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 .
Election/Restrictions
Applicant’s election without traverse of species B associated with claims 21-24, 28-31, 33, 35, 37 and 40 in the reply filed on 08/26/2026 is acknowledged.
Claims 25-27, 32-36, 38 and 39 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/26/2026.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 28-31, 33, 35 and 37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1,4-6, 8, 10 and 17of U.S. Patent No. 11,930,876 (hereinafter “ Pat. 876”). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to analogous methods of treating a patient having an eye condition.
Regarding claim 28 of the instant application, claim 1 of the “Pat. 876” discloses a method of treating a patient having an eye condition, the method comprising:
determining, during a pre-operative analysis of a patient, that an intra-ocular pressure (TOP) of an eye of the patient is at a normal pressure;
determining, during the pre-operative analysis of the patient, that the patient has a risk of developing glaucoma, and treating, based on the pre-operative analysis determination that the patient has the risk of developing glaucoma, the patient with an excimer laser to prophylactically treat glaucoma by delivering shots of energy from the excimer laser to create perforations in a trabecular meshwork of the eye of the patient.
Regarding claim 29 of the application, claim 4 of the Patent recites the method of claim1 wherein the delivery of the shots of energy to prophylactically treat glaucoma occurs prior to elevated intraocular pressure (TOP) being identified in the eye of the patient.
Regarding claim 30 of the application, claim 5 of the Patent recites method of claim 1, wherein the delivering the shots of energy to prophylactically treat glaucoma occurs without the patient actually having glaucoma.
Regarding claim 31 of the application, claim 6 of the Patent recites the method of claim1, wherein the risk is the congenital risk.
Regarding claim 33 of the application, claim 8 of the Patent recites the method of claim1, wherein the risk is a presence of a comorbidity.
Regarding claim 35 of the application, claim 10 of the Patent recites the method of claim1, wherein the risk is the age-related risk.
Regarding claims 37 of the instant application, claim 17 of the US patent No. 11903876 (hereinafter “Pat. 876”) discloses a method of treating a patient having an eye condition, the method comprising: determining, during a pre-operative analysis of the patient, that an intra-ocular pressure (TOP) of an eye of the patient is at a normal pressure;
determining, during the pre-operative analysis of the patient, that the patient has a risk of developing glaucoma, applying, through an incision in the eye of the patient, phacoemulsification ultrasound to the patient eye, the patient having been diagnosed as having cataracts in the eye; and applying, through the incision in the eye, an excimer laser energy to prophylactically treat glaucoma based on the pre-operative analysis determination that the patient has the risk of developing glaucoma.
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over US “Pat. 876”) as applied to claim 37 above, and further in view of US Patent 2013/0085484 to Van Valen et al. (hereinafter “VanValen”). The U.S. “Pat. 876” discussed above does not teach administering anesthesia to the patient’s eye prior to the surgical procedure/ performing the phaco-emulsification ultrasound procedure and the laser trabeculectomy procedure. However, It is well known in the art to apply anesthesia to the eye prior to ophthalmic procedures; This is explicitly taught by Van Valen (Par 0100). Therefore, it would have been obvious to one of ordinary skill in the art the time applicant’s invention was filed to apply anesthesia to the eye, as taught by Van Valen, before starting the surgical procedure taught by US “Pat. 876”, as a known component of an ophthalmic surgical procedure, specifically to make the patient comfortable.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance: the prior art of record, alone or in combination, does not disclose, teach, imply, suggest or anticipate a method for delivering laser energy to a surface of trabecular meshwork of an eye, the method comprising the combination of performing the steps recited in Claim 21 in its entirety, or provide a motivating combination thereof, making obvious the claimed invention. Claims 22-24 are allowed by the virtue of dependence on the allowed claim 21.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
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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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/AHMED M FARAH/Primary Examiner, Art Unit 3792
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