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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Specification
The disclosure is objected to because of the following informalities:
The instant specification repeatedly uses the term “effect” or “effected” when the term “affect” or “affected” was meant.
Appropriate correction is required.
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 1-10, 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1-10, 12 do not include additional elements that integrate the exception into a practical application of the exception or that are sufficient to amount to significantly more than the judicial exception for the reasons provided below which are in line with the 2014 Interim Guidance on Patent Subject Matter Eligibility (Federal Register, Vol. 79, No. 241, p. 74618, December 16, 2014), the July 2015 Update on Subject Matter Eligibility (Federal Register, Vol. 80, No. 146, p. 45429, July 30, 2015), the May 2016 Subject Matter Eligibility Update (Federal Register, Vol. 81, No. 88, p. 27381, May 6, 2016), and the 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 4, p. 50, January 7, 2019).
Step 1: Claim 1 is drawn to a method.
Step 2A – Prong 1: Claim 1 is drawn to an abstract idea, that under its broadest reasonable interpretation, covers a mathematical calculation but for the recitation of generic computer components to perform the methods and steps for selecting particular data. In particular, claim 1 recites the following abstract limitations:
ascertaining first correction data for an eye of a patient for correcting the presbyopia from predetermined visual disorder data (mental process, ascertaining the data does not require collecting the data from the patient, it just requires receiving the data)
ascertaining second correction data for another eye of the patient, wherein the second correction data is calculated by means of a calculation operation of the first correction data with a patient-specific parameter; and (mental process)
providing the control data for the ophthalmological laser, which includes the first and second correction data for the respective eyes (mental process, note: the recitation “for” is not a positive requirement of the laser).
These limitations of claim 1 are drawn to an abstract idea because they are processes that, under their broadest reasonable interpretation, are steps merely comprised of mental processes. Ascertaining the second correction data by means of a calculation is regarded as a mental process and, as such, an abstract idea.
Step 2A – Prong Two: Claim 1 recites the following emphasized (indicated in bold) additional elements that are beyond the judicial exception:
A method for providing control data for an ophthalmological laser of a treatment apparatus for correcting presbyopia, wherein the method comprises the following steps performed by a control device
The additional elements do not integrate the exception into a practical application of the exception because the elements are directed to mere instructions to apply an exception and insignificant extra-solution activity. The control device is a computer that carries out the abstract steps described in claim 1 (see 2106.05(g) and 2106.05(f)). Accordingly, each of the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limitations on practicing the abstract idea. Further, the judicial exception does not integrate the claim as a whole into a practical application because the claimed invention does not improve another technology or technical field. The alleged improvement made by the claimed invention as argued by the application above sets forth the improvement in a conclusory manner and the claim does not include the components or steps of the invention that the improvement described.
Step 2B: Claim 1 does not recite additional elements that amount to significantly more than the judicial exception itself. Ascertaining and calculating data on a control device is well understood, routine, and conventional in the art. The additional elements do not amount to significantly more than the judicial exception because these limitations are simply appending well-understood, routine and conventional activities previously known in the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known in the industry.
Claims 2-7 depend on claim 1 and recite the same abstract idea as claim 1 for which they depend. Furthermore, these claims only contain recitations that further limit the abstract idea.
In re claim 9, see above 35 U.S.C. 101 analysis for claim 1. Claim 9 recites the same abstract idea as in claim 1 by referencing the limitations in claim 1, with no additional limitations.
In re claim 10, see above 35 U.S.C. 101 analysis for claims 1 and 9. Claim 10 recites the same abstract idea as in claim 1, by referencing the limitations in claim 1, with no additional limitations.
In re claim 12, see above 35 U.S.C. 101 analysis for claim 1. Claim 12 recites the same abstract idea as in claim 1, by referencing the limitations in claim 1, with the additional limitation of “a non-transitory computer-readable medium”, subject to the same analysis of the control device discussed above in re claim 1.
Claim Rejections - 35 USC § 102
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 1-4, 7-10, 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Odrich et al. (US 20050261752 A1).
In re claim 1, Odrich discloses a method for providing control data ([0075]: “treatment table”; Fig. 4: 14) for an ophthalmological laser ([0059]; Fig. 4: 28) of a treatment apparatus (Fig. 4) for correcting presbyopia (abstract), wherein the method comprises the following steps performed by a control device (21):
ascertaining first correction data for an eye of a patient for correcting the presbyopia from predetermined visual disorder data ([0079]: “intended optical corrections”, “measured ablation profiles”, note: “corrections” implies a starting point of predetermined disorder data);
ascertaining second correction data ([0086], treatment table would also contain data for other eye) for another eye of the patient, wherein the second correction data is calculated by means of a calculation operation of the first correction data with a patient-specific parameter ([0086]: “The effective range of focus of the two eyes combined is about 3 D” where the second eye accommodates the first eye, establishing a mathematical relationship (i.e. calculation) between the two eyes); and
providing the control data for the ophthalmological laser, which includes the first and second correction data for the respective eyes ([0059]; Fig. 4).
