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 .
Priority
Applicant’s claim of priority to U.S. Provisional Application No. 63/584,491, filed on September 21, 2023, is acknowledged.
Information Disclosure Statement
The information disclosure statements (“IDS”) filed on 01/08/2025, 01/17/2025, and 08/28/2025 were reviewed and the listed references were noted.
Drawings
The 6 page drawings have been considered and placed on record in the file.
Status of Claims
Claims 1-20 are pending.
Claim Rejections - 35 USC § 112
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 1-20 (all claims) 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. Specifically, independent Claim 1 recites “generate guidance for performing an ophthalmic procedure according to the three-dimensional map…” (emphasis added). The terms “according to” is a subjective term (see MPEP 2173.05(b)(IV). One of ordinary skill in the art may interpret the term differently. Accordingly, further clarification is required to clearly identify the relationship between the limitations separated by the term. Claims 2-20 are rejection under this section of the Rules due to their dependency from Claim 1.
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 1-20 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. , Consider independent Claim 1, the claim 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. Specifically, Claim 1 recites “generate guidance for performing an ophthalmic procedure …”. Applicant’s specification, in Paragraph [0065] only repeats the limitations recited in the claim, without providing any clarification as to the nature of the “guidance”. Accordingly, the term “guidance” may cover various actions not covered by the specification. Claims 2-20 are rejected under this section of the Rules due to their dependency from Claim 1.
Allowable Subject Matter
The claims of the instant application are not rejected over prior art and will be allowed once the above-described rejections of claims under 35 U.S.C. 112(b) and 35 U.S.C. 112(a) are overcome. The following is a statement of reasons for the indication of allowable subject matter: consider Claim 1, Voigt et al. (US 2021/0228284) discloses “A system comprising: an imaging device configured to perform three-dimensional imaging of at least a portion of an eye of a patient” (Paragraphs [0068]-[0069], the optical coherence tomography (OCT) device and Paragraph [0072] discloses “a 3D reconstruction 94 of the region 18 of the patient's eye”. Also, Paragraph [0082], an image capturing device 66 and an OCT device 20) ; “a sensor configured to sense a location of a trocar cannula positioned in the eye of the patient” (Voigt, Paragraph [0082], the front OCT, the back OCT, and the surgical microscope 15); “and a controller configured to: receive one or more three-dimensional images from the imaging device” (Voigt, Paragraph [0013], the processor to continuously ascertain the relative position of the section of the surgery object and the 3D reconstruction of the region of the patient's eye. Also, the control unit in Paragraph [0099]); “receive coordinates of the trocar cannula from the sensor” (Voigt, Paragraph [0015] discloses “a processor, to ascertain the relative position of the section of the surgery object and of the 3D reconstruction of the region of the patient's eye is ascertained via a registration method which is adapted on the basis of a criterion; and, wherein the criterion takes account of at least one of properties of the data records, the region of the patient's eye, the surgery object, the eye surgery surgical system, the registration method, a currently ascertained registration, and a type of surgery”. Position of the section of surgery is interpreted as the coordinates of the trocar cannula used). In an analogous field of endeavor, Riviere et al. (“Adaptive cancelling of physiological tremor for improved precision in microsurgery” – IDS) discloses a new technique for active real-time canceling of physiological tremor, wherein “Tremor is modeled online using the weighted-frequency Fourier linear combiner (WFLC). This adaptive algorithm models tremor as a modulating sinusoid, and tracks its frequency, amplitude and phase. Piezoelectric actuators move the surgical instrument tip in opposition to the motion of tremor, effectively subtracting the tremor from the total motion. We demonstrate the technique in 1D using a cantilever apparatus as a benchtop simulation of the surgical instrument” (Riviere, Abstract). However, none of the cited prior art references, alone or in combination, provides a motivation to teach the ordered combination of “generate a three-dimensional map of the eye from the one or more three-dimensional images and the coordinates, the three-dimensional map including a representation of the trocar cannula; generate guidance for performing an ophthalmic procedure according to the three-dimensional map; and at least one of (a) output the guidance to a display device and (b) control an actuator coupled to a surgical instrument within the trocar cannula according to the guidance.”
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Siamak HARANDI whose telephone number is (571)270-1832. The examiner can normally be reached Monday - Friday 9:30 - 6:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amandeep Saini can be reached on (571)272-3382. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Siamak Harandi/Primary Examiner, Art Unit 2662
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