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 § 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.
1. Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent claim 1 recites a method for providing deformation control data to a laser. The limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, determining correction parameters based on predetermined examination data and based on mathematical models, and then providing these correction parameters to a treatment apparatus could simply be done by looking at the data on a printout or screen or could be accomplished mentally. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. This judicial exception is not integrated into a practical application.
The components are recited at a high-level of generality such that it amounts no more than any structure that can look a data and generate correction parameter to be sent to a device. Further, the use of controllers and lasers in the dependent claims, are merely insignificant extra-solution activity. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The additional elements, such as the controllers and lasers to plan and carry out the treatment are well-understood, routine, conventional activity that is widely prevalent or common use in the relevant industry. The use of controllers and lasers to generate/perform treatments are well known in the art as disclosed by the following references: US 20210361486 A1 and US 20190159934 A1. Well-understood, routine and conventional activity cannot be significantly more than the abstract idea itself. The claims are not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
2. Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 3, the claim recites using a mathematical deformation model based on the Euler-Bernoulli beam theory. However, it is unclear how exactly this is being done. For example, is the Applicant using every element of Euler-Bernoulli beam theory to create their model or are there only certain aspects of this theory being used in the present application – and if so, which portions? The Euler-Bernoulli beam theory is not known in the art to be applied to deformation correction of a lenticule so further clarification is needed. As noted in the MPEP, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved
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.
3. Claims 1-12 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.
In regards to claims 1 and 2, “a deformation of a cornea” has been claimed previously, so it is unclear if this is the same deformation of the cornea or a separate deformation. For examination purposes, the Examiner is interpreting this to be the same corneal deformation.
In regards to claim 6, 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 6 recites the broad recitation of “deformation factor v is a value in a range from -2 to -4”, and the claim also recites “in particular -2, -3, -8(1/2) or -4.” which is 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.
In regards to claim 10, 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 6 recites the broad recitation of pulses in a wavelength range between 300 nm and 1400 nm, pulse duration between 1 fs and 1 ns, and a repetition frequency of greater than 10 kHz and the claim also recites preferably between 900 nm and 1200 nm, between 10 fs and 10 ps, and between 100kHz and 100 MHz which is 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.
Claims 2-5, 7-9, and 11-12 are rejected based on their virtue of dependency.
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.
(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.
4. Claim(s) 1, 2, and 8-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mosquera (US 20210361486 A1).
In regards to claim 1, Mosquera discloses a method for providing deformation-corrected control data for a laser of a treatment apparatus for correcting a cornea of a human or animal eye, wherein the method comprises the following steps performed by at least one control device (Abstract):
determining a planned lenticule diameter and a planned refractive power change as correction parameters for correcting a visual disorder of the human or animal eye from predetermined examination data (Par. 0034 teaches that planned refractive correction and planned lenticule diameters are determined in order to correct a visual disorder);
determining deformation-corrected correction parameters for adapting the correction parameters, by which a deformation of the cornea is additionally compensated for (Par. 0038 teaches determining a correction value for compensation for the deformation);
wherein either a deformation-corrected lenticule diameter or a deformation-corrected refractive power change is determined from predetermined deformation data as a first deformation-corrected correction parameter, and a respective other of the correction parameters is determined as a second deformation-corrected correction parameter by means of the determined first deformation-corrected correction parameter and depending on a mathematical deformation model (Par. 0040 and 0041 teach deformation-corrected lenticule diameter and refractive power can be determined from correction parameters and also by mathematical models.); and
providing the deformation-corrected control data for the treatment apparatus, which includes the determined first and second deformation-corrected correction parameters (Par. 0041 teaches providing this control data to a surgical laser for application).
In regards to claim 2, Mosquera discloses the method according to claim 1, wherein a deformation of the cornea, which is generated by a contact element, is compensated for and/or wherein a deformation of the cornea, which is generated in closing the cornea after removing a lenticule from the cornea, is compensated for (Par. 0035 and 0036 teach compensating for a contact element).
In regards to claim 8, Mosquera discloses a control device, which is configured to perform a method according to claim 1 (Par. 0031 teaches a control device).
In regards to claim 9, Mosquera discloses a treatment apparatus with at least one eye surgical laser for separation of a lenticule with predefined interfaces from a human or animal eye by cavitation bubbles, and at least one control device according to claim 8 (Par. 0041 discloses a treatment apparatus can be used and Par. 0031 teaches a control device. Par. 0021 teaches using a laser that causes photodisruption, i.e. cavitation bubbles).
In regards to claim 10, Mosquera discloses the treatment apparatus according to claim 9, wherein the laser is suitable to emit laser pulses in a wavelength range between 300 nm and 1400 nm, preferably between 900 nm and 1200 nm, at a respective pulse duration between 1 fs and 1 ns, preferably between 10 fs and 10 ps, and a repetition frequency of greater than 10 kHz, preferably between 100 kHz and 100 MHz (Par. 0021).
In regards to claim 11, Mosquera discloses the treatment apparatus according to claim 9, 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; and the treatment apparatus 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 laser (Par. 0022 teaches storage means and beam shaping/guidance/focusing means).
In regards to claim 12, Mosquera discloses non-transitory computer readable medium configured for storing a computer program, the computer program including commands which cause a control device to execute the method steps according to claim 1 (Par. 004).
Prior Art Rejections
5. Currently there are no art rejection on claim 3. However, the U.S.C. 112a written description rejection for claim 3 needs to be addressed in order to add clarity to the claim.
Claims 4-7 also do not have art rejections applied. Claim 4 contains subject matter that is not found in the art, such subject matter including “wherein the second deformation- corrected correction parameter is determined in that an equation sD*(sx*sy)(-v/2
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1is satisfied, wherein sD is a ratio of the deformation-corrected refractive power change to the planned refractive power change, sx and sy are the ratio of the deformation-corrected lenticule diameter to the planned lenticule diameter in x- and y-direction and v is a deformation parameter of the cornea, which is determined from the deformation model.” However, the U.S.C. 112b and 101 rejections need to be addressed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SKYLAR LINDSEY CHRISTIANSON whose telephone number is (571)272-0533. The examiner can normally be reached Monday-Friday, 7:30-5:30 EST.
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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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/S.L.C./Examiner, Art Unit 3792
/NIKETA PATEL/Supervisory Patent Examiner, Art Unit 3792