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 .
Claim Rejections - 35 USC § 112
Claim 6 is 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.
Claim 6 recites the limitation "second overlap factor" in line 3. There is insufficient antecedent basis for this limitation in the claim. There isn’t a first overlap factor established in the independent claim 1 or claim 5.
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 1-2 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18432535 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a method for determining an optimized spatial pulse distance of laser pulses for an ophthalmological laser of a treatment apparatus comprising determining a laser pulse effect diameter, pre-determined tissue factor, an optical breakthrough threshold, and determining the optimized spatial pulse distance.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-11, 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The judicial exception being an abstract idea (mental process of determining and optimizing laser parameters). The claim(s) recite(s) method and computer readable medium of determining and optimizing laser parameters similar to In Re Grams, 888 F. 2d 835, 12 USPQ 2d 1824 (Fed, Cir. 1989) which was directed to determining/obtaining input data for an equation and found to be patent ineligible. This judicial exception is not integrated into a practical application because when the claims are considered as a whole, there is no element or combination of elements in the claims that are sufficient to ensure that the claims amount to significantly more that the abstract idea itself. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims fail to recite any improvements to another technology or technical field, improvements to the functioning of the processor itself, and/or meaningful limitation beyond generally link the use of an abstract idea to a particular environment (i.e. there is not structural relationship between the abstract idea of mere data gathering). The use of a control device, processor, and computer readable medium is merely generic. Regarding claim 1, “determining, by a control device of the treatment apparatus, a laser pulse effect diameter…” and “determining the optimized spatial pulse distance…”are a process, that can be performed by a human mind (including observing evaluating and judgment, under the broadest reasonable interpretation but for recitation of generic computer components. Determination of the laser pulse effect diameter and spatial pulse distance uses preset and predetermined data which is nothing more than Insignificant Extra-Solution Activity of mere data gathering.
Therefore, because there is no meaningful limitations in the claim to transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, the claim is rejected under 35 USC 101 as being directed to non-statutory subject matter.
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.
Claim(s) 1, 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vogler et al. (US 20120150160) in view of Sumiya (US 5800424).
Regarding claim 1, Vogler discloses a method for determining an optimized spatial pulse distance of laser pulses for an ophthalmological laser of a treatment apparatus (abstract), the method comprising: determining, by a control device of the treatment apparatus, a laser pulse effect diameter based on a predetermined tissue factor of tissue to be irradiated (section 0019, the laser is preferably provided in the case of a focus diameter of about 2-5 µm and an intermediate spacing of the individual focus radii of 1-2 µm corresponding to a focus center-to-center spacing of 2-10 µm), the strategy in the second operating mode provides that several pulses act on the same point in the tissue, for example the cornea) and a laser pulse energy portion above an optical breakthrough threshold (section 0014, low-energy pulses with high repetition frequency below the LIOB threshold, LIOB=laser-induced optical breakdown),
However, Vogler does not specifically disclose determining the optimized spatial pulse distance based on the determined laser pulse effect diameter and a preset overlap factor for adjacent laser pulses. Sumiya discloses determining the optimized spatial pulse distance (Fig. 9, column 6 lines 36-39, the shifting distance of the laser beam from the rotation axis L is determined in nine grades (a) through (i) so as to change every step of 1.4 mm in the range of 1.4 mm-12.6 mm) based on the determined laser pulse effect diameter (column 7 lines 14-17, Laser energy is controlled by the control device 20 so as to become 130 mJ at a laser emitting end. In conditions F, G and H, the diameter of the aperture of the diaphragm 7 is reduced to form an ablation image of Φ6.5 in diameter) and a preset overlap factor for adjacent laser pulses (column 6 lines 43-45, thereby determining the number of pulses). This allows for predicable result laser energy values of ablating and using laser to the cornea. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of Vogler by adding determining the optimized spatial pulse distance based on the determined laser pulse effect diameter and a preset overlap factor for adjacent laser pulses as taught by Sumiya in order to facilitate predicable result of ablating and using laser energy to the cornea.
