`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`14/238,505
`
`02/12/2014
`
`Kazuhiro Daijo
`
`MAT—10618US
`
`9206
`
`RATNERPRESTIA
`PO. BOX 980
`VALLEY FORGE, PA 19482-0980
`
`KONG, QINGJUN
`
`PAPER NUIVIBER
`
`ART UNIT
`
`3769
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/20/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/238,505 DAIJO, KAZUHIRO
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`QINGJUN KONG, PILD. [SENS 3769
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 2/12/2014.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) gas/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| CIaim(s)_1-5is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'I’\WIIW.usnto. ovI’ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)IZI The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 2/12/2014 is/are: a)lX| accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date 2/12/2014 10/05/2015.
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20151229
`
`

`

`Application/Control Number: 14/238,505
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`Page 2
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`Art Unit: 3769
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`DETAILED ACTION
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`1.
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`2.
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`It is acknowledged that this application is at National stage of an application
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`(PCT/JP2012/005243) filed on 08/22/2012, and further claims foreign priority to a
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`Japanese application (JP 2011-191348) filed on 09/02/2011. A certified copy of the
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`foreign application (JP 2011-191348) is provided. However, its English translation is not
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`provided.
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`Specification
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`3.
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`The disclosure is objected to because of the following informalities:
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`o The term “farer” in Line 12 of Page 18 is wrongly used when physical locations
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`of subject matters are compared. It is suggested to use “farther” or “further”
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`instead.
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`Appropriate correction is required.
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`Claim Objections
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`4.
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`Claim 1 is objected to because of the following informalities:
`
`o
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`In the fifth paragraph of the claim body, Claim 1 recites "a third reflection unit
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`formed of a main body part provided with a transmission unit which reflects..."
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`where the term "provided with a transmission unit” inserted after the “main
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`body" generates confusion. It is unclear which subject matter, the main body or
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`the transmission unit, reflects.
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`

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`Application/Control Number: 14/238,505
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`Page 3
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`Art Unit: 3769
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`.
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`In the sixth paragraph of the claim body, the statement beginning with "such
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`that" contains grammatical errors because verbs are missing in the statement to
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`complete a sentence.
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 1 12
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`5.
`
`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.
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`6.
`
`Claims 1 and 3-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
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`AIA), second paragraph, as being indefinite for failing to particularly point out and
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention.
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`Regarding Claim 1, the recitation of “the larger an amount of transmission light of
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`the radiation light" renders unclearness as it is uncertain what the transmission light
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`refers to. For example, whether the transmission light is referred to the light generated
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`from the light source or the light passed through the transmission unit is unclear.
`
`Regarding Claims 3-4, the recitation “opening area increases with decrease in
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`distance to the light emitting unit” renders unclearness. It is not certain whether the
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`opening area is the area formed by the transmission unit itself, i.e., geometric
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`boundaries of a notch, as recited in Claim 3, and a slit, as recited in Claim 4, or the
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`space framed by the open boundaries of the notch (or the slit as in Claim 4) and the
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`

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`Application/Control Number: 14/238,505
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`Page 4
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`Art Unit: 3769
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`surrounding subject matters. Moreover, the above confusion would lead to the following
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`concern: increasing opening area could be understood as the opening area formed by
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`the notch itself (or slit itself) that is dynamically and materially expanded when the
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`transmission unit is closer to the light emitting unit, or as the space framed by the notch
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`(or slit) and the surroundings that is increased during the moving of the transmission
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`unit.
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`Regarding Claim 5, “a specific site of a living body” is recited in the preamble
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`and claim body. However, it is unclear if “living body” is positively recited”.
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`Claim Rejections - 35 USC § 101
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`7.
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
`
`8.
`
`Section 33(a) of the America lnvents Act reads as follows:
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`Notwithstanding any other provision of law, no patent may issue on a claim directed
`to or encompassing a human organism.
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`9.
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`Claim 5 is rejected under 35 U.S.C. 101 and section 33(a) of the America
`
`lnvents Act as being directed to or encompassing a human organism. See also Animals
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`- Patentabi/ity, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human
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`organisms are excluded from the scope of patentable subject matter under 35 U.S.C.
`
`101).
`
`In the first and the third paragraph, “a specific site of a living body” is recited and
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`required to be irradiated as claimed. The claim is hence rejected as it is directed to or
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`encompassed with a human organism.
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`

