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 .
Response to Amendment
This office action is responsive to the preliminary amendment filed on July 18, 2024. As directed by the amendment: claim(s) 1-3, 5-9, and 11 have been amended, claim(s) 10 have been cancelled, and no claim(s) have been added. Thus, claims 1-9 and 11 are currently pending in the application.
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 1-9 and 11 are rejected under 35 U.S.C. 101 because the claimed invention details a process (Step 1) directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In accordance with MPEP 2106.04, each of Claims 1-9 and 11 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A, Prong 1 per MPEP 2106.04(a)
Each of Claims 1-9 and 11 recites at least one step or instruction for providing control data for an ophthalmological laser of a treatment apparatus, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) or a certain method of organizing human activity in MPEP 2106.04(a)(2)(II) or mathematical concept in MPEP 2106.04(a)(2)(I). Accordingly, each of Claims 1-9 and 11 recites an abstract idea.
Specifically, Claim 1 recites
A method for providing control data for an ophthalmological laser of a treatment apparatus (additional element), wherein the method comprises the following steps performed by a control device (additional element):
determining corneal parameters of an anterior surface of a cornea from predetermined examination data; (Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP 2106.04(a)(2)(I)) and/or observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
determining an epithelial map of an epithelial layer of the from the predetermined examination data, wherein a thickness of the epithelial layer is provided in the epithelial map; (Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP 2106.04(a)(2)(I)) and/or observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
calculating a stromal wavefront map depending on the determined corneal parameters of the anterior surface of the cornea and the determined epithelial map; (Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP 2106.04(a)(2)(I)) and/or observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
determining correction data for correcting a visual disorder based on the stromal wavefront map; (Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP 2106.04(a)(2)(I)) and/or observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III));
providing the control data, which includes the correction data determined based on the stromal wavefront map (additional element).
Step 2A, Prong 2 per MPEP 2106.04(d)
The above-identified abstract idea in each of independent Claim 1 (and their respective dependent Claims 2-9 and 11) is not integrated into a practical application under MPEP 2106.04(d) because the additional elements (identified above in independent Claim 1, either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use according to MPEP 2106.05(h) or represent insignificant extra-solution activity according to MPEP 2106.05(g). More specifically, the additional elements of: a control device, an ophthalmological laser and control data are generically recited computer elements in independent Claim 1 (and their respective dependent claims) which do not improve the functioning of a computer, or any other technology or technical field according to MPEP 2106.04(d)(1) and 2106.05(a). Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine according to MPEP 2106.05(b), effect a transformation according to MPEP 2106.05(c), provide a particular treatment or prophylaxis according to MPEP 2106.04(d)(2) or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception according to MPEP 2106.04(d)(2) and 2106.05(e). Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer in accordance with MPEP 2106.05(f). For at least these reasons, the abstract idea identified above in independent Claim 1 (and their respective dependent claims) is not integrated into a practical application in accordance with MPEP 2106.04(d).
Moreover, the above-identified abstract idea is not integrated into a practical application in accordance with MPEP 2106.04(d) because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process and mathematical concepts) using rules (e.g., computer instructions) executed by a computer (e.g., processor as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer according to MPEP 2106.05(f). Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims according to MPEP 2106.05(a). That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claim 1 (and their respective dependent claims) is not integrated into a practical application under MPEP 2106.04(d)(I).
Accordingly, independent Claim 1 (and their respective dependent claims) are each directed to an abstract idea according to MPEP 2106.04(d).
Step 2B per MPEP 2106.05
None of Claims 1-9 and 11 include additional elements that are sufficient to amount to significantly more than the abstract idea in accordance with MPEP 2106.05 for at least the following reasons.
These claims require the additional elements of: a control device, an ophthalmological laser, and control data. The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, MPEP 2106.05(d)(II) along with Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Per Applicant’s specification, [0022] describes a control device can be a processor, and can include a microcontroller and/or at least one microprocessor, or an integrated circuit and/or microchip or even a computer or computer cluster with such generality that it can be implemented with a generic and commercially available processor or computer component. Additionally, in [0024] the applicant’s specification details that the ophthalmological laser can be a photodisruptive and/or ablative laser with the specified parameters without detailing a specific laser such that it can be a generic laser that can fulfill the parameters detailed in [0024]. Lastly, in [0011] the instant specification details that the control data is merely data set for positioning or adjusting different parameters or the laser pulses focusing of the laser beam which is a byproduct of the data processed by the control device and utilized by the ophthalmological laser.
Accordingly, in light of Applicant’s specification, the claimed term control device is reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available technology, with their already available basic functions, to use as tools in executing the claimed process. See MPEP 2106.05(f).
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for computers. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a) (see MPEP 2106.05(d)(I)(2) and 2106.07(a)(III)). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications along with MPEP 2106.05(d)(I)).
The recitation of the above-identified additional limitations in Claims 1-9 and 11 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See MPEP 2106.05(f) along with Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. See MPEP 2106.05(a) along with McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, per MPEP 2106.05(a), the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the methods of Claims 1-9 and 11 are directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself or providing a technical solution to a problem in a technical field according to MPEP 2106.05(a), or (ii) providing meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e).
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claim 1 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment according to MPEP 2106.05(h). When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment according to MPEP 2106.05(h). When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e). Moreover, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity according to MPEP 2106.05(g). As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application as required by MPEP 2106.05.
