 1. It is suggested to amend the claim(s) correct dependency of claim 9 to depend upon claim 8 (if this is the applicant’s intended interpretation), or to clearly point out what the ‘second laser’ and ‘image portion’ are referring to.
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.
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.
Claim(s) 1 and 10 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 and 13 of U.S. Patent No. US12318219B2 (US17/223,143). Although the claims at issue are not identical, they are not patentably distinct from each other because they use analogous terms and language which conveys the exact same meaning. Claims 1 and 10 provided in the instant application U.S. 19220443 (“the ‘443 application”) is anticipated by claims 1 and 13 of the cited patent U.S. 12318219 B2 (“the ‘219 patent”), respectively. The two sets of claims are directly compared below:
Regarding claim 1 of the ‘443 application, claim 1 of the ‘219 patent teaches a vein imaging apparatus (“A vein imaging apparatus,” [clm 1]), said vein imaging apparatus configured to limit an image field of view (FOV) to exclude at least a portion of a target surface to image subcutaneous blood vessels beneath the target surface, said vein imaging apparatus comprising (“said vein imaging apparatus configured to limit an image field of view (FOV) to exclude at least a portion of a target surface to image subcutaneous blood vessels beneath the target surface, said vein imaging apparatus comprising:” [clm 1]):
a laser configured to emit a beam of light at a first wavelength, directed in a first optical path (“a laser configured to emit a beam of light at a first wavelength, directed in a first optical path;” [clm 1]);
an optical element, said optical element configured to bounce said beam of light from said first optical path onto a second optical path, and direct said beam of light at said scanner (“an optical element, said optical element configured to bounce said beam of light from said first optical path onto a second optical path, and direct said beam of light at said scanner;” [clm 1]);
a scanner, said scanner configured to direct said beam of light to form a spot of light on the target surface (“a scanner, said scanner configured to direct said beam of light to form a spot of light on the target surface;” [clm 1]);
said scanner further configured to scan said beam of light to move said spot of light rapidly on the target surface in a first direction and a second direction to form a pattern to generate an image formed by differential amounts of absorption and reflection of said moving spot of light by surrounding tissue and subcutaneous blood vessels (“said scanner further configured to scan said beam of laser light to move said spot of light rapidly on the target surface to generate an image formed by differential amounts of absorption and reflection of said moving spot of light and an afterglow by surrounding tissue and subcutaneous blood vessels;” [clm 1]);
a photo detector (“an optical detector;” [clm 1]);
wherein said scanner is configured to direct said image at said first wavelength, received from the target surface, along said second optical path and to said photo detector (“wherein said scanner directs said image at said first wavelength, received from the target surface, along said second optical path and to said optical detector;” [clm 1]);
wherein said photo detector is positioned in line with said second optical path and is thereby configured to receive said image at said first wavelength (“wherein said optical detector is configured to receive said image at said first wavelength; and” [clm 1]);
a lens, said lens positioned between said photo detector and said optical element, wherein said lens is configured to shape an image FOV of said photo detector to a portion of the target surface, being to an entirety of said scan in said first direction for each scan line and only a portion of said scan in said second direction (“a lens, said lens positioned between said optical detector and said optical element, wherein said lens is a focusing lens configured to limit a size of an image FOV of said optical detector to a portion of the target surface, wherein a size of said portion of the target surface for said limited FOV of said optical detector comprises: a size of said spot of laser light and at least a portion of said afterglow” [clm 1]).
Although the above claims do not identically match claim language, the vein imaging apparatus configured to limit an image field of view (FOV) to exclude at least a portion of a target surface to image subcutaneous blood vessels beneath the target surface recited in claim 1 of the ‘443 application is directly anticipated by the vein imaging apparatus from claim 1 of the ‘219 patent. First, the photo detector of the ‘443 application is functionally analogous to the optical detector of the ‘219 patent and appears to perform the same functions. The major discrepancy is found with the inclusion of first and second scanning directions forming a ‘pattern’ in the ‘443 application – however, the ‘219 patent describes the same image generation process of moving the ‘spot of light’. This scanning pattern comprising two directions described in the ’443 application is taught in claim 5 of the ‘219 patent, which claims a raster pattern scanning configuration. The limitations of shaping a ‘FOV’ in the ‘443 application are similarly found in the ‘219 patent, wherein the entire first scan direction of the ‘443 application is analogous to the size of the spot of laser light in the ‘219 patent, and similarly the ‘portion’ of the second direction in the ‘443 application is mapped to the ‘afterglow’ limitation in the ‘219 patent.