In re claim 2, Odrich discloses the method according to claim 1, wherein the first and/or the second correction data includes bi-aspheric, tri-aspheric and/or multi-aspheric refractive power distributions ([0026], “multifocal aspheric shape”).
In re claim 3, Odrich discloses the method according to claim 1, wherein the calculation operation is a multiplication and the patient-specific parameter has a value in a range of values from -1 to 1 ([0087] “treating each eye with a multifocal optical correction” and ”a first eye is corrected for near-vision, and a second eye is corrected for distance vision” describes inversion, as is represented by the value -1).
In re claim 4, The method according to claim 1, wherein the calculation operation is an addition and the patient-specific parameter has a diopter value in a range of values from -2 diopters to 2 diopters ([0086] “the difference between the average refraction of the two eyes varies between about 0.5 and 2.0 D”).
In re claim 7, Odrich discloses the method according to claim 1, wherein higher order aberrations are also taken into account in the respective correction data [0085].
In re claim 8, Odrich discloses a method for controlling a treatment apparatus, wherein the method comprises the following steps:
the method steps according to claim 1
the method steps according to transferring the provided control data to a respective ophthalmological laser of the treatment apparatus ([0059]; Fig. 4: 2012).
In re claim 9, Odrich discloses a control device [[0059]; Fig. 4: 21], which is configured to perform the method according to claim 1 [0059].
In re claim 10, Odrich discloses a treatment apparatus with at least one ophthalmological laser for separation of a corneal volume ([0020]: “ablated corneal shape”) with predefined interfaces of a human or animal eye by means of optical breakthrough, wherein the optical breakthrough comprises photodisruption and/or photoablation ([0020]: “ablation”), and at least one control device according to claim 9.
In re claim 12, Odrich discloses a non-transitory computer-readable medium ([0059]: “tangible medium”), on which a computer program [0082] is stored, the computer program including commands, which cause the treatment apparatus to execute the method according to claim 1 [0059].
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Odrich et al. (US 20050261752 A1)
In re claim 5, Odrich discloses the method according to claim 1,
wherein a treatment (i.e. nature of the surgery) is differently planned for each eye [0086];
wherein a center of the treatment is differently planned based on the nature of the surgery for an eye [0010].
Odrich lacks:
wherein a center of the treatment is differently planned for each eye.
Odrich discloses planning the center of the treatment based on what is needed for the correction. Odrich also discloses planning different treatments for both eyes of a patient. It is logical that the correction for each eye would have a differently planned center of treatment to best suit the eye-specific nature of the surgery of each respective eye.
It would have been obvious to try to one of ordinary skill in the art at the time that the instant application was filed to provide wherein a center of the treatment is differently planned for each eye, as suggested by Odrich, in order to yield the most tailored therapy for each eye based on the individual and combined needs of the eyes.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Odrich et al. (US 20050261752 A1) in view of Reinstein et al. (US 20120078239 A1).
In re claim 6, Odrich discloses the method according to claim 1, wherein the patient-specific parameter is determined based on the disease ([0086]: “The correction of presbyopia preferably covers about a 3 D range”).
Odrich lacks:
wherein the patient-specific parameter is determined based on a preoperative refraction, a residual accommodation, an age and/or a profession.
Reinstein discloses a method for corneal ablation (i.e. laser treatment) to treat anisometropia that utilizes patient age to select for refraction correction, differentiating between the dominant and non-dominant eye [0026].
It would have been obvious to one of ordinary skill in the art at the time that the instant application was filed to incorporate selecting treatment based on the age of the patient, as taught by Reinstein, into the method of correcting presbyopia with binocular vision, as taught by Odrich, as those with presbyopia benefit from increasing depth of field as they age and the presbyopia condition worsens (Reinstein, [0027]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HALLE M WELCH whose telephone number is (571)272-0168. The examiner can normally be reached Mon-Fri, 7:30 am to 5:00 pm..
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/HALLE MARGARET WELCH/Examiner, Art Unit 3796
/DAVID HAMAOUI/SPE, Art Unit 3796