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 .
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.
Information Disclosure Statement
The information disclosure statement(s) filed on May 15, 2025 have/has been acknowledged and considered by the examiner. Initialed copies of supplied IDS(s) forms are included in this correspondence.
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 1-5, 7-13, 16-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,076,085 (herein 085). Although the claims at issue are not identical, they are not patentably distinct from each other because:
As to claim 1, US 085 claim 1 includes all the limitations of claim 1 of the instant application.
As to claims 2-5, 7-10, US 085 claims 1-7 recite substantially similar subject matter.
As to claim 11, US 085 claim 8 includes all the limitations of claim 11 of the instant application.
As to claims 12-13, 16-18 US 085 claims 8-12 recite substantially similar subject matter.
As to claims 19, 21-24, US 085 claims 1-7 recite substantially similar subject matter.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 19, 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Stringham et al. (Evaluation of Variables Affecting Intraoperative Aberrometry)1 in view of Copland et al. (US 2016/0000318 - Copland).
As to claim 19, Stringham teaches a system for ophthalmic measurement (Stringham page 471; right side - Humphrey Atlas System mode 991) comprising an ophthalmic measurement device (Stringham page 471 - Humphrey Atlas System mode 991) a processor coupled to the ophthalmic measurement device (Stringham page 471 - Humphrey Atlas System mode 991; Figs. 1, 2), the processor configured to:
receive, from an ophthalmic measurement device, a first measurement of at least one ophthalmic parameter (Stringham page 471 - corneal topographer evaluating cylinder power and axis; Figs. 1, 2), over a first measurement area (Stringham page 471; Figs. 1, 2 - corneal topography), the first measurement area corresponding to an unassisted measurable area of the patient’s eye (Stringham page 471; Figs. 1, 2 - pre-speculum corneal topography cylinder and axis measurement);
receive, from the ophthalmic measurement device, a second measurement of the at least one ophthalmic parameter over a second measurement area (Stringham page 471; Figs. 1, 2 - corneal topography), the second measurement areas corresponding to an assisted measurable areas of the patient’s eye (Stringham page 471; Figs. 1, 2 - open-wire or closed-wire speculum based corneal topography cylinder and axis measurement);
receive, from the ophthalmic measurement device, first reflections associated with the first measurement and second reflection associated with the second measurement (Stringham page 471 - Humphrey Atlas System mode 991 performs measurement via reflections from the eye).
Stringham doesn’t specify responsive to discrepancies present between the second and first reflections, generate an alert that a tear film of the patient has dried.
In the same field of endeavor Copland teaches an ophthalmic system with ophthalmic measurement measuring first/second light reflections from an eye and to generate an alert a tear film of the patient has dried (Copland Fig. 2 - 10, 1200, 1520; para. [0004], [0030], [0036]; Fig. 8 - 810, 820, 830; para. [0046], [0084]-[0087]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide an alert for such tear film drying since, as taught by Copland, such alerts allow for determining if the measurement data is accurate and if not, providing corrective action (Copland para. [0004], [0046]).
As to claim 21, Stringham in view of Copland teaches all the limitations of the instant invention as detailed above with respect to claim 19, and Stringham/Copland further teaches the processor is further configured to compare the first measurement to a sampled portion of the second measurement that corresponds to a sub-region of the second measurement area that coincides with the first measurement area (Stringham page 471; Figs. 1, 2 - corneal topography necessarily includes a sub-region of the corneal measures pre-speculum and with specula; Copland Fig. 8 - 810, 420, 430, 840 850; para. [0004], [0046], [0087]); and
generate an alert that the second measurement is inaccurate based on a difference between at least one ophthalmic parameter as indicated by the comparing of the first measurement to the sampled portion of the second measurement (Stringham Figs. 1, 2; Copland Fig. 8 - 810, 420, 430, 840 850; para. [0004], [0046], [0087]).
As to claim 22, Stringham in view of Copland teaches all the limitations of the instant invention as detailed above with respect to claim 21, and Copland further teaches the processor is further configured to reject the second measurement based on the difference between the at least one ophthalmic parameter as indicated by the comparing of the first measurement to the sampled portion of the second measurement (Copland Fig. 8 - 830, 850; para. [0046], [0085], [0087]);
and repeat the second measurement in response to rejecting the second measurement (Copland Fig. 8 - 830, 850, 820).
As to claim 23, Stringham in view of Copland teaches all the limitations of the instant invention as detailed above with respect to claim 21, and Stringham further teaches the ophthalmic parameter includes at least one of corneal curvature, axial length, aberrometry, or corneal topography (Stringham page 471);
the ophthalmic measurement device includes at least one of a keratometer, ultrasound biometer, wavefront device, a topographer, or an aberrometry device (Stringham page 471).
As to claim 24, Stringham in view of Copland teaches all the limitations of the instant invention as detailed above with respect to claim 21, and Stringham further teaches comparing comprises scaling the first measurement area to the second measurement area (Stringham Figs. 1, 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Ono (US 10,842,375; 2019/0059721); Korb et al. (US 10,716,465; 2018/0177391); Copland et al. (US 9,706,912); Nozato (US 10,492,681; 2015/0150450); Shea et al. (US 9,332,899; 2014/0125949); Bishop (US 9,398,845; 2016/0324418); Beyerlein et al. (WO 2012/116807) are cited as additional examples of ophthalmic measurement verification systems and methods.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 July 21, 2026
1 Stringham J, Pettey J, Olson RJ. Evaluation of variables affecting intraoperative aberrometry. J Cataract Refract Surg. 2012 Mar;38(3):470-4. doi: 10.1016/j.jcrs.2011.09.039. Epub 2011 Dec 24. PMID: 22200510.
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