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 .
Remarks
This action is in response to the remarks filed 09/22/2025.
Claims 15, 16, 18-26, 28-38, and 40-46 are pending.
Response to Arguments
Applicant’s arguments, see pages 9-10, with respect to the rejection of claims 18, 20, 23, 24, 28, 30, 33, 34, 40, 42, 45, and 46 under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection of claims 18, 20, 23, 24, 28, 30, 33, 34, 40, 42, 45, and 46 under 35 U.S.C. 112(b) has been withdrawn.
Applicant’s arguments, see pages 10-13, with respect to the rejection of claims 15-46 under 35 U.S.C. 103 have been fully considered and are persuasive. Independent claims 15, 25, and 37 have been amended to include limitations from claims 17, 27, and 39, which have now been canceled. Applicant argues that Gertner does not disclose the amended limitation, because Gertner uses an axis of an eye to determine the location, whereas the instant claim uses an optical axis with respect to the patient interface. Applicant further argues that Gooding does not disclose the limitation of capturing a Purkinje image of the patient interface to position the patient interface because Gooding determines the location of the patient interface relative to the eye, whereas the instant claims are using an optical axis that describes the position of a laser beam. Applicant further argues that there is no teaching, suggestion, or motivation to combine Gertner with Maeda, Bor, and Gooding to arrive at the claimed invention. Examiner agrees. Therefore, the rejection of claims 15, 16, 18-26, 28-38, and 40-46 under 35 U.S.C. 103 has been withdrawn. No prior art was found teaching individually, or suggesting all of the features of the claimed invention as recited in claims 15, 25, and 37 in combination with the recited steps and elements of the claimed invention.
No arguments have been provided for the rejection of claims 15-46 under 35 U.S.C. 112(a). Therefore, this rejection is maintained, as explained in the office action below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15, 16, 18-26, 28-38, and 40-46 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 15, 25, and 37 recite the limitation “capturing a Purkinje image of the patient interface”. While the specification at pars. [0007] and [0041] says a Purkinje image associated with the patient interface can be captured, the specification fails to specifically disclose the claimed limitation of a “Purkinje image of the patient interface” (emphasis added). A Purkinje image of the patient interface is not the same as a Purkinje image associated with the patient interface.
Claims 16, 18-24, 26, 28-36, 38, and 40-46 are rejected based on their dependency on claims 15, 25, and 37.
While there are no prior art rejections for claims 15, 16, 18-26, 28-38, and 40-46, they are not currently indicated as allowable due to the rejection of the claims under 35 U.S.C. 112(a), as explained above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHREYA P ANJARIA whose telephone number is (571)272-9083. The examiner can normally be reached M-F: 8:00-5:00 EST.
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/SHREYA ANJARIA/Examiner, Art Unit 3796
/PAMELA M. BAYS/Primary Examiner, Art Unit 3796