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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-9, and Species A1, B5, C3, and D3 in the reply filed on 08/26/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
However because Applicant’s election of B5 and its characterization, the examiner withdraws the requirement for election of a single species within species group B.
The examiner will examine and search Group I, and species A1, C3, and D3, and claims 1-9.
Claim Rejections - 35 USC § 112
112(a)
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.
Claim 2 is 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.
Claim 2 recites “near – 1R” in line 1. The written description does not disclose “near – 1R” anywhere.
This appears to be a typographical error and the examiner will interpret “near – 1R” as “near -IR” in order to make sense of claim 2. Correction is required.
112(b)
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 3-5 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.
The term “about” in claim 3 (line 2) is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Accordingly, the examiner cannot determine the metes and bounds of the presently claimed invention as defined by claim 3.
In order to provide an initial examination and search the examiner will interpret the word “about” in claim 3 as being deleted.
The term “about” in claim 4 (line 2) is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Accordingly, the examiner cannot determine the metes and bounds of the presently claimed invention as defined by claim 4.
In order to provide an initial examination and search the examiner will interpret the word “about” in claim 4 as being deleted.
The term “about” in claim 5 (line 2) is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Accordingly, the examiner cannot determine the metes and bounds of the presently claimed invention as defined by claim 5.
In order to provide an initial examination and search the examiner will interpret the word “about” in claim 5 as being deleted.
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 1-8989898 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Herekar et al. (U.S. Patent Application Publication 2018/0207029).
Regarding claim 1, Herekar et al. disclose a system for treating an eye, the system comprising:
a laser (see [0020], [0022], and [0312] for example) configured to generate a laser beam; and
a diffractive optical element (“beam splitter 626,” see [0306] and figure 7) configured to split the laser beam into a predetermined pattern and direct the patterned laser beam to a treatment zone of the eye.
Regarding claims 2-3, Herekar et al. disclose the claimed invention, see the wavelength of near IR wavelength of “810 nm” in [0308].
Regarding claim 4, Herekar et al. disclose the claimed invention, see the power range 200 mW to 400 mW in [0043].
Regarding claim 5, Herekar et al. disclose the claimed invention, see [0178].
Regarding claims 6-7, Herekar et al. disclose the claimed invention, see [0062], [0338] and figures 4A-6B.
Regarding claim 8, Herekar et al. disclose the claimed invention, see [0062], [0338] and figures 4B-4C and 6A-6B.
Regarding claim 9, Herekar et al. disclose the claimed invention, see “hand held probe” in [0006], “handpiece” in [0024], and [0083] for example.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON F ROANE whose telephone number is (571)272-4771. The examiner can normally be reached generally Mon-Fri 8am-9pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niketa Patel can be reached at (571) 272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON F ROANE/Primary Examiner, Art Unit 3792