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 .
Information Disclosure Statement
The Information Disclosure Statement filed 08/04/2023 has been considered by the Examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “40” has been used to designate both laser pulses and cavitation bubbles. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because Fig. 2 does not include volume body 12 even though it is referred to in Par. [0047] of the specification as if it were intended to. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Par. [0007], line 2: “a s well” should be changed to “as well”.
Par. [0008], line 9: “zernites” isn’t a word. The Examiner is unsure what the Applicant intended.
Par. [0014], lines 1-2: “thus quasi a pivoting” needs revision.
Par. [0043], line 7: “formed besides the laser” should be changed to “formed beside the laser”.
Par. [0049]: “eye 44” should be “eye 42”. Reference character 44 was previously used for the cornea.
Appropriate correction is required.
Claim Objections
Claim 1 objected to because of the following informalities:
Line 3: “posterior interface ,” should be changed to “posterior interface,”. Please remove additional space.
Claim 10 objected to because of the following informalities:
Line 1: “according to according claim 1” should be changed to “according to claim 1”. Please remove additional “according”.
Claim 15 objected to because of the following informalities:
Line 4: “execute the the method” should be changed to “execute the method”. Please remove additional “the”.
Claim 19 objected to because of the following informalities:
Line 3: “posterior interface ,” should be changed to “posterior interface,”. Please remove additional space.
Line 12: please separate and indent the “wherein the anterior…” limitation to be consistent with claim 1.
Claim 27 objected to because of the following informalities:
Line 3: “substantially circle-like track or as an end of the substantially circle-like track” should be changed to “substantially circle-like tracks or as an end of the substantially circle-like tracks”.
Appropriate correction is required.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
“means of the control device” in claim 1
“means of photodisruption or ablation” in claim 15
“means of photodisruption or ablation” in claim 17
“means of the control device” in claim 19.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claims 1-32 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 limitation “separation from a material of a volume body with an anterior interface and with a posterior interface” renders claim 1 (lines 2-3) indefinite. It is unclear whether this limitation is supposed to convey that the volume body has an anterior and a posterior interface, or if this limitation is supposed to convey that a material of a volume body is being separated with an anterior interface and with a posterior interface. The Examiner believes the Applicant intends for this limitation to convey that a volume body is being separated from a material, and that the volume body has an anterior interface and a posterior interface. This is how the limitation is being interpreted for examination purposes. However, the Examiner contends that the limitation is not clear as presently written and requests revision.
The limitation “depth relief” renders claim 1 (line 6) indefinite. The Applicant’s specification appears to define “depth relief” as “the volume body itself” and also “the difference between anterior and posterior surface” (Par. [0017]). The Applicant’s specification also defines “depth relief” as being determined at the posterior interface (Par. [0019]). The claim limitation explains that the “depth relief” is determined to be generated between the anterior interface and the posterior interface. “Depth relief” does not appear to be a term of art and it is unclear how “depth relief” is supposed to be interpreted in context of the claim, and it is unclear what the metes and bounds of “depth relief” are (MPEP 2173.05(a)). Please provide proper corrections and/or explanation.
Claim 1 recites the limitation “a respective anterior or posterior interface” in line 9, whereas an anterior interface and a posterior interface were already introduced earlier in claim 1. It is unclear whether the Applicant intended to claim the same or a different anterior and posterior interface. Consider changing to “the respective anterior or posterior interface”.
The limitation “wherein the anterior and posterior interfaces of the volume body to be separated” renders claim 1 (lines 14-15) indefinite. It is unclear whether the anterior and posterior interfaces are being separated or if the volume body is being separated. Please provide proper corrections and/or explanation.
The limitation “a lenticular volume body” renders claim 12 (line 2) indefinite. It is unclear whether this is the same volume body as introduced in claim 1. The Examiner suggests potentially incorporating a wherein clause such as “wherein the volume body is a lenticular volume body”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 14 recites the broad recitations “between 300 nm and 1400 nm”, “between 1 fs and 1 ns”, and “greater than 10 kHz”, and the claim also recites “between 700 nm and 1200 nm”, “between 10 fs and 10 ps” and “between 100 kHz and 10 MHz” which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 16 recites the limitation "the cornea" in line 5. There is insufficient antecedent basis for this limitation in the claim.