Regarding claim 3, Vogler in view of Sumiya, specfically Sumiya discloses the optimized spatial pulse distance includes a distance between adjacent laser pulses on a laser pulse path (Column 6 lines 40-42, the laser beam for 30 seconds at each shifting position (distance)). This allows for predicable result of ablating and using laser energy to the cornea.
Regarding claim 5, Vogler in view of Sumiya, specfically Sumiya discloses the optimized spatial pulse distance includes a distance between adjacent laser pulse paths (Column 6 lines 40-42, the laser beam for 30 seconds at each shifting position (distance)). This allows for predicable result of ablating and using laser energy to the cornea.
Regarding claim 7, Vogler in view of Sumiya, specfically Sumiya discloses the optimized spatial pulse distance includes the distance between adjacent laser pulses on a laser pulse path and the distance of adjacent laser pulse paths, wherein a ratio of these distances is set in a range between 0.1 and 10, in particular in a range between 0.2 and 5 (Fig. 9, column 6 lines 38-42, change every step of 1.4 mm in the range of 1.4 mm-12.6 mm). This allows for predicable result of ablating and using laser energy to the cornea.
Regarding claim 8, Vogler in view of Sumiya, specfically Vogler discloses measuring the optical breakthrough threshold (section 0014, 0017, low-energy pulses with high repetition frequency below the LIOB threshold, LIOB=laser-induced optical breakdown. a femtosecond LASIK incision or a keratoplasty incision on the human cornea this threshold amounts to 0.3 Joule/cm2 to 1 Joule/cm2).
Regarding claim 9, Vogler in view of Sumiya, specfically Vogler discloses calculating, by the control device 120 (section 0026, control unit has been set up to vary the beam parameters of the pulsed laser radiation via a suitable drive of the working laser), the optical breakthrough threshold (section 0014, low-energy pulses with high repetition frequency below the LIOB threshold, LIOB=laser-induced optical breakdown)
Regarding claim 10, Vogler in view of Sumiya, specfically Vogler discloses a control device 120 (section 0026, he working laser 110, the beam-guiding-and-shaping components 112, the scanner device 114 and the temperature sensor 116 are connected to a control unit 120 via suitable control lines. The control unit 120 has been set up to vary the beam parameters of the pulsed laser radiation via a suitable drive of the working laser)
Regarding claim 11, Vogler in view of Sumiya, specfically Vogler discloses a treatment apparatus 100 with at least one ophthalmological laser 110 for separation of a corneal volume 210 with predefined interfaces of a human or animal eye by optical breakthrough, in particular by photo disruption and/or photoablation (section 0027, the first operating mode would enable a photo disruptive application of an incision), and at least one control device 120 (section 0026, The apparatus represented in FIG. 1 for laser surgical ophthalmology includes by way of laser radiation source a working laser. The working laser, the beam-guiding-and-shaping components, the scanner device and the temperature sensor are connected to a control unit via suitable control lines. The control unit has been set up to vary the beam parameters of the pulsed laser radiation via a suitable drive of the working laser and of the beam-guiding-and-focusing components in such a way that in a first operating mode the radiation properties are matched to the placing of an incision, for example in the tissue of the cornea).
Regarding claim 13, Vogler in view of Sumiya, specfically Sumiya discloses A non-transitory computer-readable medium 21, on which a computer program according is stored, the computer program including commands, which cause a treatment apparatus to execute the method according to claim 1 (column 3 lines 49-56, means for determining the ablation amount at each position of the laser beam based on the input information by the inputting means and the first memory means and the second memory means, and means for controlling movement of a laser source and the beam rotating means at each shifted position based on the ablation amount determined by the ablation amount determining means)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JON ERIC C MORALES whose telephone number is (571)272-3107. The examiner can normally be reached Monday-Friday 830AM-530PM CST.
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/JON ERIC C MORALES/Primary Examiner, Art Unit 3796
/J.C.M/Primary Examiner, Art Unit 3796