Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-12 (claim 18-29 were canceled by a preliminary amendment) in the reply filed on 07/29/2026 is acknowledged.
Claims 13-17 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/29/2026.
The examiner will examine and search claims 1-12.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the 1) mapping step; 2) the generating step, and 3) the adjusting step all of which can be carried out with the human mind, a pen/pencil and a piece of paper. This judicial exception is not integrated into a practical application because there are no real-world steps, i.e., practical output steps evident from the claim. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because claim 1 only recites abstract steps (steps capable of being fully carried out with the human mind, a pen and a piece of paper).
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim 1 is rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Chernyak (U.S. Patent 7,419,485).
Regarding claim 1, Chernyak discloses a laser treatment comprising:
mapping a plurality of laser beam focus locations comprising coordinate locations of a laser delivery system (see col. 8:55 through col. 9:23);
generating a treatment table comprising a plurality of target locations of the eye (see col. 9:24 through col. 10:3); and
adjusting the plurality of target locations of the eye based on the mapped plurality of laser beam focus locations so as to treat the eye at the plurality of target locations with the laser delivery system (see col. 2:33-50, col. 6:51 through col. 7:18).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON F ROANE whose telephone number is (571)272-4771. The examiner can normally be reached generally Mon-Fri 8am-9pm.
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/AARON F ROANE/Primary Examiner, Art Unit 3792
