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 .
Election/Restrictions
Applicant’s election without traverse of Species A as compassing claims 21-35 in the reply filed on 05/27/2026 is acknowledged.
Claims 36-43 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/27/2026.
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 21 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 1 recites “a corneal shield configured to fit underneath an eyelid to protect an eye during intense pulse light (IPL) treatment” in lines 1-2. the degree of the term intense light cannot be determined from the claim language or the specification. Therefore, this limitation renders indefinite claim 21 and claims 22-28. Appropriate correction is required.
The term “about” in claims 23 and claim 28 is a relative term which renders the claim indefinite. The term “about 25 mm” 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. This limitation further renders the claim indefinite.
The term “about” in claim about is a relative term which renders the claim indefinite. The term “a wavelength of about 500 nm to about 1200nm” 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. This limitation further renders the claim indefinite.
Appropriate corrections are 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 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 21-7 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,951,039 to Litherland et al. hereinafter “Litherland”) in view of U.S. Patent No. 12,226,349 to Ben Litherland et al ( “Tavis”). Regarding claim 21 and 22 of the application, Litherland discloses an ocular protection device comprising: a corneal shield configured to fit underneath eyelids, the corneal shield having an inner surface configured to prevent damage to an eye, handle rigidly connected to an outer surface of the corneal shield. Litherland does not teach a coating configured to block IPL from reaching the corneal shield, wherein the corneal shield comprises a biometric material. Tavis claim 1 discloses an alternative corneal shield for placement on a patient’s eye to protect the during IPL treatment from the light source, wherein the corneal shield comprises a body having an outer surface and an inner surface configured to be placed on the patient’s eye; wherein the body of the shield comprised of a flexible biocompatible material, and the shield is coated on top of the outer surface, thereby controllably block intense light from reaching the eye.
Regarding claim 23 of the application, Litherland claim 2 recites the device of claim 1, wherein the handle has a length of at least about 25 mm.
Regarding claim 24 of the application, Litherland claim 4 recites the device of claim 1, wherein the hinge is offset from the corneal shield by at least 15 mm.
Regarding claim 25 of the application, Litherland claim 4 recites the device of claim wherein the hinge is offset from the corneal shield by at least 15 mm.
Regarding claim 26 of the application, Litherland claim 5 recites device of claim 1, wherein the hinge is a living hinge.
Allowable Subject Matter
Claims 29-35 are allowed.
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