The limitation “separation from a material of a volume body with an anterior interface and with a posterior interface” renders claim 19 (lines 1-3) indefinite. It is unclear whether this limitation is supposed to convey that the volume body has an anterior and a posterior interface, or if this limitation is supposed to convey that a material of a volume body is being separated with an anterior interface and with a posterior interface. The Examiner believes the Applicant intends for this limitation to convey that a volume body is being separated from a material, and that the volume body has an anterior interface and a posterior interface. This is how the limitation is being interpreted for examination purposes. However, the Examiner contends that the limitation is not clear as presently written and requests revision.
The limitation “depth relief” renders claim 19 (line 5) indefinite. The Applicant’s specification appears to define “depth relief” as “the volume body itself” and also “the difference between anterior and posterior surface” (Par. [0017]). The Applicant’s specification also defines “depth relief” as being determined at the posterior interface (Par. [0019]). The claim limitation explains that the “depth relief” is determined to be generated between the anterior interface and the posterior interface. “Depth relief” does not appear to be a term of art and it is unclear how “depth relief” is supposed to be interpreted in context of the claim, and it is unclear what the metes and bounds of “depth relief” are (MPEP 2173.05(a)). Please provide proper corrections and/or explanation.
Claim 19 recites the limitation “a respective anterior or posterior interface” in line 8, whereas an anterior interface and a posterior interface were already introduced earlier in claim 19. It is unclear whether the Applicant intended to claim the same or a different anterior and posterior interface. Consider changing to “the respective anterior or posterior interface”.
Claim 19 recites the limitation "the laser" in line 10. There is insufficient antecedent basis for this limitation in the claim.
The limitation “wherein the anterior and posterior interfaces of the volume body to be separated” renders claim 19 (lines 12-13) indefinite. It is unclear whether the anterior and posterior interfaces are being separated or if the volume body is being separated. Please provide proper corrections and/or explanation.
The limitation “a lenticular volume body” renders claim 30 (line 3) indefinite. It is unclear whether this is the same volume body as introduced in claim 19. The Examiner suggests potentially incorporating a wherein clause such as “wherein the volume body is a lenticular volume body”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 32 recites the broad recitations “between 300 nm and 1400 nm”, “between 1 fs and 1 ns”, and “greater than 10 kHz”, and the claim also recites “between 700 nm and 1200 nm”, “between 10 fs and 10 ps” and “between 100 kHz and 10 MHz” which are the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
*All remaining claims are rejected due to their dependency on a rejected claim.
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.
Claim 17 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed computer program does not fall within at least one of the four categories of patent eligible subject matter as the courts have found that a computer program per se is merely a series of mathematical calculations or mental steps and does not constitute a patentable process [Gottschalk v. Benson, 409 U.S. at 72.; MPEP 2106.03].
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7, 9-10, 12-23, 25, 27-28, and 30-32 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Arba-Mosquera, et al. (U.S. PGPub No. 2021/0052423).
