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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 5 August 2026 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5 August 2026.
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.
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: “an illumination element” in claim 5.
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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 4, 6-9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaller (10,238,534) in view of Abraham et al. (2002/0096272).
With respect to claim 1, Schaller discloses a lubrication assembly for lubricating an eye of a patient during an ophthalmic procedure, as shown in figure 2A, comprising a mounting bar 220, an output 214 coupled to the mounting bar, and a cable 250 communicating a lubricant between a lubrication source 110 and the output, as shown in figure 1. The assembly further comprises means for disposing the output in a desired position relative to the eye of the patent, as disclosed in column 4, lines 61-65, and column 5, lines 12-19.
Schaller discloses all aspects of the claimed invention with the exception of a camera coupled to the mounting bar. Abraham discloses a lubrication assembly for lubrication of an eye of a patient during an ophthalmic procedure, as shown in figure 1, and teaches the use of a camera to identify the amount of liquid disposed onto the eye, as disclosed in paragraph [0038], and to adjust the application of lubricant, as disclosed in paragraph [0045]. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the lubrication assembly of Schaller with a camera coupled to the mounting bar, as taught by Abraham, to monitor the amount of liquid disposed to the eye and adjust the application of lubricant.
With respect to claim 4, the means for disposing the output of Schaller comprises a surgical microscope, as disclosed in column 5, lines 12-19.
With respect to claim 6, Schaller discloses an input means 130 configured to disperse lubricant from the output 120 upon actuation of the input means, as shown in figure 1.
With respect to claim 7, Abraham teaches coupling the camera 38 to an image receiving and processing apparatus 30, as shown in figure 1, to process the image data to identify the amount of liquid disposed in the eye, as disclosed in paragraph [0038]. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the assembly of Schaller with an image receiving and processing apparatus, as taught by Abraham, to allow for processing of image data. The image receiving and processing apparatus of modified Schaller is fully capable of being configured to detect an amount of glare within a digital signal.
With respect to claim 8, the output of Schaller comprises a needle-less syringe 214, tubing 212, and nozzle 210, as shown in figure 2A.
With respect to claim 9, modified Schaller discloses all aspects of the claimed invention with the exception of an add-on slot configured to selectively accommodate a removable add-on. Schaller discloses a mounting device 220, as shown in figure 2, for use during ocular surgery. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include an add-on slot on the mounting device of Schaller to achieve the predictable result of allowing for other devices needed during surgery to be held in proximity to the eye of the patient.
With respect to claim 11, Abraham teaches the use of an optical coherence tomography scanner to track the eye, as disclosed in paragraph [0038]. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the assembly of Schaller with an optical coherence tomography scanner, as taught by Abraham, to allow for tracking of the eye.
Claim(s) 2-3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaller (10,238,534) in view of Abraham et al. (2002/0096272), and further in view of Gerber et al. (2026/0215964).
With respect to claim 2, modified Schaller discloses all aspects of the claimed invention with the exception of a robotic arm coupled to a motion controller operable to move the robotic arm to extend the output into a desired position. Schaller discloses in column 4, lines 61-67, that the output may be moved into position electronically, pneumatically, magnetically, or via any other appropriate technique, but remains silent as to positioning the output using a robotic arm coupled to a motion controller. Gerber discloses a assembly for performing an ophthalmic procedure, as shown in figure 7A, comprising a positioning arm 712 that is controlled by a robotic system, as disclosed in paragraph [0065]. Gerber therefore teaches a robotic arm and a motion controller. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to make the means for disposing the output a robotic arm and motion controller, as taught by Gerber, to achieve the predictable result of allowing the output to be moved into position electronically.
With respect to claim 3, Schaller discloses the output 214 is disposed on a working end of the means for disposing the output, as shown in figure 2. Therefore Schaller, as modified by Abraham to comprise a camera and by Gerber to comprise a robotic arm, discloses disposing the output and camera on the working end of the robotic arm.
With respect to claim 5, modified Schaller discloses all aspects of the claimed invention with the exception of an illumination element. Gerber teaches a illumination element 602 to increase visibility during the procedure, as disclosed in paragraphs [0061-0062]. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the assembly of Schaller with an illumination element, as taught by Gerber, to allow for better visibility during the ophthalmic procedure.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, Schaller, does not disclose a corneal cross-link add-on comprising a UV light source and a syringe configured to disperse liquid vitamins or other fluids. Schaller discloses only a single syringe configured to deliver a solution, including any medicinal additives, to the eye, as disclosed in column 3, lines 3-7, and therefore does not suggest the need for an additional syringe or a UV light. The prior art of record therefore does not disclose nor fairly suggest the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Publication 2024/0041648 discloses an eye lubrication assembly comprising a camera.
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/CATHARINE L ANDERSON/Primary Examiner, Art Unit 3781
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