DETAILED ACTION
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 with traverse of Species B in the reply filed on 7/21/26 is acknowledged. Applicant’s traversal is found persuasive and the restriction requirement, specifically between Species A and B is withdrawn. Claims 2-21 are pending examination.
Claim Objections
Claims 10 and 17 are objected to because of the following informalities: “on basis” should be “on a basis”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2, 10, 17 and 19-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
[Claims 2, 10 and 17] These claims recite the step “calculating an optical parameter of the cornea reduced by the subsurface volume on a basis of the local optical refraction power change”, however the specification fails to provide sufficient support in terms of the scope/breadth of this limitation. Specifically, the BRI encompasses calculating any optical parameter in any manner, the breadth of which is simply not supported, as applicant only provides 2 very specific examples as to how this optical parameter is calculated, i.e. see the two equations recited in claims 3, 11 and 18. Therefore, the examiner contends that this is not “a representative number of species” of the entire genus, which is seemingly infinite in nature; see MPEP 2163, specifically section “ii) For each claim drawn to a genus” for more details.
It is noted that claims 3, 11 and 18 resolve this issue, by specifically citing the required calculations, hence why these claims (and their dependent claims) are not rejected.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 11, 17-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3, 11 and 18 recite the limitation “the local refractive power change”. There is insufficient antecedent basis for this limitation in the claim. Specifically, it’s unclear if “the local refractive power change” recited in these claims is the same as the “the local optical refraction power change” recited in the independent claims.
Claim 17 recites the limitation "the laser system" in line 10. There is insufficient antecedent basis for this limitation in the claim.
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 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea, specifically a mental process, without significantly more. The claims generally recite determining a treatment plan, specifically defining or determining a desired change in the eye, calculating data based on this desired change and then generating the plan. Specifically, the claims amount to mentally planning an eye surgery, by defining/determining the desired correction and then calculating the necessary radius of curvature or refractive power to achieve the desired correction. It is noted/emphasized that generating control data is a mental step, i.e. once a person has mentally figured out the treatment plan, the control data has been generated, i.e. a user has determined (in their mind) how a laser needs to be controlled in order to make the desired correction. This judicial exception is not integrated into a practical application because there are no additional elements. While the claims recite an intended field of use “a laser system for surgical correction of defective vision of the eye of a patient by emitting laser radiation to generate at least one cut in a cornea of the eye isolating a subsurface volume in the cornea”, neither the laser system or the treatment/cutting is actually required by the current claim language. It is emphasized that limiting the claim language to a particular field of use or intended use, does not integrate the mental process into a practical application. As discussed above, generating control data to do something does not require that the function actually be performed, only that the data be generated, and there is nothing precluding this generation from occurring solely in someone’s mind, i.e. once the treatment plan is decided in a person’s mind, the control data has been generated. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, there are no additional elements. Even assuming arguendo that generating control data is an additional element (which the examiner does not concede), this step is nothing more than extra-solution activity of outputting the conclusion/outcome/result of the mental process. This is equivalent to generally “applying” the mental process, which has been held as not significantly more than the abstract idea itself.
The dependent claims fail to resolve the above issues, as they merely add more to the abstract idea itself, i.e. serve to further limit the calculations and the mental process of analyzing data and making determinations/judgements based on this data. Specifically, the dependent claims fail to require/recite any additional elements and are therefore not significantly more than the abstract idea itself.
It is noted that claims 17-21 are not rejected under 101, because these claims specifically require/recite a prophylaxis, i.e. “emitting laser radiation to generate at least one cut in a cornea of the eye isolating a subsurface volume in the cornea having a peripheral border”.
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 2, 10 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,220,351 to Stobrawa. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim language of the patented claims anticipates (or renders obvious) the claim language of the current application, specifically see claims 12 and 15 (which depends on claim 12). While the patented claims fail to explicitly recite a “calculating” step, the examiner contends that such a step is inherent/implicit (or obvious), in order to obtain/generate the claimed “control data”. Specifically, in order to generate the control data that makes the necessary cuts in the cornea to create the “desired change”, an optical parameter must be calculated or at the very least it would be obvious to calculate the necessary optical parameter that would result in the desired change.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 9,050,172, claims 1-9 of U.S. Patent No. 10,828,197, claims 1-12 of U.S. Patent No. 11,413,189 and claims 1-17 of U.S. Patent No. 12,076,275. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are broad enough to encompass/anticipate the current claim language. Specifically, the examiner takes the position that the claimed equations in the patents (which are the same as the equations recited in claims 3, 11 and 18 in the current app) inherently encompass a local optical refraction power change that decreases in a non-stepwise manner to a value of zero which is reached at the peripheral border of the subsurface volume. Therefore, the current claim language is met because the equations recited in the patents encompass the currently claimed local optical refraction power change.
Lack of a Prior Art Rejection
Based on an effective filing date of 1/21/2009, there is no applicable prior art rejection to be made. However, all of the claims are rejected under other statutes, e.g. 101, 112a and 112b, and are therefore not allowable. Any amendments that change the scope of the claims will require further search and consideration and could potentially result in a prior art rejection being applied based on the amendments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lynsey C Eiseman whose telephone number is (571)270-7035. The examiner can normally be reached Monday-Thursday and alternating Fridays 7 to 4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at 571-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796