Regarding claims 1 and 19, Arba-Mosquera teaches (Figs. 1-2) a method for controlling a laser of a processing apparatus/performing a surgical procedure for separation from a material of a volume body with an anterior interface and with a posterior interface (Title, Abstract – a method for controlling an eye surgical laser for the separation of a volume body with a predefined posterior interface and a predefined anterior interface from a cornea (i.e., material); Par. [0001]), wherein (Fig. 1, # 20 – control device) the method is executed by a control device of the processing apparatus (Abstract, Par. [0001]; Par. [0026] – surgical laser; Par. [0035] – control device 20) and comprises:
(Figs. 1-2, # 14 – posterior interface, 16 – anterior interface) determining a depth relief of the volume body to be generated between the anterior interface and the posterior interface depending on at least one information (Par. [0005] – the predefined posterior and anterior interfaces of the volume body to be separated are defined by the predefined pattern and are generated by means of an interaction of the individual laser pulses with the cornea by the generation of a plurality of cavitation bubbles generated by photodisruption; Par. [0013] – the predefined pattern is defined based on one or more control datasets. The control datasets result from for example topographic and/or tachymetric measurements of the cornea to be treated; Par. [0024]; Par. [0040]; It is noted that the depth between the anterior interface and the posterior interface are defined by predefined patterns, which are based on control datasets that are formed from topographic and/or tachymetric measurements of the cornea (i.e., at least one information));
determining a reference point of an axis of symmetry of the depth relief or of a respective anterior or posterior interface by means of the control device (Par. [0019] – control of the laser is effected to generate several different cavitation bubble paths. The start of the photodisruption by the individual laser pulses can be effected in the center of the respective interface; It is noted that the center of the respective interface corresponds to the reference point of an axis of symmetry of the anterior or posterior interface); and
(Figs. 1-2, # 24; Fig. 3) controlling the laser starting from the reference point in substantially circle-like tracks at least in certain areas such that the laser emits pulsed laser pulses in a shot sequence in a predefined pattern into the material (Abstract; Par. [0019] – spiral cavitation bubble path, annular cavitation bubble path, helical cavitation bubble path. Thereby, different cavitation bubble paths can be generated by means of different shot sequences; Par. [0040] – this can be effected by at least partially circularly and/or spirally guiding the laser beam 24 according to the predefined pattern; Par. [0041-0042]),
wherein (Figs. 1-3) the anterior and posterior interfaces of the volume body to be separated are defined by the predefined pattern and the anterior and posterior interfaces are generated by interaction of each of the laser pulses with the material by generation of a plurality of cavitation bubbles along the substantially circle-like tracks (Abstract; Par. [0019]; Par. [0041-0042] – the interfaces 14, 16 of the volume body 12 to be separated are defined by the predefined pattern and the interfaces 14, 16 are generated by means of an interaction of the individual laser pulses with the cornea by the generation of a plurality of cavitation bubbles 40 generated by photodisruption; Par. [0019] and [0042] evidence substantially circle-like tracks by disclosing spiral cavitation bubble paths, annular cavitation bubble paths, and helical cavitation bubble paths).
Therefore, claims 1 and 19 are unpatentable over Arba-Mosquera, et al.
Regarding claims 2 and 20, Arba-Mosquera teaches the method according to claim 1/claim 19, wherein (Figs. 1-2, # 14 – posterior interface) the depth relief is determined at the posterior interface (Par. [0040] – the interface 14, that is the interface located deeper in the eye of the stroma 36, is first formed by means of the laser beam 24, wherein it then corresponds to the posterior interface 14).
Therefore, claims 2 and 20 are unpatentable over Arba-Mosquera, et al.
Regarding claims 3 and 21, Arba-Mosquera teaches the method according to claim 1/claim 19, wherein (Figs. 1-2, # 16 – anterior interface) control data is generated such that the anterior interface is generated substantially parallel to a surface of the material (Par. [0039]; Par. [0040]; The anterior interface 16 is substantially parallel to the surface 26 of the cornea).
Therefore, claims 3 and 21 are unpatentable over Arba-Mosquera, et al.
Regarding claims 4 and 22, Arba-Mosquera teaches the method according to claim 1/claim 19, wherein spiral tracks or elliptical tracks are generated as the substantially circle-like tracks (Par. [0019]; Par. [0021]; Par. [0040] – circularly or spirally guiding the laser beam).
Therefore, claims 4 and 22 are unpatentable over Arba-Mosquera, et al.
Regarding claims 5 and 23, Arba-Mosquera teaches the method according to claim 1/claim 19, wherein the reference point is determined depending on a thickest location of the volume body to be generated or a thinnest location of the volume body to be generated (Par. [0019]; It is noted that having the starting point in the center of a respective interface would implicitly mean the starting/reference point is at a thinnest/thickest location of the volume body).
Therefore, claims 5 and 23 are unpatentable over Arba-Mosquera, et al.
Regarding claims 7 and 25, Arba-Mosquera teaches the method according to claim 1/claim 19, wherein control data is generated for removing the volume body in an eye and/or in a cornea of a human or an animal (Par. [0001] – separation of a volume body from a human or animal cornea; [0009-0010]).
Therefore, claims 7 and 25 are unpatentable over Arba-Mosquera, et al.
Regarding claims 9 and 27, Arba-Mosquera teaches the method according to claim 1/claim 19, wherein the reference point is determined as a beginning of the substantially circle-like tracks or as an end of the substantially circle-like tracks (Par. [0019] – Therein, the start of the photodisruption by the individual laser pulses can be effected in the center (i.e., reference point) of the respective interface).
