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 Arguments
1. Applicant's arguments filed 07/27/2026 have been fully considered but they are not persuasive. The Applicant argues that neither Somani nor Charles disclose adjusting the position of the support automatically after manual confirmation. The Applicant notes that the art of Charles discloses manual adjustment but not manual confirmation. However, the Examiner notes that in Par. 0038 of Charles it is stated that the physician may be alerted during automatic adjustment/centering that that manual alignment may be necessary and then the physician may determine if this is needed and make the manual adjustment. The Examiner notes that this would be considered manual confirmation since the physician is confirming that this adjustment is needed before making manual adjustments. The rejection still stands.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
2. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
The “eye tracking system” in claims 21 and 30-32 will be interpreted as anything that comprises at least one camera per Applicant’s specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
3. Claim(s) 21-23, 27-29, and 33-35 is/are rejected under 35 U.S.C. 103 as being obvious over Somani (US 20080278687 A1) in view of Charles (US 20090093798 A1).
In regards to claim 21, Somani discloses a system for adjustment of an ophthalmic surgery support (Abstract discloses an adjustable ophthalmic support system) comprising:
a support configured to support a patient, the patient having an eye (Element 320 in Figure 3A shows a support chair, Par. 0067 dislcoses there being an eye);
a control device configured to control a position of the support (Par 0069 discloses fine adjustments of the position of the support can be affected using fine motion control of the motion movement mechanism [322]);
an eye tracking system having a detection field (Par. 0067 discloses can eye tracker system that can be used), the eye tracking system configured to:
detect a position of the eye and generate data relating to the position of the eye (Par. 0066 discloses determining the position and data of the eye); and
a processing system comprising at least one programmed processing device (Par. 0067 discloses a laser eye surgery system, i.e. a processing system, that includes a processor), the processing system configured to:
receive, from the eye tracking system, the data relating to the position of the eye (Par. 0067);
determine and provide an adjustment of the position of the support designed to adjust the position of the support to align the eye relative to the detection field of the eye tracking system (Par. 0066 discloses the pupil location can be determined in response to calculations along the image segments and can be moved horizontally and vertically);
providing manual adjustment (Par. 0068 teaches that the user can input and adjust the position manually based on data presented by the interface) and in response to the manual confirmation of the adjustment:
generate a control signal configured to adjust the position of the support according to the provided adjustment; and transmit the control signal to the control device to adjust the position of the support (Par. 0078 discloses that steps 410-445 can be repeated and completed in real time as to automate alignment of the eye in real time and maintain this alignment while the eye move, and Par. 0067 discloses the laser eye surgery system can move the support to align the patient with the surgical system).
While Somani teaches performing manual adjustment, they do not disclose wherein there is an indication that the adjustment of the position of the support is pending a manual confirmation of the adjustment.
However, in the same field of endeavor, Charles teaches discloses an ophthalmic surgical treatment system (Abstract) wherein a physician may be alerted during automatic adjustment/centering that the manual alignment may be necessary and then the physician may determine if this is needed and make the manual adjustment (Par. 0038) in order to improve the accuracy of the system.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Somani and modified them by having the system indicate that the system is pending manual adjustment, as taught and suggested by Charles, in order to improve the accuracy of the system.
In regards to claim 22, the combined teachings of Somani and Charles as applied to claim 21 discloses the system of Claim 21, comprising a manual confirmation device configured to input the manual confirmation of the adjustment (Par. 0068 of Somani teaches the user can make adjustments on the user interface, i.e. the manual confirmation device).
In regards to claim 23, Somani discloses the system of Claim 22, the manual confirmation device comprising a button, a switch, a key, or a joystick (Par. 0068 of Somani discloses using a joystick)
In regards to claims 27-29, the combined teachings of Somani and Charles as applied to claim 21 discloses the system of Claim 21, except for the processing system configured to generate a pictorial representation corresponding to an image, the image comprising: a direction and a distance of the adjustment of the position of the support, an indication that the adjustment of the position of the support is pending the manual confirmation of the adjustment.
However, in the same field of endeavor Charles discloses an ophthalmic surgical treatment system wherein the device can capture an image/pictorial representation of the eye (abstract and Par. 0006) and display the image (Par. 0021) and provide treatment parameters and system options (Par. 0022) for the purpose of aiding in the adjustment and treatment of the device. Charles also discloses in Par. 0038 that alignment was known to be performed manually with ophthalmic devices and therefore combining this with an automated process would improve accuracy or provide an initial calibration.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Somani and modified them by having the system comprise a display and wherein the processing system is configured to generate a pictorial representation based on the received data and to transmit the pictorial representation to the display to be presented as an image, the image including the direction and the distance determined to adjust the position of the support and an indication that the adjustment of the position of the support is pending manual confirmation and wherein adjusting the position of the support so that the eye is centered in relation to the center of the detection field of the eye tracking system is performed automatically, but only after manual confirmation, as taught and suggested by Charles, for the purpose of aiding in the adjustment and treatment of the device as well as improving accuracy or provide an initial calibration.
