DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicants’ election without traverse of the invention of Group I (claims 16-21 in the reply filed on 07/27/2026 is acknowledged.
Claims 22-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/27/2026.
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.
Claim 16 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.
The term “near limbus” in claim 16 is a relative term which renders the claim indefinite. The term “near” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, this limitation renders the claim indefinite.
Appropriate correction is required.
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 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 16-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-7 of Culbertson et al. Patent No. U.S. Patent No. 9,233,023 (herein “Culbertson”) in view of Liang, Pub. No. US 2004/0145702 (hereinafter “Liang”). Regarding claim 16 of the instant application discloses, claim 1 of Culbertson discloses a cataract surgery scanning system for treating target tissue in one or more of a cornea, limbus or sclera of a patient's eye, comprising:
a treatment light source for generating a treatment light beam;
a scanner for deflecting the light beam to form first and second treatment patterns of the treatment light beam under the control of a controller; and a delivery system comprising the controller operatively coupled to the treatment light source and the scanner, and programmed to: (i) deliver the first treatment pattern to a first target tissue selected from the group consisting of the cornea, limbus and sclera of the patient's eye to form a cataract incision therein that provides access to an eye chamber of the patient's eye, the incision to be formed by delivering the first treatment pattern only partially extending through the target tissue, and (ii) deliver the second treatment pattern to a second target tissue to form a relaxation incision along or near limbus tissue, or along corneal tissue-of the patient's eye.
Culbertson does not teach a wave sensor for measuring aberrations of the patient’s eye. However, the use of a wavefront sensor for measuring aberrations of a patient’s eye is well known in the art. Liang discloses methods for determining refractive correction for measuring the optical error of the eye using one or more wavefront sensors (see the abstract and paragraphs [0005] and [0010]. Therefore, the time applicant’s invention was filed, it would have been obvious to one of ordinary skill in the art to use a wavefront sensor for measuring aberration of the patient’s eye. It is known in the art that wavefront aberrations measured with a wavefront sensor provide a map of optical aberration across the pupil of eye, wherein the aberration map can then be used to plan a refractive correction for improving vision quality via wavefront-guided laser vision correction or other vision correction means. Furthermore, wavefront sensors such as Shack-Hartmann wavefront sensors produce a wavefront profile that maps both lower-order aberration such as nearsightedness, farsightedness, astigmatism, and higher-order aberrations and the data is used to identify optical imperfections that standard biometry may miss.
Regarding claim 17 of the instant application, Culbertson claim 2 teaches the system of claim 1, wherein the scanner and the controller are configured to combine the first and second treatment patterns into a single treatment pattern for forming both the cataract incision and the relaxation incision.
Regarding claim 18 of the instant application, Culbertson claim 3 teaches the system of claim 1, wherein the treatment light source, the scanner, and the controller are configured such that the relaxation incision formed by the second treatment pattern only partially extends through the target tissue.
Regarding claim 19 of the instant application, Culbertson claim 5 teaches the system of claim 1, further comprising: a detector for measuring scattering properties from different locations on the patient's eye, wherein the controller controls the formation of at least one of the first and second treatment patterns by the scanner in response to the measured scattering properties.
Regarding claim 20 of the application, Culbertson claim 6 teaches the system of claim 1, further comprising an aiming light source for generating an aiming light beam, wherein the scanner is configured to deflect the aiming light beam to form an aiming pattern that is delivered to the target tissue and visually indicates a position of at least one of the first and second treatment patterns on the patient's eye.
Regarding claim 21 of the application, Culbertson claim 7 teaches the system of claim 1, further comprising: a camera for capturing an image of the target tissue; a display device for displaying the captured image; and a graphic user interface for modifying a composition and location of at least one of the first and second treatment patterns on the patient's eye.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
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/AHMED M FARAH/Primary Examiner, Art Unit 3792