Therefore, claims 9 and 27 are unpatentable over Arba-Mosquera, et al.
Regarding claims 10 and 28, Arba-Mosquera teaches the method according to according claim 1/claim 19, wherein the reference point is determined such that the reference point does not coincide with a center of symmetry of the volume body viewed in a direction of the plurality of cavitation bubbles to be generated (Par. [0019] – the start of the photodisruption by the individual laser pulses can be effected in the center of the respective interface or also at the edge of the respective interface; The edge of the respective interface would be a point that does not coincide with a center of symmetry of the volume body).
Therefore, claims 10 and 28 are unpatentable over Arba-Mosquera, et al.
Regarding claims 12 and 30, Arba-Mosquera teaches the method according to claim 1/claim 19, wherein controlling the laser is effected such that a lenticular volume body is separated (Par. [0015] – the control of the laser is effected such that a lenticular volume body is separated).
Therefore, claims 12 and 30 are unpatentable over Arba-Mosquera, et al.
Regarding claims 13 and 31, Arba-Mosquera teaches the method according to claim 1/claim 19, wherein controlling the laser is effected such that topographic and/or pachymetric and/or morphologic data of the material is taken into account (Par. [0013]; Par. [0024] – control of the laser is effected such that topographic and/or tachymetric and/or morphologic data of the cornea are taken into account).
Therefore, claims 13 and 31 are unpatentable over Arba-Mosquera, et al.
Regarding claims 14 and 32, Arba-Mosquera teaches the method according to claim 1/claim 19, wherein controlling the laser is effected such that the laser emits laser pulses in a wavelength range between 300 nm and 1400 nm, or between 700 nm and 1200 nm, at a respective pulse duration between 1 fs and 1 ns, or between 10 fs and 10 ps, and a repetition frequency of greater than 10 kHz, or between 100 kHz and 10 MHz (Par. [0027]).
Therefore, claims 14 and 32 are unpatentable over Arba-Mosquera, et al.
Regarding claim 15, Arba-Mosquera teaches (Fig. 1, # 10 – treatment device, i.e. processing apparatus, 18 – laser, 20 – control device) a processing apparatus with at least one laser for separation of a volume body with predefined interfaces from a material by means of photodisruption or ablation and with at least one control device for the at least one laser (Abstract, Par. [0001]; Par. [0035-0036]) that is configured to execute the the method according to claim 1 (please see rejection of claim 1 hereinabove).
Therefore, claim 15 is unpatentable over Arba-Mosquera, et al.
Regarding claim 16, Arba-Mosquera teaches the processing apparatus according to claim 15, wherein the control device
comprises at least one storage device for at least temporary storage of at least one control dataset, wherein the at least one control dataset includes control data for positioning and/or for focusing individual laser pulses in the cornea (Par. [0028]); and
includes at least one beam device for beam guidance and/or beam shaping and/or beam deflection and/or beam focusing of a laser beam of the at least one laser (Par. [0028]).
Therefore, claim 16 is unpatentable over Arba-Mosquera, et al.
Regarding claim 17, Arba-Mosquera teaches (Fig. 1, # 10 – treatment device, i.e. processing apparatus, 18 – laser, 20 – control device) a computer program including commands, which cause a processing apparatus with at least one laser for separation of a volume body with predefined interfaces from a material by means of photodisruption or ablation and with at least one control device for the at least one laser (Abstract; Par. [0001]; Par. [0004]; Par. [0030]; Par. [0035-0036]) to execute the method according to claim 1 (please see rejection of claim 1 hereinabove).
Therefore, claim 17 is unpatentable over Arba-Mosquera, et al.
Regarding claim 18, Arba-Mosquera teaches a non-transitory computer-readable medium, on which the computer program according to claim 17 is stored (Abstract; Par. [0001]; Par. [0004]; Par. [0030]; please also see rejection of claim 17 hereinabove).
Therefore, claim 18 is unpatentable over Arba-Mosquera, et al.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Arba-Mosquera, et al. (U.S. PGPub No. 2021/0052423) in view of Loerner, et al. (U.S. PGPub No. 2021/0177651).
