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 Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1, directed to a computer-implemented method for determining refractive power for an intraocular lens:
Step 1: Claim 1 falls within the statutory category, the claim is directed to a process. Therefore, step 1 is met by the claim.
Step 2A, prong one: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. The steps in claim 1 are directed to the use of mathematical calculations (a physical model for determining refractive power) and using a computer to receive training data to generate input data (training a machine learning system with measured clinical ophthalmological training data). These steps are all being performed by a computer therefore, the computer is merely used to perform an abstract idea and meets prong one.
Step 2A, prong two: evaluating whether the claim as a whole integrates the judicial exception into a practical application. The limitations are directed to receiving training data that are stored in a computer system. The computer is merely used as a tool for receiving data and providing an output, this does not integrate the judicial exception into a practical application.
Step 2B: This part of eligibility analysis evaluates wherein the claim amounts to significantly more than the recited exception, wherein any additional element or combination of additional elements adds an inventive concept to the claim. The steps involve getting training data and desired results from a learning model which amounts to no more than instructions using a computer therefore, it does not provide additional elements other than instructions to implement an abstract idea. Therefore, it does not provide an inventive concept.
Claim 9, directed to a system for determining refractive power for an intraocular lens:
Step 1: Claim 9 falls within the statutory category, the claim is directed to a machine (having a system with memory for storing and measuring ophthalmological data of patient). Therefore, step 1 is met by the claim.
Step 2A, prong one: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. The limitations are directed to a system for receiving data and providing mathematical calculations and storing a memory for measured data. Therefore, a computer is merely being used as a tool to perform an abstract idea and meets the prong one.
Step 2A, prong two: evaluating whether the claim as a whole integrates the judicial exception into a practical application. The limitations are directed to a system for receiving training data. The computer is merely used as a tool for receiving data and providing an output, this does not integrate the judicial exception into a practical application.
Step 2B: This part of eligibility analysis evaluates wherein the claim amounts to significantly more than the recited exception, wherein any additional element or combination of additional elements adds an inventive concept to the claim. The system uses training data and associated results to determine refractive power, therefore it does not provide additional elements other than instructions to implement an abstract idea. Therefore, it does not provide an inventive concept.
Dependent claims 2-8 are also rejected for the same reasons set forth above and because they also fail to recite an additional element that constitutes a practical application or significantly more.
Claims 10-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to nonstatutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because:
Step 1: Claim 10, is ineligible subject matter and does not fall within the statutory category. The claim is directed to a computer program which is considered a product that is not tangible or physical, just a software. Therefore, step 1 is not met by the claim.
Dependent claims 11-17 are also rejected for the same reasons set forth above.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim(s) 10 and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bor et al. U.S. Publication 2020/0015894.
Regarding Claim 10, Bor et al. discloses a computer program product 500 for determining refractive power for an intraocular lens to be inserted (paragraphs [0008], [0067], [0071]), wherein the computer program product comprises a computer-readable storage medium 510 comprising program instructions stored thereon (paragraphs [0008], [0062], [0067], [0071]), wherein the program instructions are executable by one or more computers or control units (paragraphs [0008], [0065] and [0071]) and cause said one or more computers or control units to carry out the method set forth in claim 1 (the computer program product is capable of carrying out the method steps of claim 1 of determining refractive power).
Regarding Claim 13, Bor et al. discloses wherein the measured ophthalmological data are OCT image data (paragraphs [0025], [0040]) or wherein the measured ophthalmological data are explicit values derived from OCT image data or wherein the measured ophthalmological data comprise both OCT image data and values derived from OCT image data (paragraphs [0040-0041] and as seen in Figure 2).
Regarding Claim 14, Bor et al. discloses wherein an expected position of the intraocular lens to be inserted is used as additional input data for the machine learning system (paragraphs [0007-0008], [0019], [0022], [0037], [0055], [0059]).
Regarding Claim 15, Bor et al. discloses wherein the learning model of the machine learning system, before the training with measured ophthalmological data, has already been trained by artificially generated training data based on laws of the physical model provided (abstract and paragraphs [0022-0024] and [0058]).
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bor et al. U.S. Publication 2020/0015894 in view of Ladas U.S. Publication 2019/0099262 A1.
Regarding Claim 16, Bor et al. does not expressly disclose wherein the physical model also comprises literature data for determining refractive power for an intraocular lens. Ladas teaches using a computer program (software or combination of computer systems, paragraphs [0030-0033]) to determine the intraocular lens power based on formula and lens selection parameter (abstract), the computer system 300 includes one or more processors 304 connected to a network 306 and using a physical model include a literature data to provide formulas that would determine the lens power (paragraph [0005]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Bor’s computer system to further include literature data as taught by Ladas for the purpose of providing formulas that would determine the lens power.
Regarding Claim 17, Bor et al. does not expressly disclose wherein the intraocular lens to be inserted is a spherical, toric or multifocal intraocular lens to be inserted. Ladas teaches using a computer program (software or combination of computer systems, paragraphs [0030-0033]) to determine the intraocular lens power based on formula and lens selection parameter (abstract), the computer system 300 includes interfaces that having measurements and parameters to select toric intraocular lens (paragraph [0044]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Bor’s computer system to further include interfaces that having measurements and parameters to select toric intraocular lens as taught by Ladas for the purpose of having different types of IOLS for different patient needs.
Conclusion
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/SEEMA MATHEW/
Primary Examiner, Art Unit 3774