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 .
Claim Status: Claim 1-3, 7-11, 19-20, 28, 29, 34, 36-38, 43, and 45-47 are pending.
Election/Restrictions
Applicant’s election without traverse of Species B in the reply filed on August 25, 2026 is acknowledged.
Claims 36-38, 43, 45-47 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species A, there being no allowable generic or linking claim.
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.
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Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18763717 in view of Motwani (US20180289545A1).
Although the claims are not identical, they are not patentably distinct from one another.
Claim 1 of the copending application discloses all the limitations in instant claim 1, except “creating an ablation pattern that can be used by a corneal laser ablation device from the treatment map; and using a corneal laser ablation device to apply laser pulses to the eye in accordance with the ablation pattern.”
However, Motwani discloses a method of performing a corneal laser ablation procedure on an eye of a subject, the method comprising: generating treatment map, creating an ablation pattern that can be used by a corneal laser ablation device from the treatment map; and using a corneal laser ablation device to apply laser pulses to the eye in accordance with the ablation pattern (para. [0027], computational software for generating topological map measurements and converting these into laser ablation profiles for treatment. With the Contoura system, the actual surface contour of the cornea is measured, and this data is used to derive a best fit model of the anterior surface shape of the cornea. This system provides low order refraction measurements based on the model including astigmatism, as well as a detailed map of the anterior surface of the cornea that includes measurements showing where the corneal topology deviates from the best fit model.).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to modify claim 1 of copending application, by adding the steps of creating an ablation pattern that can be used by a corneal laser ablation device from the treatment map; and using a corneal laser ablation device to apply laser pulses to the eye in accordance with the ablation pattern, as taught by Motwani, for the purpose of applying corneal laser ablation (para. [0027]).
This is a provisional nonstatutory double patenting rejection.
Avoids Prior Art Rejection
The following is a statement of the ways that the application distinguishes over the closest prior art of record:
The closest prior art I found is Motwani (US20180289545A1), which discloses a method of performing a corneal laser ablation procedure on an eye of a subject, the method comprising:
generating a treatment map from acts comprising: acquiring measurements of one or more lower order whole eye optical aberration characteristics at least in part via retinal reflection measurements and deriving therefrom a first astigmatism characteristic representative of a lower order whole eye astigmatism (para. [0028], wavefront aberrometry provides information on the combined optical properties of the eye as a whole (e.g. including the anterior corneal surface, the posterior corneal surface, the lens, etc.); para. [0105], defocus/sphere correction); acquiring measurements of one or more lower order elevation characteristics of the anterior corneal surface of the eye at least in part from one or more of either tear film, anterior epithelium, and/or epithelium basement membrane reflection measurements and deriving therefrom a second astigmatism characteristic representative of a lower order anterior corneal surface astigmatism (para. [0028], corneal topography provides information regarding the surface shape of the anterior surface of the cornea without measuring the optical characteristics of other optical elements of the eye; para. [0083], corneal lower order astigmatism; para. [0003], [0076], [0109], corneal epithelium);
Motwani discloses generating treatment map, creating an ablation pattern that can be used by a corneal laser ablation device from the treatment map; and using a corneal laser ablation device to apply laser pulses to the eye in accordance with the ablation pattern (para. [0027], computational software for generating topological map measurements and converting these into laser ablation profiles for treatment. With the Contoura system, the actual surface contour of the cornea is measured, and this data is used to derive a best fit model of the anterior surface shape of the cornea. This system provides low order refraction measurements based on the model including astigmatism, as well as a detailed map of the anterior surface of the cornea that includes measurements showing where the corneal topology deviates from the best fit model.). Motwani discloses high order aberrations corrections using corneal topology and wavefront aberrometer based on fig. 7B and fig. 9.
Motwani is silent regarding comparing the first astigmatism characteristic with the second astigmatism characteristic to generate an estimate of an amount of difference between lower order whole eye astigmatism and lower order anterior corneal surface astigmatism;
based at least in part on the generated estimate, determining a third astigmatism characteristic for inclusion in the generation of the treatment map, wherein the third astigmatism characteristic is determined using either (1) one or both of the first astigmatism characteristic and the second astigmatism characteristic or (2) a derivative of one or both of the first astigmatism characteristic and the second astigmatism characteristic; generating the treatment map using at least in part the third astigmatism characteristic.
Claim 1 and claims dependent thereon in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, in combination with other limitations of the claim, a method of performing a corneal laser ablation procedure on an eye of a subject, the method comprising: comparing the first astigmatism characteristic with the second astigmatism characteristic to generate an estimate of an amount of difference between lower order whole eye astigmatism and lower order anterior corneal surface astigmatism; based at least in part on the generated estimate, determining a third astigmatism characteristic for inclusion in the generation of the treatment map, wherein the third astigmatism characteristic is determined using either (1) one or both of the first astigmatism characteristic and the second astigmatism characteristic or (2) a derivative of one or both of the first astigmatism characteristic and the second astigmatism characteristic; generating the treatment map using at least in part the third astigmatism characteristic.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VYNN V HUH whose telephone number is (571)272-4684. The examiner can normally be reached Monday to Friday from 9 am to 5 pm.
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/Benjamin J Klein/Supervisory Patent Examiner, Art Unit 3792
/V.V.H./
Vynn Huh, September 23, 2026Examiner, Art Unit 3792
