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 .
References to the instant application’s as-filed specification has been made using the USPGPub. version of the specification in this Office action.
Election/Restrictions
Applicant’s election without traverse of Claims 1-9 in the reply filed on May 21, 2026 is acknowledged.
Claim 10-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 21, 2026.
Status of Claims
Claims 1-9 are currently pending and under consideration.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16224945, filed on Dec. 19, 2018.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Feb. 26, 2024 is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the
examiner.
Claim Objections
Claim 9 is objected to because of the following informalities: In claim 9, the word --is-- should be inserted following the word “circuit” in line 5. Appropriate correction is required.
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 1-9 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 claim 1, the limitation of “wherein the volume of eye lens tissue is greater than a width of the pulsed laser beam” seems indefinite as it is unclear how a volume of an eye lens tissue can be compared to a width of a laser beam since they are different dimensional quantities (one dimensional vs. three dimensional quantities). While [0005] of the as-filed specification discusses comparison of eye tissue volume with respect to treatment field, there is no information in the specification regarding how the comparison between a volume of an eye lens tissue can be compared to a width of a laser beam. Dependent claim 2-9 are indefinite for the same reasons set forth for claim 1 above.
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.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-7, 10-12 and 16-17 of U.S. Patent No. 11,096,826 (hereinafter referred to as “Patent ‘826”) in view of Srinivasan et al. (US 20160106588 A1, published Apr. 21, 2016, hereinafter referred to as “Srinivasan”).
Below is a reproduction of instant application claim 1 (left) and Patent ‘826 claim 1 (right).
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Instant claim 1 differs from Patent ‘826 claim 1 as indicated by the highlighted regions. Instant claim 1 is broader than Patent ‘826 claim 1, but for the exception that is limits the treatment of the eye tissue to eye lens tissue.
Srinivasan’s inventions relates to photodisruption induced by a pulsed laser beam and the location of the photodisruption so as to treat a material, such as a tissue of an eye (¶[0003]). In many embodiments, a laser is used to form precise incisions in the cornea, in the lens capsule, and/or in the crystalline lens nucleus (¶[0053]). FIG. 1 shows a laser eye surgery system 2, in accordance with many embodiments, operable to form precise incisions in the cornea, in the lens capsule, and/or in the crystalline lens nucleus (¶[0063]). As shown in Fig. 3, the predicted treatment volume 242 encompasses the cornea 248 and lens capsule 250 of the eye 43, thereby enabling the creation of incisions at any desired location in the cornea 248 and lens capsule 250 (¶[0119]).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of filing to treat the eye lens tissue specifically as taught by Srinivasan in the ophthalmological apparatus of Patent ‘826 in order to enable the creation of incisions at any desired location.
Regarding the limitation of the increasing elasticity of the eye lens, the recitation of functional language must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the functional language, then it meets the claim. In this case, the device of ‘826 contains all of the structural components of the claim and is capable of increasing the elasticity of the eye; see MPEP 2114(I) and In re Schreiber, 128 F.3d at 1478, 44 USPQ2s at 1432.
The specific claim correspondences are as follows:
Instant application [Wingdings font/0xE0] US Patent ‘826
Claim 1 [Wingdings font/0xE0] Claim 1
Claim 2 [Wingdings font/0xE0] Claim 3 and 11
Claim 3 [Wingdings font/0xE0] Claim 4
Claim 4 [Wingdings font/0xE0] Claim 5
Claim 5 [Wingdings font/0xE0] Claim 6 and 12
Claim 6 [Wingdings font/0xE0] Claim 7
Claim 7 [Wingdings font/0xE0] Claim 10
Claim 8 [Wingdings font/0xE0] Claim 16
Claim 9 [Wingdings font/0xE0] Claim 17
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Emily N Cirulnick whose telephone number is (571)272-9734. The examiner can normally be reached M-Th 8-5:30 and every other F 8-4:30ET.
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/E.N.C./Patent Examiner, Art Unit 3792
/UNSU JUNG/Supervisory Patent Examiner, Art Unit 3792
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