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 .
Response to Amendment
The preliminary amendment filed March 14, 2024 has been entered. Claims 1, 5-6, 9, 13-16 have been amended. Claim 17 is canceled. Currently, claims 1-16 are pending for examination.
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 1-16 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 1-16 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).
Regarding claim 1:
Step 1: Claim 1 is directed to a method.
Step 2A – Prong 1: Claim 1 is directed to the following limitations:
A method for providing control data for an ophthalmological laser of a treatment apparatus, wherein the method comprises the following steps performed by a control device:
ascertaining a correction profile for correcting a visual disorder of a cornea from predetermined examination data;
ascertaining data of a virtual postoperative cornea, which is expected by a correction with the correction profile, wherein the data of the virtual postoperative cornea is determined depending on a migration model, in which regrowth of an epithelial layer of the cornea is modeled
ascertaining a correction difference between an originally planned correction with the correction profile and a virtually achieved correction, which is determined from the ascertained data of the virtual postoperative cornea
if the correction difference is above a preset threshold value, adapting the correction profile depending on the migration model
providing the control data from the ophthalmological laser, which includes the adapted correction profile
The above bolded emphasized limitations are drawn to an abstract idea because they are, under their broadest reasonable interpretation, steps that are capable of being mentally performed or with a pen and paper. Ascertaining a correction profile, ascertaining data of a virtual postoperative cornea, ascertaining a correction difference and determining if a correction difference is above a preset threshold value are observation, evaluation, judgement and opinion steps that can be mentally performed or with pen and paper. Adapting the correction profile is a judgement and opinion step that can be performed mentally or with pen and paper. The steps of observation, evaluation, judgement and opinion recognized by the courts as mental processes. See MPEP 2106.04(a)(2).
Step 2A – Prong 2: The above underlined emphasized limitations do not integrate the exception into a practical application of the exception because the elements are drawn to insignificant extra-solution activity. A control device is recited at a high level of generality to perform the abstract idea and is merely regarded as including instructions to implement the abstract idea on a computer, or merely using a computer as a tool to perform the abstract idea. See MPEP 2106.04(d) and 2106.05(f). Providing or outputting the control data does not integrate the exception into a practical application of the exception because it does not amount to more than generally linking the use of the exception to a particular technological environment or field of use. See MPEP 2106.05(h). 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.
Step 2B: Claim 1 does not recite additional elements that amount to significantly more than the judicial exception itself. The control device is recited at a high level of generality to perform the abstract idea. See MPEP 2106.04(d) and 2106.05(f). Furthermore the control device is a well-understood, routine, and conventional element as evidenced by and not limited to Kroll (US 7,006,867) disclosing, “The microcontroller 52 may be provided by a conventional microprocessor” (col. 5, lines 23-24). Providing or outputting control data is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). The underlined emphasized 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 (see Electric Power Group, 830 F.3d 1350 (Fed. Cir. 2016); Alice Corp. v. CLS Bank Int’l, 110 USPQ2d 1976 (2014)).
In view of the above, the underlined additional elements individually do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations as an ordered combination (that is, as a whole) adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer, for example, or improves any other technology. There is no indication that the combination of elements permits automation of specific tasks that previously could not be automated. There is no indication that the combination of elements includes a particular solution to a computer-based problem or a particular way to achieve a desired computer-based outcome. Rather, the collective functions of the claimed invention merely provide conventional computer implementation, i.e., the computer is simply a tool to perform the process. Simply appending well-understood, routine, conventional activities previously known to 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 to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)).
Claims 2-12 depend on and recite the same abstract idea as claim 1, only further limiting the abstract idea and are rejected to for the same reasons as claim 1 above.
Claim 13 is directed to the method according to claim 1 and further includes the step of:
transferring the provided control data to a respective ophthalmological laser of the treatment apparatus
Under Step 2A – Prong 2, transferring or outputting the provided control data does not integrate the exception into a practical application of the exception because it does not amount to more than generally linking the use of the exception to a particular technological environment or field of use. See MPEP 2106.05(h). Under Step 2B, transferring or outputting the provided control data is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). The method of claim 1 is ineligible under 35 U.S.C. 101 for the reasons stated above.
Claim 14 is an apparatus claim comprising a control device configured to perform the method according to claim 1. As stated above in claim 1, under Step 2A – Prong 2, a control device is recited at a high level of generality to perform the abstract idea and is merely regarded as including instructions to implement the abstract idea on a computer, or merely using a computer as a tool to perform the abstract idea. See MPEP 2106.04(d) and 2106.05(f). Under Step 2B, the control device is recited at a high level of generality to perform the abstract idea. See MPEP 2106.04(d) and 2106.05(f). Furthermore the control device is a well-understood, routine, and conventional element as evidenced by and not limited to Kroll (US 7,006,867) disclosing, “The microcontroller 52 may be provided by a conventional microprocessor” (col. 5, lines 23-24). The method of claim 1 is ineligible under 35 U.S.C. 101 for the reasons stated above.
