DETAILED ACTION
This action is in response to applicant's amendments filed 05/19/25. The examiner acknowledges the amendments to the claims.
Claims 1-14 are pending in this application.
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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
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 12 is 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.
Claim 12, line 1 recites the limitation "the rounded, elongated slot". There is insufficient antecedent basis for this limitation in the claim. For examination purposes, Claim 12 will be read as being dependent on Claim 10 which does recite “a rounded elongated slot” in line 7, rather than being dependent on Claim 1.
Claim 12, line 2 recites the limitation "the rounded wall". There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the limitation will be read as --the convex wall--.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-5, 8-9 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Erickson et al., hereinafter “Erickson” (U.S. Pub. No. 2004/0041979).
Regarding claim 1, Erickson discloses a laser lysis lens capable of viewing and lysing sutures in an ophthalmic procedure (via an eye contacting surface; [0002]-[0004]), the lens comprising:
a lens body 20 (Figures 1-5) that includes a top viewing surface 28 and an eye contacting facet 26 disposed at the bottom of the lens body, the eye contacting facet having a slot (concave surface; [0016]), wherein the lens body is configured such that a suture to be lysed is viewed directly through the top surface of the lens body ([0016]-[0017]; viewing face 28 allows a user to view a suture to be lysed).
Regarding claim 3, Erickson discloses further comprising first and second facets (two of 32a-32d; [0018]), wherein the first and second facets are disposed at an angle with respect to the eye contacting facet 26 (Figures 3-4).
Regarding claim 4, Erickson discloses the lens body includes a bulbous upper portion ([0017]; 28 may carry a spherical curvature) and a multi-faceted lower portion (facets 32a-32d; [0018]), the eye contacting facet disposed at a bottom of the multi-faceted lower portion (Figures 3-4).
Regarding claim 5, Erickson discloses wherein the orientation of first and second facets are synchronized to the position of the slot so that, during use, eye lids of a patient are held horizontally and the slot is oriented superotemporally (depending on the position of the lens body on a patient’s eye surface, the eye lids of the patient may be held horizontally and the slot may be oriented at the superotemporal, or upper outer section of the eye).
Regarding claims 8-9, Erickson discloses the slot is configured to fixate a drainage tube of a drainage implant and the slot is configured to receive, in a longitudinal manner, at least part of a drainage tube of a drainage implant (depending on the lens body position relative to drainage tube and the size of the drainage tube, the curved, concave surface or slot of 26 is capable of mounting onto at least part of a drainage tube along its length).
Regarding claim 13, Erickson discloses the eye contacting facet 26 including the slot transmits light ([0016]; since the lens body is made of an optically transparent material, the eye contacting facet is capable of transmitting light).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Erickson (U.S. Pub. No. 2004/0041979) in view of Gille et al., hereinafter “Gille” (U.S. Pub. No. 2010/0265461).
Regarding claim 6, Erickson discloses the claimed invention, as discussed above except for further comprising a handle extending rearwardly from the lens body, the first and second facets facing away from the handle, or further comprising a handle extending rearwardly from the lens body, wherein the slot is oriented transversely with respect to the handle.
Gille teaches in Figure 12A a lens body 1220 and a handle 1250 extending rearwardly form the lens body, and also in Figures 13B, 13D a lens body 1310 and a handle 1306 extending rearwardly from the lens body. Facets in Figure 12A (angled surfaces directly adjacent to the surface contacting eye 1215) are facing away from the handle 1250, as well as facet 1362 in Figures 13B, 13D is facing away from handle 1306. The slot in Figure 12A (the surface contacting eye 1215) is oriented transversely with respect to the handle (the handle extends along optical axis 1235 which is transverse to the surface contacting the eye 1215), and the slot 1312 in Figures 13B, 13D is oriented transversely, or at an angle, with respect to the handle 1306.
It would have been obvious to one of ordinary skill before the effective filing date to modify Erickson with a handle as claimed, as taught by Gille, in order to support the lens body such that a user can grip and manipulate the lens body for positioning on a patient’s eye.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 10-11, 14 are allowed.
Claim 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim (Claim 12 is read as being dependent on Claim 10 instead of Claim 1) and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claims 2 and 14, none of the prior art of record, alone or in combination, teaches or renders obvious a laser lysis lens including, inter alia, a lens body including an eye contacting facet having a slot, wherein the eye contacting facet includes a triangular portion that adjoins a semi-circular portion at an interface to form a general teardrop shape, the slot extending coincident with the interface. Erickson and Gille teach the claimed invention, as discussed above, but neither teaches nor renders obvious an eye contacting facet having a general eyedrop shape, the slot extending coincident with an interface between a triangular portion and a semi-circular portion. Also see reasons for indication of allowable subject matter on pages 7-8 of office action filed 11/19/24.
Regarding claim 10, none of the prior art of record, alone or in combination, teaches or renders obvious a laser lysis lens including, inter alia, a lens body having a faceted lower portion, the faceted lower portion including an eye contracting facet on a bottom of the lens body, wherein the eye contacting facet includes a rounded, elongated slot configured to longitudinally receive at least partially a drainage tube. Erickson and Gille teach the claimed invention, as discussed above, including a rounded or curved slot (concave shape to receive surface of a patient’s eye), but do not teach the slot being elongated to longitudinally receive at least partially a drainage tube.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DARWIN P EREZO whose telephone number is (571)272-4695. The examiner can normally be reached M-F 7am-4pm.
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DARWIN P. EREZO
Supervisory Patent Examiner
Art Unit 3771
/DARWIN P EREZO/Supervisory Patent Examiner, Art Unit 3771