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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 7/25/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 1-15 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.
With regards to claim 1, the term “calculating a maximum tolerable axial growth rate (TAG) as a function of the subject's current age (CA)” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “calculating a maximum tolerable axial growth rate (TAG)” is a relative term which renders the claim indefinite (MPEP 2173.05(b)).
Furthermore, it is unclear what establishes a specific “tolerable axial growth rate” or data acquired. Is this a specific claim function previously recited? Such limitations may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claims 2-15 depend on claim 1 and are rejected for at least the reasons stated above.
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 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 1:
Under Step 1: Claim 1 is directed to a method.
Under Step 2A – Prong 1:
Claim 1 recites the abstract idea of evaluating and monitoring the efficiency of a myopia treatment. This abstract idea is described in at least claim 1 by “obtaining the current age; calculating a growth rate; comparing AG with TAG”. These steps fall into the mental process groups of abstract ideas as they include, mentally or using the aid of pen and paper. These limitations as drafted processes that, under their broadest reasonable interpretation, cover the performance of the limitations in the mind. Nothing in claim 1 precludes the idea form practically being performed in the human mind.
Under Step 2A – Prong 2:
The claim recite additional elements comparing and categorizing the age of a subject and effects of myopia treatments. However, these additional elements fail to integrate into a practical application. The computing device or the item that performs the computer implemented method, are generic computing components. These additional elements are considered to be directed to insignificant solution activity as the step gathers data necessary to perform the abstract idea and outputting results. These additional steps amount necessary data gathering, wherein all uses of the recited abstract idea require such data gathering or data output. See MPEP 2106.05(g).
Under Step 2B:
For the same reasons addressed above with respect to step 2A, the additional elements recited in claim 1 fail to amount to inventive concept. As such, the additional elements individually and in combination do not amount to significantly more than the abstract idea. Thus, when considering the combination of elements and the claimed invention as a whole, the claims are not patent eligible.
Regarding claim 2-15:
Dependent claims 2-15 only recite limitations further defining the mental processes and recite further data gathering. These limitations are considered mental processes without significantly more elements to the abstract idea. These additional elements fail to integrate into a practical application. As such, the additional elements individually and in combination do not amount to significantly more than the abstract idea. Therefore, when considering the combination of elements and the claimed invention as a whole claim 2-15 are not patent eligible.
Furthermore, the claims do not apply the abstract idea to effect a particular treatment for a disease or medical condition. Rather, the abstract idea is utilized to determine a relationship among data to provide a medical measurement.
The claims do not apply the abstract idea to a particular machine.
When considered in combination, the additional elements (i.e. the generic computer functions and conventional equipment/steps) do not amount to significantly more than the abstract idea. Looking at the claim limitations as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Examiner notes that the claims appear to allude to applying a treatment but as currently claim do not actively recite a treatment being applied. Merely providing instructions generically based on different modules is recited. What the instructions are specifically is not claimed. A treatment being applied due to the instructions is not claimed. What ‘based on’ is meant to mean is not claimed. Examiner notes amending to clarify these issues and to better reflect that a treatment is being actively applied would likely overcome the 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Raymond (20120172854), Burr (11524032), and Loertscher (20150124212) are examples of a method for prevention of myopia progression.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sharrief I Broome whose telephone number is (571)272-3454. The examiner can normally be reached Monday-Friday 8am-5pm, EST.
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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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Sharrief I. Broome
Primary Examiner
Art Unit 2872
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872
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