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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 1 and all its dependent claims thereof:
a first convolution function device configured to receive, at a first input, a first measurement signal of a first measuring device detected on an irrigation fluid line and, at a first output, to output a first quantity, convolved with a first convolution function, of a time derivative of the first measurement signal, wherein the first convolution function has a first time duration;
a first threshold value device, with which a first threshold value for the time derivative of the first measurement signal can be established;
a first comparison device, configured to receive the quantity, output by the first convolution function device, of the time derivative of the first measurement signal and to receive the first threshold value and, after expiration of a predetermined first time point, to compare the first quantity of the time derivative of the first measurement signal and the first threshold value with each other and output a first comparison result;
a second convolution function device, configured to receive, at a second input, the first measurement signal detected on the irrigation fluid line and, at a second output, to output a second quantity, convolved with a second convolution function, of a time derivative of the first measurement signal, wherein the second convolution function has a second time duration, which is shorter than the first time duration;
a second threshold value device, with which a second threshold value for the time derivative of the first measurement signal can be established;
a second comparison device, configured to receive the second quantity, output by the second convolution function device, of the time derivative of the first measurement signal and to receive the second threshold value and, after expiration of a predetermined second time point, to compare the second quantity of the time derivative of the first measurement signal and the second threshold value with each other and output a second comparison result;
a first evaluation device, configured to receive and evaluate the first comparison result and the second comparison result and output a first evaluation signal; and
an activation device, configured to receive the first evaluation signal and, in accordance with the first evaluation signal, to make available a control signal for controlling a parameter of an ophthalmosurgical appliance.
In claim 4:
a third convolution function device, configured to receive, at a third input, a second measurement signal of a second measuring device detected on an aspiration fluid line and, at a third output, to output a third quantity, convolved with a third convolution function, of a time derivative of the second measurement signal, wherein the third convolution function has a third time duration; a third threshold value device, with which a third threshold value for the time derivative of the second measurement signal can be established;
a third comparison device, configured to receive the third quantity, output by the third convolution function device, of the time derivative of the second measurement signal and to receive the third threshold value and, after expiration of a predetermined third time point, to compare the third quantity of the time derivative of the second measurement signal and the third threshold value with each other and output a third comparison result;
a fourth convolution function device, configured to receive, at a fourth input, the second measurement signal detected on the aspiration fluid line and, at a fourth output, to output a fourth quantity, convolved with a fourth convolution function, of a time derivative of the second measurement signal, wherein the fourth convolution function has a fourth time duration, which is shorter than the third time duration; a fourth threshold value device, with which a fourth threshold value for the time derivative of the second measurement signal can be established;
a fourth comparison device, configured to receive the fourth quantity, output by the fourth convolution function device, of the time derivative of the second measurement signal and to receive the fourth threshold value and, after expiration of a predetermined fourth time point, to compare the fourth quantity of the time derivative of the second measurement signal and the fourth threshold value with each other and output a fourth comparison result;
a second evaluation device, configured to receive and evaluate the third comparison result and the fourth comparison result and output a second evaluation signal
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-10 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.
MPEP 2181(IV) states the following:
A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function also lacks adequate written description and may not be sufficiently enabled to support the full scope of the claim. The principal function of claims is to provide notice of the boundaries of the right to exclude by defining the limits of the invention, and means-plus-function claims rely on the disclosure to define those limits. Accordingly, an inadequate disclosure may give rise to both an indefiniteness rejection for a means-plus-function limitation and a failure to satisfy the written description and enablement requirements of section 112(a) or pre-AIA section 112, first paragraph.
Claim limitations above in the Claim Interpretation section invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. As such, as-filed specification does not to satisfy the written description since the specification does not disclose corresponding structure for performing the claim functions recited in means-plus-function limitations set forth above in the Claim Interpretation section.
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 1-10 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.
Below claim limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
In claim 1 and all its dependent claims thereof:
a first convolution function device configured to receive, at a first input, a first measurement signal of a first measuring device detected on an irrigation fluid line and, at a first output, to output a first quantity, convolved with a first convolution function, of a time derivative of the first measurement signal, wherein the first convolution function has a first time duration;
a first threshold value device, with which a first threshold value for the time derivative of the first measurement signal can be established;
a first comparison device, configured to receive the quantity, output by the first convolution function device, of the time derivative of the first measurement signal and to receive the first threshold value and, after expiration of a predetermined first time point, to compare the first quantity of the time derivative of the first measurement signal and the first threshold value with each other and output a first comparison result;
a second convolution function device, configured to receive, at a second input, the first measurement signal detected on the irrigation fluid line and, at a second output, to output a second quantity, convolved with a second convolution function, of a time derivative of the first measurement signal, wherein the second convolution function has a second time duration, which is shorter than the first time duration;
a second threshold value device, with which a second threshold value for the time derivative of the first measurement signal can be established;
a second comparison device, configured to receive the second quantity, output by the second convolution function device, of the time derivative of the first measurement signal and to receive the second threshold value and, after expiration of a predetermined second time point, to compare the second quantity of the time derivative of the first measurement signal and the second threshold value with each other and output a second comparison result;
a first evaluation device, configured to receive and evaluate the first comparison result and the second comparison result and output a first evaluation signal; and
an activation device, configured to receive the first evaluation signal and, in accordance with the first evaluation signal, to make available a control signal for controlling a parameter of an ophthalmosurgical appliance.
