‘: El—BQ79a
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT APPLICATION
`
`In re Application of:
`
`Joseph Neev
`
`Serial No.: 09/632,199
`
`Filed: August 2, 2000
`
`.
`
`Patent Examrner: Peter J. Vr
`.
`ArtUmt: 3739
`
`/‘
`
`’ng
`(86
`«go
`s
`”a 4?» 43x
`0,,
`v35) 0
`
`(.
`
`r)
`
`iral‘
`
`W’
`
`For: METHOD AND APPARATUS FOR
`
`April 12, 2002
`
`HIGH PRECISION VARIABLE RATE
`
`Irvine, California 92614
`
`MATERIAL REMOVAL AND
`
`MODIFICATION
`
`
`RESPONSE TO OFFICE ACTION
`
`Assistant Commissioner for Patents
`
`Washington, DC. 20231
`
`Dear Sir:
`
`'4
`03%
`
`Responsive to the Office Action of January 2, 2002, kindly consider the new
`
`Information Disclosure Statement submitted herewith and the following remarks.
`
`‘ REMARKS
`
`Claims 35-38 and 55—66 remain in the application.
`
`Applicant respectfully
`
`requests reconsideration. A request for one month extension of time is enclosed.
`
`Claims 35-38 and 55-56 were rejected under 35 U.S.C. Section 102(e) as being
`
`anticipated by Neev, et al. (5,720,894). Applicant respectfully traverses.
`
`The Neev, et al. ‘894 patent is directed to a method and apparatus for damage-free
`
`biological tissue removal b using an ultra-short pulse duration laser that is operating at a
`_,____________
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 1
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 1
`
`

`

`high pulse repetition rate with the duration of each pulse being in the order of about 1
`
`femtosecond to less than 50 picoseconds so that energy deposition is localized to a small
`
`depth and occurs before significant hydrodynamic motion and thermal conduction which
`
`
`WW
`
`The invention of the present application is directed to a method for controlled
`
`variable
`
`rate material modification by controlling the power density of the
`/
`
`electromagnetic radiation beam. The electromagnetic radiation beam may come from a
`
`continuous wave (CW) source or a pulsed‘source. The material modification includes a
`
`range of chemical and physical changes in the material, besides tissue removal.
`
`Specifically, Claim 35 recites “control of power density is achieved by varying
`
`either one or more of the following parameters: . .. by spatially and temporally varying the
`
`absorption and/or scattering characteristics of the material at the targeted region”. The
`
`Neev, er a]. ‘894 patent does not teach or contemplate achieving control of power density
`
`' by spatially and temporally varying the absorption and/or scattering characteristics of the
`
`material at the targeted range. Claim 35 further requires “allowing interaction energy
`
`transients caused by the electromagnetic radiation pulse to substantially decay so that
`
`material modification is affected”. The Neev, et al. ‘894 patent does not teach nor does it
`
`contemplate allowing interaction energy transients caused by the electromagnetic
`
`radiation pulses to substantially decay so that material modification is affected. Such
`
`interaction energy transients, which may include transient chemical or thermal or
`
`mechanical changes tend to interfere with the next pulse effect if present.
`
`The Neev, er al. ‘894 patent only contemplates oblation of tissue. The present
`
`invention, on the other hand, contemplates material modification which includes not only
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 2
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 2
`
`