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`Application/Control Number: 14/238,505
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`Page 5
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`Art Unit: 3769
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`Claim Rejections - 35 USC § 102
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`10.
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`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C.
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`102 that form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`
`11.
`
`Claims 1-5 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by
`
`Homer (Pub. #: US 2005/0080466 A1).
`
`Regarding Claim 1, Homer teaches a photoradiation device comprising:
`
`a light emitting unit that radiates radiation light (“Light Wave Energy source”, Fig.
`
`2-3);
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`a reflection unit that reflects the radiation light (“mirror”, Fig. 2-3);
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`and a light guide unit that guides the radiation light reflected from the reflection
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`unit to an irradiation target body, such as a skin (“Sapphire plate”, Fig. 2-3; Par. 6),
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`wherein the light guide unit includes a first light guide face (right side of “Sapphire
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`plate”, Fig. 2-3; see Fig. 3 below with reference to Fig. 2) and a second light guide face
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`(left side of “Sapphire plate”, Fig. 2-3; see Fig. 3 below with reference to Fig. 2) that
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`faces the first light guide face,
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`the reflection unit includes a first reflection unit that reflects a part of the radiation
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`light to the first light guide face, a second reflection unit that reflects entering light to the
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`second light guide face, and a third reflection unit formed of a main body part provided
`
`with a transmission unit, the main body reflecting a part of remainder of the radiation
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`light to the second reflection unit as the entering light (see Fig. 3 below with reference to
`
`

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`Application/Control Number: 14/238,505
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`Page 6
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`Art Unit: 3769
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`Fig. 2; Examiner note: the light generated in the light source impacts on the third
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`reflection unit (“Beam Splitter”, Fig. 2-3), then splits with part of it reflecting to the
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`second reflection unit and the remainder of it transmitting to the first reflection unit,
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`which then reflects the light) and
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`the third reflection unit is disposed with a transmission unit side inclined toward a
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`light emitting unit (see Fig. 3 below with reference to Fig. 2; Examiner note: the
`
`transmission unit can be inclined toward the light emitting unit; the statement “such that
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`the shorter a distance of the transmission unit to the light emitting unit the larger an
`
`amount of transmission light of the radiation light” is considered as an intended use
`
`without further structural limitation, therefore it does not possess patentable weight).
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`

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`Application/Control Number: 14/238,505
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`Page 7
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`Art Unit: 3769
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`.
`Figure: :3
`Sign: Mam Susta-
`”WT SHAWN 3'53 SCRLE»
`
`Second
`reflection unit
`
`.
`
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`$8
`9"“~
`
`‘
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`_
`Seam 3m: mamas dire.
`Pumps '1}? i§m*
`
`=h=rd
`reflection unit
`
`and
`'t'ransmissim
`uni:
`
`
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`\
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`
`
`'Eaam‘fiix-ef
`
`fiflgixmfi‘it "
`
`
`/
`‘
`
`
`Eight
`guide
`
`‘
`Firstiight
`
`..~ guidetace
`'
`
`
`
`
`first reflection unit
`
`Eixs'ts :‘sétssmctim gt y. =< «45%? m
`
`E
`
`Examiner note: Fig. 3 shown above contains annotation marked in red; refer Fig.
`
`2 for detail of light path.
`
`Regarding Claim 2, Homer teaches that the third reflection unit is formed of a flat
`
`reflection plate (Fig. 2-3).
`
`Regarding Claims 3-4, Homer teaches that the transmission unit is a notch or a
`
`slit (Fig. 3; Examiner note: under the broadest reasonable interpretation, a notch can be
`
`considered as a slit; the statement “opening area increases with decrease in distance to
`
`the light emitting unit” is considered as a functional language without further structural
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`limitation, and therefore does not possess patentable weight).
`
`

`

`Application/Control Number: 14/238,505
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`Page 8
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`Art Unit: 3769
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`Regarding Claim 5, Homer teaches that a photoradiation therapy/prophylaxis
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`device further comprising a wavelength transmitting unit which is disposed on an optical
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`path from the light emitting unit through the light guide unit, and allows radiation light in
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`a wavelength range between 566.5 nm and 780 nm (Par. 24; Examiner note: laser at
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`wavelength of 755 nm is excited; inherently, a wavelength transmitting unit is utilized in
`
`order to generate laser at the wavelength discussed above, and such unit is disposed
`
`between the laser source and light guide unit),
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`wherein a specific site of a living body is irradiated with the radiation light which is
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`allowed to transmit through the wavelength transmitting unit (“Skin”, Fig. 6; Par. 6).
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`Conclusion
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`12.
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure.
`
`. Hartman teaches an apparatus treats skin disorder through phototherapy,
`
`wherein the apparatus comprises reflectors and transmitter (US 6,413,268 B1).
`
`. Cacciola et al teach a flexible device for phototherapy (US 2013/0144364 A1).
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to QINGJUN KONG, Ph.D. whose telephone number is
`
`(571 )270-0633. The examiner can normally be reached on Monday - Thursday, 7:00
`
`am - 5:30 pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Gary Jackson can be reached on 571-272—4697. The fax phone number for
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`the organization where this application or proceeding is assigned is 571 -273-8300.
`
`

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`Application/Control Number: 14/238,505
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`Page 9
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`Art Unit: 3769
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`
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`
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`
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`
`QINGJUN KONG, Ph.D.
`K). K./
`
`Examiner, Art Unit 3769
`
`/Gary Jackson/
`Supervisory Patent Examiner
`Art Unit 3769
`
`