In regards to claims 33-35, the combined teachings of Somani and Charles as applied to claim 27 disclose the system of Claim 27, except for the image comprising a graphic indicating alignment, wherein: the graphic indicating alignment is a first color when the eye is not aligned; and the graphic indicating alignment is a second color when the eye is aligned and the graphic indicating alignment has a first line with a first line pattern of a plurality of line patterns when the eye is not aligned; and the graphic indicating alignment has a second line with a second line pattern of the plurality of line patterns when the eye is aligned and the graphic indicating alignment has a first line with a first line pattern of a plurality of line patterns when the eye is not aligned; and the graphic indicating alignment has a second line with a second line pattern of the plurality of line patterns when the eye is aligned, the plurality of line patterns comprising a solid line and a dotted line.
However, Charles does go on to disclose the system can perform alignment and then show this alignment on a display to the user (Par 0794 and 1054) in order to make sure the correct portions of the eye are being treated. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Somani and modified them by having the system comprise an alignment display, as taught and suggested by Charles in order to make sure the correct portions of the eye are being treated.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to make the image colored lines and patterns to show the alignment because Applicant has not disclosed that these imaging details provide an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Charles image and the Applicant’s colored and patterned image to perform equally well with because both would perform the same function of providing a visual indication equally well. Therefore, it would have been prima facie obvious to modify this art to obtain the invention as specified because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Charles
4. Claim(s) 24-26 is/are rejected under 35 U.S.C. 103 as being obvious over Somani and Charles and in view of Uber (US 20160030662 A1).
In regards to claims 24-26, Somani and Charles as applied to claim 21 discloses the system of Claim 21, except for the system comprising a contactless device configured to input the manual confirmation of the adjustment, the contactless device configured to input the manual confirmation of the adjustment using voice recognition and gesture control.
However, it is known in the art to have control units that can be controlled using voice control and gesture controls. This is taught by Uber, which discloses a control unit for providing /controlling deliveries to a patient during procedures (Abstract), wherein the unit can be controlled via the user’s voice or gestures (Par. 0050) in order to allow for hand free adjustments.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Somani and Charles and modified them by having the system use voice and gesture controls, as taught and suggested by Uber, in order to allow for hand free adjustments.
5. Claim(s) 30-31 is/are rejected under 35 U.S.C. 103 as being obvious over Somani and Charles and in further view of Tesar (US 20170020627 A1).
In regards to claims 30-31, the combined teachings of Somani and Charles as applied to claim 27 discloses the system of Claim 27, the image comprising: a graphic indicating a valid range for aligning the eye relative to the detection field of the eye tracking system, the image comprising: a graphic indicating a valid range for aligning the eye relative to the detection field of the eye tracking system, the graphic indicating the valid range comprising a square.
However, in the same field of endeavor, Tesar discloses an optical surgical system that comprises image graphics (Par.1156) and provides a centering/aligning range (Par. 1211) for the purpose of aiding in the adjustment of the surgical device.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Somani and Charles and modified them by having the system/method wherein the image further comprises a graphic indicating a valid range for centering, as taught and suggested by Tesar, for the purpose of aiding in the adjustment of the surgical device.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to make the graphic a square because Applicant has not disclosed that this square shape provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Tesar’s image and the Applicant’s square image to perform equally well with because both would perform the same function of providing a visual indication equally well. Therefore, it would have been prima facie obvious to modify this art to obtain the invention as specified because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Tesar
6. Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being obvious over Somani and Charles and in further view of Spooner (US 20120078240 A1).
In regards to claims 32, the combined teachings of Somani and Charles as applied to claim 27, discloses the system of Claim 27, the image comprising: a graphic indicating a centering error when aligning the eye relative to the detection field of the eye tracking system
However, in the same field of endeavor, Spooner discloses an optical surgery device that comprises images and graphics (Par. 0075) and is capable of verifying the centering and catching error (Par. 0300) for the purpose of avoiding refractive errors.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Somani and Charles and modified them by having the system/method wherein the image further comprises a graphic indicating a centering error, as taught and suggested by Spooner, for the purpose of avoiding refractive errors.
7. Claim(s) 36-37 is/are rejected under 35 U.S.C. 103 as being obvious over Somani and Charles and in further view of Van Saarloos (US 20020051116 A1).
In regards to claims 36-37, Somani and Charles as applied to claim 21 discloses the system and method of claim 21, except for wherein the processing system is further configured to generate a warning if a patient is not within the detection range or if the patient moves out of the detection range.
However, in the same field of endeavor, Van Saarloos discloses an eye tracking system wherein movement of the user’s pupil is tracked and an alarm/alert is generated if the movement deviates (Par. 0080) for the purpose of remaining in the defined acceptable range.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Somani and Charles and modified them by having the system/method wherein the processing system is further configured to generate a warning if a patient is not within the detection range or if the patient moves out of the detection range, as taught and suggested by Van Saarloos for the purpose of remaining in the defined acceptable range.
Double Patenting
8. 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 21-37 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12070421 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because US 12070421 B2 contains the same subject matter as the present claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SKYLAR LINDSEY CHRISTIANSON whose telephone number is (571)272-0533. The examiner can normally be reached on Monday-Friday, 7:30-5:30 EST.
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/S.L.C./
Examiner, Art Unit 3792
/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796
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