`

`.
`
`.
`
`ablation, but one or more of the following material alterations:
`
`chemical changes,
`
`physical changes, changes to viscoelastic properties, changes to optical properties,
`
`thermal properties, chemical and physical breakdown, disintegration, melting and
`
`vaporization.
`
`Claim 35 fiirther requires “operating the pulse source at a pulse repetition rate
`
`greater than 0.1 pulses per second”. The Neev, et al. ‘894 patent recommends a pulse
`
`repetition rate of 10 hertz to 1000 hertz. The pulse rate of 0.1 pulses per second (0.1
`
`hertz) is two orders of magnitude smaller than the Neev, et al. ‘894 lower frequency of its
`
`range.
`
`Claim 37 requires adding scattering and/or absorption centers, defects, or highly
`
`absorbent components, to the target material with spatial and/or temporal selectivity to
`
`specific predetermined locations within the target material. Neither the Neev, et al. ‘894
`
`patent, nor any of the references of record disclose or contemplate this step.
`
`The Office Action concludes that it would be inherent that the power density
`
`range of Claim 55 and the average power range in Claim 62 could be determined through
`
`routine experimentation using other parameters disclosed throughout the Neev, et al. ‘894
`
`patent. Applicant respectfiilly traverses. The Neev, et al. ‘894 patent contemplates use of -
`
`very high peak power pulses generated by a laser class known as “ultra-short pulse
`
`laSers”. The laser pulses range in duration from 1 femtosecond to about 100 picoseconds.
`
`There is only one purpose for these pulses, to ablate the tissue. The invention of the
`
`present application on the other hand, contemplates material modification by utilizing
`
`pulse repetition rate changes, which are outside the Neev, et al. ‘894 pulse range. The
`
`material modification contemplated by the invention of the present application, although
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 3
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 3
`
`

`

`including ablation, utilizes a pulse duration that
`
`is much longer, over 10 orders of
`
`magnitude longer, than the pulses of the Neev, et al.
`
`‘894 patent, all the way up to
`
`continuous waves.
`
`The Ofiice Action points to C01. 6, lines 1-14 for the conclusion that the Neev, et
`
`al. ‘894 patent indicates that a threshold volumetric power density can be achieved at a
`
`desired location below the material surface. Applicant respectfully traverses. This
`
`portion of Neev, et al. ‘894 is simply talking about a microscopic insignificant depth,
`
`from a real world prospective of approximately one micrometer. The invention of the
`
`present application on the other hand,
`
`is concerned with depth ranging from a few
`
`micrometers up to several centimeters. This is again a factor of four to five orders of
`
`magnitude greater than that contemplated in the Neev, et al. ‘894 patent. Moreover, the
`
`Neev, et al. ‘894 patent contemplates elimination of energy deposition below that one
`
`micrometer depth when it states “formation of a critical density plasma by both multi-
`
`photon and collusional
`
`ionization processes eliminates significant energy deposition
`
`below a depth of approximately that of a wavelength of the laser light when energy
`”
`
`deposition...
`
`. Clearly, the Neev, et al.
`
`‘894 patent does not teach nor contemplate
`
`volumetric power density at a desired location below the material surface.
`
`Claims 55-66 define an invention that utilizes a continuous wave beam to achieve
`
`a high precision, highly controllable, variable rate material removal by use of an
`
`continuous wave (CW) beam of electromagnetic radiation wherein the interaction
`
`between the electromagnetic radiation and the material is such that the material removal
`
`depth is approximately equal to the energy deposition depth within the target material.
`
`The Neev, et al. ‘894 patent does not contemplate this structure or fimction. Moreover,
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 4
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 4
`
`

`

`the Zair (5,411,502) patent while directed to a system for causing ablation of irradiated
`
`material of living tissue is concerned with “not causing necrosis below a predetermined
`
`depth”. The Zair patent does not teach or contemplate a material removal depth which is
`
`approximately equal to the energy deposition depth within a target material. The Zair
`
`patent utilizes a system that moves the energy beam around while ablating the living
`
`tissue to control the dwell time of the beam on a given tissue site in order to not cause
`
`necrosis below a predetermined depth. The energy from the laser beam deposited in the
`
`tissue ablated and thermal damage to the tissue ' is supposed to be limited to a
`
`predetermined depth. The invention of the present application, on the other hand,
`
`generates parameters that allow material
`
`removal
`
`that
`
`results in selected energy
`
`deposition depths while substantially eliminating all collateral damage. The two concepts
`are clearly different.
`
`/ Claims 55-66 are directed to the use of a continuous wave source which is
`
`manipulated to distribute it in place. The Neev, et al. ‘894 patent discloses an oscillator
`
`and a pulse stretcher to provide a pulse having the same or shorter pulse duration than the
`
`desired pulse duration. However,
`
`the Neev, et al.
`
`‘894 patent does not teach or
`
`contemplate redistributing a continuous beam. The beam time duration characteristics
`
`are changed, but not the beam location (that is, where the laser source is pointing). The
`
`oscillator and pulse stretches of Neev, et al.
`
`‘894 are part of the energy source that
`
`provides at its output the sequence of short pulses to be directed to a target. Although the
`
`Neev, et al. ‘894 patent contemplates using the Kerr effect as part of the energy source,
`
`i.e., the laser, the Kerr effect is used to generate short pulses.
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 5
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 5
`
`