Claim 15 is an apparatus claim comprising a treatment apparatus with at least one ophthalmological laser for treating a cornea of a human or animal eye by means of optical breakthrough, in particular by means of photodisruption and/or photoablation, the treatment apparatus comprising at least one control device according to claim 14. As stated above under claim 1, under Step 2A – Prong 2, a control device is recited at a high level of generality to perform the abstract idea and is merely regarded as including instructions to implement the abstract idea on a computer, or merely using a computer as a tool to perform the abstract idea. See MPEP 2106.04(d) and 2106.05(f). Under Step 2B, the control device is recited at a high level of generality to perform the abstract idea. See MPEP 2106.04(d) and 2106.05(f). Furthermore the control device is a well-understood, routine, and conventional element as evidenced by and not limited to Kroll (US 7,006,867) disclosing, “The microcontroller 52 may be provided by a conventional microprocessor” (col. 5, lines 23-24). The method of claim 1 is ineligible under 35 U.S.C. 101 for the reasons stated above.
Claim 16 is directed to an apparatus comprising a non-transitory computer-readable medium configured for storing a computer program, the computer program comprising commands which cause a treatment apparatus to execute a method according to claim 1. Under Step 2A – Prong 2, a treatment apparatus is recited at a high level of generality to perform the abstract idea and is merely regarded as including instructions to implement the abstract idea on a computer, or merely using a computer as a tool to perform the abstract idea. See MPEP 2106.04(d) and 2106.05(f). Under Step 2B, the treatment apparatus is recited at a high level of generality to perform the abstract idea. See MPEP 2106.04(d) and 2106.05(f). Furthermore the control device is a well-understood, routine, and conventional element as evidenced by and not limited to Kroll (US 7,006,867) disclosing, “The microcontroller 52 may be provided by a conventional microprocessor” (col. 5, lines 23-24). The method of claim 1 is ineligible under 35 U.S.C. 101 for the reasons stated above.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 6, 13-16 is/are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Holliday et al. (US 2008/0287929).
Regarding claim 1, Holliday et al. discloses a method for providing control data for an ophthalmological laser 12 of a treatment apparatus 10 ([0076]), wherein the method comprises the following steps performed by a control device 58 (fig. 4): ascertaining a correction profile (“epithelial ablation profile” [0112]; “stromal ablation profile” [0117]) for correcting a visual disorder of a cornea from predetermined examination data (“Epithelial basis data 242 can be generated empirically with experimental measurements from patients” [0116]; “Bowman's basis data 262” [0122]); ascertaining data of a virtual postoperative cornea (fig. 7a), which is expected by a correction with the correction profile, wherein the data of the virtual postoperative cornea is determined depending on a migration model, in which regrowth of an epithelial layer of the cornea is modeled (“Healed profile 340 and change in profile 342 and can be estimated based on empirical measurements of a patient population of patients who are treated… The estimated healed profile can be in response to several patient variables, for example age, degree of myopia, degree hyperopia, degree of astigmatism, race and sex.” [0135]); ascertaining a correction difference 332, 352 ([0132], [0137]; “illustration of an adjusted stromal ablation profile 350… For comparison, stromal ablation profile 330 without the healing adjustment is also shown” [0137] the step of plotting adjusted stromal ablation profile 350 as compared to non-adjusted stromal ablation profile 330 is regarded as “ascertaining a correction difference” as annotated by 332, 352) between an originally planned correction with the correction profile 330 and a virtually achieved correction 350, which is determined from the ascertained data of the virtual postoperative cornea (“An estimate of healed epithelial profile 340 can be used to modify the stromal ablation profile to determine an adjusted stromal ablation profile” [0135]).
The limitation, “if the correction difference is above a preset threshold value, adapting the correction profile depending on the migration model; providing the control data from the ophthalmological laser, which includes the adapted correction profile” is regarded as a contingent limitation. The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. See MPEP 2111.04.
Regarding claim 6, Holliday et al. discloses wherein a smoothing of the cornea towards an original corneal shape is modeled by the migration model (fig. 7B).
Regarding claim 13, Holiday et al. discloses a method for controlling a treatment apparatus 10, wherein the method comprises the steps of the method according to claim 1 (see claim 1 above).
Regarding claim 14, Holliday et al. discloses a control device 58 (fig. 4) configured to perform the method according to claim 1 (see claim 1 above).
Regarding claim 15, Holliday et al. discloses a treatment apparatus 10 with at least one ophthalmological laser 12 for treat a cornea of a human or animal eye by means of optical breakthrough, in particular by means of photodisruption and/or photoablation ([0084]), the treatment apparatus comprising at least one control device 58 (fig. 4) according to claim 14 (see claim 14 above).
Regarding claim 16, Holliday et al. discloses a non-transitory computer-readable medium (fig. 4) configured for storing a computer program ([0101]), the computer program comprising commands which cause a treatment apparatus 10 to execute a method according to claim 1 (see claim 1 above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA S LEE whose telephone number is (571)270-1480. The examiner can normally be reached M-F 8-7pm, flex.
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/ERICA S LEE/Primary Examiner, Art Unit 3796
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