In claim 4:
a third convolution function device, configured to receive, at a third input, a second measurement signal of a second measuring device detected on an aspiration fluid line and, at a third output, to output a third quantity, convolved with a third convolution function, of a time derivative of the second measurement signal, wherein the third convolution function has a third time duration; a third threshold value device, with which a third threshold value for the time derivative of the second measurement signal can be established;
a third comparison device, configured to receive the third quantity, output by the third convolution function device, of the time derivative of the second measurement signal and to receive the third threshold value and, after expiration of a predetermined third time point, to compare the third quantity of the time derivative of the second measurement signal and the third threshold value with each other and output a third comparison result;
a fourth convolution function device, configured to receive, at a fourth input, the second measurement signal detected on the aspiration fluid line and, at a fourth output, to output a fourth quantity, convolved with a fourth convolution function, of a time derivative of the second measurement signal, wherein the fourth convolution function has a fourth time duration, which is shorter than the third time duration; a fourth threshold value device, with which a fourth threshold value for the time derivative of the second measurement signal can be established;
a fourth comparison device, configured to receive the fourth quantity, output by the fourth convolution function device, of the time derivative of the second measurement signal and to receive the fourth threshold value and, after expiration of a predetermined fourth time point, to compare the fourth quantity of the time derivative of the second measurement signal and the fourth threshold value with each other and output a fourth comparison result;
a second evaluation device, configured to receive and evaluate the third comparison result and the fourth comparison result and output a second evaluation signal
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
In claim 1 and all its dependent claims, it seems unclear if “a first input” and “a first output” are parts of “a first convolution device” since claim only recites that a first convolution device is “configured to receive, at a first input” and “at a first output, to output” without clearly indicating that the first input and output are parts of the first convolution device. Same issue is applicable to “a second input” and “a second output” associated with “a second convolution device” in claim 1 and “a third/fourth input” and “a third/fourth output” associated with “a third/fourth convolution device” in claim 4.
In claim 1 and all its dependent claims thereof, it seems unclear whether or not the first convolution device is performing “a first convolution function.” Same issue is applicable to “a second convolution function” in claim 1 and “a third convolution function” in claim 4. According to the specification, the convolution function is being performed by the first/second/third/fourth convolution function devices (see [0047], [0049], [0056],[0057]).
In claim 4, the antecedent basis for “a parameter” seems indefinite as it is unclear whether or not “a parameter” in claim 4 is the same as “a parameter” in claim 1.
In claims 4 and 10, the antecedent basis for “an ophthalmosurgical appliance” seems indefinite as it is unclear whether or not “an ophthalmosurgical appliance” in claims 4 and 10 is the same as “an ophthalmosurgical appliance” in claim 1
In Claim 5, the claim recites the limitation "the second measurement signal " in lines 2 and 4 of the claim. There is insufficient antecedent basis for this limitation in the claim. If claim 5 were amended to depend from claim 4 the limitation would have proper antecedent basis.
Allowable Subject Matter
Claims 1-10 would be allowable if the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action are overcome.
For claims 1-10, many ophthalmic surgical devices include flow control mechanisms for handling pressure surges when lens debris can occlude aspiration lines to enhance the safety of lens tissue removal. Examples are US patent applications 2001/0023331, 2003/0050619, 2004/0068300, 20060224143, 2009/0048607 and 2023/0218437. However, none of the prior considered during search use the concept of convolution devices for monitoring sensor data and providing flow control for handling such pressure surges and particularly wherein convolutions of time derivatives for different sample size sets are convolved with a convolution function, which results are compared to result in control of the aspiration flow.
However, the concept must be disclosed and claimed in such a manner to comply with 35 U.S.C. 112(a) and (b) by overcoming all rejections set forth above in the current Office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK W. BOCKELMAN whose telephone number is (571)272-4941. The examiner can normally be reached Monday -Friday 8:00 am - 4:00 pm.
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/MARK W. BOCKELMAN/Primary Examiner, Art Unit 3792