`

`O
`
`C
`
`There are fimdamental differences between the Neev, et a].
`
`‘894 patent system
`
`and the invention of the present application. The beam characteristics, i.e., time duration,
`
`frequency content, spatial location of frequency, and wavelength content in the beam, are
`
`not changed in the invention of the present application as they are in the Neev, et al. ‘894
`
`patent. In the invention of the present application, the spatial location of the beam at the
`
`target is changed in time to manipulate the distribution of the constant beam output at a
`
`specific place on the target, so the beam itself is never affected, only its location on the
`
`target tissue is changed. The Neev, et al. ‘894 patent does not teach or even contemplate
`
`the use of a continuous wave source, let alone such a manipulation of the continuous
`
`wave beam. The Neev, et al. ‘894 patent specifically limits its source to pulses of up to
`
`100 ps. Moreover,
`
`in the invention of the present application,
`
`the Kerr effect
`
`is
`
`contemplated as an external element to the energy source as part of the system design to
`
`change the beam time and space locations on the target.
`
`The Neev, et al,
`
`‘894 patent contemplates changing the beam energy time
`
`distribution by stretching and then recompressing a pulse beam source. The invention of
`
`the present application, on the other hand, redistributes a fixed, continuous wave beam,
`
`i.e., the beam always remains a continuous wave source, which is entirely different from
`
`a pulsed energy beam. This continuous wave beam is redistributed in both time and
`
`space at its location on the target to form at least one modified beam comprising a
`
`plurality of pulses.
`
`In other words, the present
`
`invention achieves pulsing not by
`
`changing the beam characteristics, but rather by constructing a system that is able to
`
`control and change the continuous wave beam location on the target. The Neev, et a].
`
`‘894 patent only allows an operator to change the beam location manually, by moving it
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 6
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 6
`
`

`

`from one target location to the other. The Neev, et al. ‘894 patent disclosure does not
`
`teach or contemplate a means for pulsing the system by changing its location at the target
`
`or by controlling the output beam spatial or temporal characteristics. Focusing elements,
`
`Such as a hollow wave guide or articulated arm will not change the pulse structure of the
`
`Neev, et al.
`
`‘894 patent beam. The invention of the present application, however,
`
`contemplates affecting pulsing of its continuous wave beam by having, for example, at
`
`least one optical fiber and at least one hollow wave guide light conductor, so that by
`
`moving the source output beam from one to the other, a pulse effect is created. The
`
`optical fiber, or hollow wave guide contemplated by the Neev, et al. ‘894 patent is there
`
`simply to deliver an already finalized pulsed output beam to its final target location. The
`
`two concepts are fimdamentally different.
`
`In light of the above amendment and remarks, Applicant believes that all the
`
`claims are allowable in light of the art of record and respectfully requests that this
`
`application be passed to issue.
`
`this correspondence is
`I hereby certify that
`being sent via Express Mail (EV 034864779
`US) in an envelope addressed to the Assistant
`Commissioner for Patents, Washington, DC.
`20231 on April 12, 2002.
`
`Respectfully submitted,
`
`PRICE AND GESS
`
`( 2%b
`By: MarcFregoso
`MM— Registration No. 25,726
`Signature
`2100 SE. Main St., Suite 250
`Irvine, California 92614
`Telephone: 949/261-8433
`
`Albin H. Gess
`
`Date: April 12, 2002
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 7
`
`Alcon Research, Ltd.
`Exhibit 1012 - Page 7
`
`