DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 1-3 are pending.
Response to Arguments
Applicant argues that “[t]he Office Action does not provide any detailed analysis for the double
patent rejection.” See Remarks at 3-4.
Applicant’s argument has been fully considered but it is not persuasive.
Applicant provides a correlation table, comparing claim 1 of US Patent 11,185,226 to claim 1 of the instant application. Such a table, juxtaposing various claim limitations, clearly show that “[a]lthough the language of the claims at issue are not identical, the claims are not patentably distinct from each other because they are directed to the same invention.” See Non-Final Rejection at 3. The simple reason is that the limitations recited by claim 1 of US Patent 11,185,226 (but not recited in the instant application) are superfluous (or implicit) given the claim limitations recited in the instant application. For example, even though the pending claim does not recite a camera (i.e., a sensor to acquire images), the claim recites obtaining multiple images of the eye (by an image sensor, of course); even though the pending claim does not recite a computer image processor, the claim recites computational processes that require such computer processor (i.e., cannot be calculated by manual calculations by pencil and paper); even though the pending claim does not recite transformation of arcs into a model of the eye, the claim recites three-dimensional reconstruction, etc.
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of U.S. Patent No. 11185226 B2 and claims 1-12 of U.S. Patent No. 11992266 B2. Although the language of the claims at issue are not identical, the claims are not patentably distinct from each other because they are directed to the same invention.
Allowable Subject Matter
Claims 1-3 are allowed, contingent on Applicant’s filing of a Terminal Disclaimer, as discussed above.
The closest prior art is Frey et al. (US 20070173795 Al, July 26, 2007) (hereinafter "Frey").
While Frey teaches constructing a three-dimensional spherical model of the eye based on sectional arc-wise images of the eye, mathematical modeling of the shape of the eye based on measured data (e.g., [0089]), and mathematically fitting the curved shape of the eye (e.g., [0108]), Frey does not expressly teach the limitation curve fitting of said one of said obtained multiple sectional images.
For these reasons the claims are believed to be allowable over the art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT T LUAN whose telephone number is (571)270-1860. The examiner can normally be reached on 9am-5pm, M-F (generally).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gary Jackson, can be reached on 571-272-4697. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Scott Luan, Ph.D.
/SCOTT LUAN/Primary Examiner, Art Unit 3792