Regarding claim 10 of the ‘443 application, claim 13 of the ‘219 patent teaches a vein imaging apparatus comprising (“A vein imaging apparatus comprising:” [clm 13]):
a laser configured to emit a beam of light at a first wavelength in a first optical path (“a laser configured to emit a beam of light at a first wavelength in a first optical path;” [clm 13]);
a mirror, said mirror configured to bounce said beam of light from said first optical path onto a second optical path (“a mirror, said mirror configured to bounce said beam of light from said first optical path onto a second optical path;” [clm 13]);
a scanner, said scanner configured to direct said beam of light from said second optical path onto a target surface to form a spot of light on the target surface (“a scanner, said scanner configured to direct said beam of light from said second optical path onto a target surface to form a spot of light on the target surface;” [clm 13]);
said scanner further configured to scan said beam of laser light to move said spot of light rapidly on the target surface to generate an image formed by differential amounts of absorption and reflection of said scanned beam of light by surrounding tissue and subcutaneous blood vessels (“said scanner further configured to scan said beam of laser light to move said spot of light rapidly on the target surface in a pattern to generate an image formed by differential amounts of absorption and reflection of said scanned spot and an afterglow by surrounding tissue and subcutaneous blood vessels;” [clm 13]);
an optical detector (“an optical detector;” [clm 13]);
wherein said scanner is configured to direct said image at said first wavelength, received from the target surface, along said second optical path towards said optical detector (“wherein said scanner is configured to direct said image at said first wavelength, received from the target surface, along said second optical path;” [clm 13]);
wherein said optical detector is configured to receive said image at said first wavelength (“wherein said optical detector is positioned in line with said second optical path and is thereby configured to receive said image at said first wavelength;” [clm 13]); and
a lens, said lens positioned between said optical detector and said mirror, said lens configured to shape a field of view (FOV) of said optical detector to an elongated portion of the target surface (“a lens, said lens positioned between said optical detector and said mirror, wherein said lens is a focusing lens configured to limit a size of a field of view (FOV) of said optical detector to a portion of the target surface comprising: said spot of laser light and at least a portion of said afterglow; and” [clm 13]); and
wherein said vein imaging apparatus is configured to synchronously move said shaped FOV of said optical detector with said spot of laser light, and to continuously position said shaped FOV of said photo detector to exclude said spot of light and to only include a portion of an afterglow created by said spot of light (“to limit a size of a field of view (FOV) of said optical detector to a portion of the target surface comprising: said spot of laser light and at least a portion of said afterglow; and wherein said size-limited FOV of said optical detector is configured to move synchronously with said scanned spot of laser light via said scanner.” [clm 13]).
The two claims are nearly verbatim. Although the above claims do not identically match claim language, the vein imaging apparatus in claim 10 of the ‘443 application is directly anticipated by the vein imaging apparatus from claim 13 of the ‘219 patent. The ‘443 application includes ‘an elongated portion of the target surface’; however, aside from the term ‘elongated’ the language appears to be directed to the same thing, i.e., the ‘shaped FOV’ of the ‘443 application is the same as the ‘size-limited FOV’ of the ‘219 patent. The claim language in the ‘443 application describing the synchronous movements of the shaped FOV and afterglow are found in different clauses in the ‘219 patent (the ‘lens’ clause and the ‘size-limited FOV’ clause at the end of the claim).
Regarding the dependent claims:
Claim 2 of the ‘443 application is rejected over claims 2 and 3 of the ‘219 patent.
Claim 3 of the ‘443 application is rejected over claim 5 of the ‘219 patent.
Claim 4 of the ‘443 application is rejected over claim 6 of the ‘219 patent.
Claim 5 of the ‘443 application is rejected over claim 7 of the ‘219 patent.
Claim 6 of the ‘443 application is rejected over claim 8 of the ‘219 patent.
Claim 7 of the ‘443 application is rejected over claim 9 of the ‘219 patent.
Claim 8 of the ‘443 application is rejected over claim 11 of the ‘219 patent.
Claim 9 of the ‘443 application is rejected over claim 12 of the ‘219 patent.
Claim 11 of the ‘443 application is rejected over claim 8 of the ‘219 patent.
Claim 12 of the ‘443 application is rejected over claim 9 of the ‘219 patent.
Claim 13 of the ‘443 application is rejected over claim 11 of the ‘219 patent.
Claim 14 of the ‘443 application is rejected over claim 12 of the ‘219 patent.
Conclusion
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JAMES FRANKLIN MCDONALD III
Examiner
Art Unit 3797
/CHRISTOPHER KOHARSKI/Supervisory Patent Examiner, Art Unit 3797