Therefore, for at least the above reasons, none of the Claims 1-9 and 11 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1-9 and 11 are not patent eligible and rejected under 35 U.S.C. 101.
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 11 is directed to transitory forms of signal transmission. Per the instant specification, [0027] details structures that are not limited to transitory memory only. Therefore, per the MPEP 2106.03, the claim does not fall within any statutory category. Even when a product has a physical or tangible form, it may not fall within a statutory category. For instance, a transitory signal, while physical and real, does not possess concrete structure that would qualify as a device or part under the definition of a machine, is not a tangible article or commodity under the definition of a manufacture (even though it is man-made and physical in that it exists in the real world and has tangible causes and effects), and is not composed of matter such that it would qualify as a composition of matter. Nuijten, 500 F.3d at 1356-1357, 84 USPQ2d at 1501-03. As such, a transitory, propagating signal does not fall within any statutory category. Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1294, 112 USPQ2d 1120, 1133 (Fed. Cir. 2017); Nuijten, 500 F.3d at 1356-1357, 84 USPQ2d at 1501-03.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (US 2007/0282313 A1) in view of Hee (US 2014/0049748 A1).
Regarding claim 1, Huang discloses a method for providing control data for an ophthalmological laser of a treatment apparatus, wherein the method comprises the following steps performed by a control device (e.g. abstract): determining corneal parameters of an anterior surface of a cornea from predetermined examination data (e.g. [0026]-[0028]; [0037] [0052]; [0068]; [0071] Figs 4 and 5); determining an epithelial map of an epithelial layer of the from the predetermined examination data, wherein a thickness of the epithelial layer is provided in the epithelial map (e.g. [0041]; [0104]-[0111] Figs 8 and 9); calculating a stromal wavefront map (e.g. [0109] the stromal ablation pattern can be based on wavefront measurements or OCT topography maps); determining correction data for correcting a visual disorder based on the stromal wavefront map (e.g. [0094]; [0108]-[0109]); providing the control data, which includes the correction data determined based on the stromal wavefront map (e.g. [0108]-[0109]).
Huang is silent regarding calculating a stromal wavefront map depending on the determined corneal parameters of the anterior surface of the cornea and the determined epithelial map. Huang discloses creating this stromal wavefront map after the removal of the epithelial layer (or essentially the subtraction of the layer) (e.g. [0108]-[0109]).
However, Hee discloses a method measurement for corneal stromal mapping wherein the method includes calculating a stromal wavefront map depending on the determined corneal parameters of the anterior surface of the cornea and the determined epithelial map (e.g. [0028]; [0035]-[0038] Fig 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify they method of Huang to incorporate the teachings of Hee of calculating a stromal wavefront map depending on the determined corneal parameters of the anterior surface of the cornea and the determined epithelial map for the purpose of getting a true change in shape of the corneal stroma that may be masked (e.g. Hee [0025]).
Regarding claim 2, modified Huang discloses wherein the epithelial map indicates the thickness of the epithelial layer in a z-direction for respective [x,y] positions (e.g. Huang [0106] Fig 8 there is a thickness map created based on the axis that is parallel to the vertex normal of the anterior corneal surface at the corneal vertex).
Regarding claim 3, modified Huang discloses wherein an anterior corneal surface map is provided by the corneal parameters, which includes height data of the anterior surface of the cornea, wherein an anterior stromal surface map is determined by subtracting the epithelial map from the anterior corneal surface map, and the stromal wavefront map is determined from the anterior stromal surface map (e.g. Hee [0028]; [0035]-[0038] Fig 4).
Regarding claim 4, modified Huang discloses wherein an anterior corneal wavefront map is provided by the corneal parameters; wherein an epithelial wavefront map is calculated from the epithelial map for calculating the stromal wavefront map, wherein the stromal wavefront map is determined by subtraction of the epithelial wavefront map from the anterior corneal wavefront map (e.g. Hee [0028]; [0035]-[0038] Fig 4).
Regarding claim 5, modified Huang discloses wherein the correction data includes an adapted tissue removal in a stroma of the cornea as compensation for a change on the epithelial layer after an epithelial recovery (e.g. Huang [0108]-[0109]).
Regarding claim 6, modified Huang discloses wherein different laser interactions with tissue of the epithelial layer and a stroma of the cornea are taken into account in the control data (e.g. Huang [0028]; [0071]; [0108]).
Regarding claim 7, modified Huang discloses wherein the epithelial map is determined by optical coherence tomography and/or ultrasound (e.g. Huang [0041]; [0104]-[0111] Figs 8 and 9).
Regarding claim 8, modified Huang discloses a control device, which is configured to perform the method according to claim 1 (e.g. Huang [0029]; [0061]-[0062] Fig 3:2).
Regarding claim 9, modified Huang discloses a treatment apparatus with at least one eye surgical laser for removing a tissue from a cornea of a human or animal eye by optical breakdown, in particular by photodisruption and/or photoablation, and at least one control device according to claim 8 (e.g. Huang [0061]; [0102 Fig 3:3).
Regarding claim 11, modified Huang discloses a computer-readable medium for storing a computer program, the computer program comprising commands which cause a treatment apparatus to execute the method according to claim 1 (e.g. Huang [0030]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSANDRA F HOUGH whose telephone number is (571)270-7902. The examiner can normally be reached Monday-Thursday 7 am - 4 pm.
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Jessandra Hough March 18, 2026
/J.F.H./Examiner, Art Unit 3796
/William J Levicky/Primary Examiner, Art Unit 3796