Regarding claims 8 and 26, Arba-Mosquera teaches the method according to claim 7/claim 25, as indicated hereinabove. Arba-Mosquera does not explicitly teach the limitation of instant claim 8/claim 26, that is wherein a potential position change of the eye in relation to the laser and/or a potential position change of the laser in relation to the eye are taken into account in controlling the laser.
Loerner teaches a system and method of corneal cross-linking to be used as a treatment for keratoconus (Title, Abstract, Par. [0002]). Loerner also teaches the limitation of instant claim 8, that is wherein (Fig. 2, # 122 – eye; Fig. 7A, # 730) a potential position change of the eye in relation to the laser and/or a potential position change of the laser in relation to the eye are taken into account in controlling the laser (Par. [0105] – if the eye has changed from the first position of the eye to the second position of the eye, the at least one mirror may be adjusted based at least on the location and based at least on the second position of the eye, at 730. For example, if eye 122 has changed from the first position of eye 122 to the second position of eye 122 at least one mirror of scanner 244 may be adjusted based at least on location 910 and based at least on the second position of the eye 122).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Loerner’s method step of accounting for a potential position change of the eye in relation to the laser into Arba-Mosquera’s method because doing so would be an example of using a known technique to improve similar methods in the same way. One of ordinary skill in the art would have desired implementing such a feature in order to ensure accurate and precise laser treatment of the cornea to ensure effective treatment.
Therefore, claims 8 and 26 are unpatentable over Arba-Mosquera, et al. and Loerner, et al.
Claims 11 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Arba-Mosquera, et al. (U.S. PGPub No. 2021/0052423 – hereinafter Arba-Mosquera ‘423) in view of Arba-Mosquera, et al. (DE102019135609 – hereinafter Arba-Mosquera ‘609 – please see attached English translation for corresponding citations).
Regarding claims 11 and 29, Arba-Mosquera ‘423 teaches the method according to claim 1/claim 19, as indicated hereinabove. Arba-Mosquera ‘423 does not explicitly teach the limitation of instant claim 11/claim 29, that is wherein a shape of a patient interface of the processing apparatus for docking the material in a processing operation is taken into account in determining the reference point.
Arba-Mosquera ‘609 teaches a method for controlling an ophthalmic laser of a treatment device for the separation of a solid with a predefined posterior and a predefined anterior interface from a human or animal cornea (Title, Abstract). Arba-Mosquera ‘609 also teaches the limitation of instant claim 11, that is wherein a shape of a patient interface of the processing apparatus for docking the material in a processing operation is taken into account in determining the reference point (Page 4, lines 18-30 – after the docking process, a deformation of the cornea has set in due to a suction process of the cornea at the patient interface, which can be detected by determining the pupil position and the torsion angle and can be taken into account during the treatment. The treatment on the patient can thus be carried out in an improved manner.; Page 4, line 31 - Page 5, line 4).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented the method step of Arba-Mosquera ‘609 of accounting for the shape of a patient interface in determining the reference point for controlling a laser into Arba-Mosquera ‘423’s method because doing so would be an example of using a known technique to improve similar methods in the same way. One of ordinary skill in the art would have also desired accounting for the patient interface in controlling the laser because doing so would result in improving the manner in which treatment of the patient is carried out (see Page 4, lines 18-30 of Arba Mosquera ‘609).
Therefore, claims 11 and 29 are unpatentable over Arba-Mosquera ‘423, et al. and Arba-Mosquera ‘609, et al.
Allowable Subject Matter
Claims 6 and 24 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record (namely Arba-Mosquera) does not disclose or fairly suggest either singly or in combination the claimed invention of dependent claims 6 and 24, when taken as a whole, comprising, in addition to the other recited claim elements, wherein a mathematical minimizing method for minimizing an asymmetry of the depth relief is used for determining the reference point. No other prior art reference could be found that teaches or renders obvious the limitations of instant claims 6 and 24.
Therefore, in view of the prior art and its deficiencies, the claimed invention as a whole for claims 6 and 24 is rendered novel and non-obvious, and thus, contains allowable subject matter as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Arba-Mosquera, et al. (U.S. PGPub No. 2021/0346198)
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/MICHAEL T. HOLTZCLAW/Examiner, Art Unit 3796