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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 2, 4-7, 10, 12-15, 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of U.S. Patent No. 10034796. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of ‘796 discloses the elements of claims 2, 10, 18: system performing the method for capturing an image of the patient's eye (‘796 Claim 1); locating an area of the patient's eye that indicates a previous treatment (‘796 Claim 1); building a treatment pattern included in a treatment template that identifies the target tissue in a pretreatment image of the patient's eye, wherein the target tissue is not part of the located area (‘796 Claim 1); registering the pretreatment image and the treatment template to the captured image (‘796 Claim 1); setting a position onto which treatment light is to be projected in the patient's eye by using the treatment template (‘796 Claim 1); controlling a delivery system based on the set position so that the treatment light is projected onto the position (‘796 Claim 1); and controlling a dosage of the treatment light at the set position based on a dosage control information (‘796 Claim 1).
The remaining recited rejected dependent claims of the current claim set are disclosed by Claims 2-5 of ‘796.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-23 of U.S. Patent No. 10398599. ‘599 Claim 13 discloses the current applicants claims 2/10/18. System including deliver, image capture etc. (‘599 Claim 1); capturing an image of a patient's eye via the camera (‘599 Claim 1); locating an area of the patient's eye that indicates a previous treatment (‘599 Claim 13); building a treatment pattern included in a treatment template that identifies target tissue in a pretreatment image of the patient's eye (‘599 Claim 12), wherein the target tissue is not part of the located area (‘599 Claim 13); registering the pretreatment image and the treatment template to the captured image (‘599 Claim 1); setting a position onto which the treatment light is to be projected in the patient's eye by using the treatment template (‘599 Claim 1); controlling the treatment light delivery system based on the set position so that the treatment light is projected onto the position (‘599 Claim 1); and controlling a dosage of the treatment light at the set position based on a dosage control information (‘599 Claim 1).
The remaining claims are obvious in view of the remaining claims of ‘599.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of U.S. Patent No. 10925768 in view of US 20050288745 to Andersen et al. (included in 8/25/23 IDS). The ‘768 Claim 10 discloses the current applicants claims 2/10/18. Capturing an image of a patient's eye via the camera (‘768 Claim 1); locating an area of the patient's eye that indicates a previous treatment (‘768 Claim 10); building a treatment pattern included in a treatment template that identifies target tissue in a pretreatment image of the patient's eye (‘768 Claim 9), wherein the target tissue is not part of the located area (‘768 Claim 10); registering the pretreatment image and the treatment template to the captured image (‘768 Claim 1); controlling the treatment light delivery system based on the set position so that the treatment light is projected onto the position (‘768 Claim 1).
an interpretation of the claims of ‘768 may not explicitly disclose setting a position onto which the treatment light is to be projected in the patient's eye by using the treatment template; and controlling a dosage of the treatment light at the set position based on a dosage control information.
However, in the same field of endeavor (medical treatment system), Andersen teaches setting a position onto which the treatment light is to be projected in the patient's eye by using the treatment template ([0040]-[0042], [0045]-[0046], Fig. 6, 9; “sets” the scanning and other optical element into position to apply light); and controlling a dosage of the treatment light at the set position based on a dosage control information ([0032], [0034], [0037]-[0039], [0047], claim 48).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the planning and registration for treatment of ‘768 to include the “setting” and “controlling a dosage . . .” as disclosed by Andersen because the approach provided by Andersen providing a treatment which is overcomes the tedious and time consuming aspects of previous approaches ([0005], [0012])
The remaining claims are obvious in view of the remaining claims of ‘768.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-19 of U.S. Patent No. 11672704 in view of US 20050288745 to Andersen et al. ‘704 Claim 10 discloses the current applicants claims 2/10/18. Capturing an image of a patient's eye via the camera (‘704 Claim 1); locating an area of the patient's eye that indicates a previous treatment (‘704 Claim 10); building a treatment pattern included in a treatment template that identifies target tissue in a pretreatment image of the patient's eye (‘704 Claim 9), wherein the target tissue is not part of the located area (‘704 Claim 10); registering the pretreatment image and the treatment template to the captured image (‘704 Claim 1); controlling the treatment light delivery system based on the set position so that the treatment light is projected onto the position (‘704 Claim 1).
an interpretation of the claims of ‘704 may not explicitly disclose setting a position onto which the treatment light is to be projected in the patient's eye by using the treatment template; and controlling a dosage of the treatment light at the set position based on a dosage control information.
However, in the same field of endeavor (medical treatment system), Andersen teaches setting a position onto which the treatment light is to be projected in the patient's eye by using the treatment template ([0040]-[0042], [0045]-[0046], Fig. 6, 9; “sets” the scanning and other optical element into position to apply light); controlling the treatment light delivery system based on the set position so that the treatment light is projected onto the position ([0040]-[0042], [0044], [0047], claim 48); and controlling a dosage of the treatment light at the set position based on a dosage control information ([0032], [0034], [0037]-[0039], [0047], claim 48).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the planning and registration for treatment of ‘704 to include the “setting” and “controlling a dosage . . .” as disclosed by Andersen because the approach provided by Andersen providing a treatment which is overcomes the tedious and time consuming aspects of previous approaches ([0005], [0012])
The remaining claims are obvious in view of the remaining claims of ‘704.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20040143244 to Gray discuses registration image mapping and briefly treatment patterns
US 6099522 included in 8/25/23 IDS
US 20040002694 aligns two images one “reference”/prior with higher resolution. The pattern is based on the combination of images.
US 20080015553 – Figs. 2-4, 9-10B, [0123] For example a chromakey and/or a luminance key can be used under operator supervision to inhibit delivery of therapeutic laser energy to some treatment locations of a selected treatment pattern that would fall onto retinal locations that correspond with a retinal image of particular characteristics. For example, a mayor blood vessel, a scar, a pigmented zone, the macular area can all provide pixel characteristics to help processor/controller 10 block delivery of therapeutic laser energy onto these locations.
US 6599286 – Fig. 2, Claim 17
US 20070161972 - [0038] According to an exemplary embodiment of the invention, and as known in the art, it can be determined whether an eye has previously had photoablative laser surgery by looking at topographic and pachymetric diagnostic information; for example, by analyzing anterior surface topography and delta-pachymetry measurements, the presence and location of a transition zone in the previously ablated cornea can be determined. The irregularity of an eye for purposes of classification can be determined, for example, by examining the symmetry (dipole) of the corneal topography or decentration.
US 20060116668 included in 8/25/23 IDS see [0027]-[0032]
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/James Moss/Examiner, Art Unit 3792