DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
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Claims 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 9119704 to Blumenkranz et al (hereinafter “U.S. Pat”). Although the claims at issue are not identical, they are not patentably distinct from each other because one having ordinary prior art would have used the claims of U.S. patent to perform the claimed treatment. Regarding claim 1 of the instant application, claim 1 of the U.S patent teaches laser surgical system for making incisions in ocular tissues during a cataract surgical procedure, the system comprising: a laser system comprising one or more optical elements configured to produce a transverse focal volume that is transverse to an optical axis, a scanning assembly, a laser operable to generate a laser beam configured to incise ocular tissue; an imaging device configured to acquire image data from locations distributed throughout a volume of a lens of a patient and construct one or more images of the patient's eye tissues from the image data, and a control system operably coupled to the laser system and configured to: operate the imaging device to generate image data for the patient's ocular tissue, including the lens; process the image data to determine an incision scanning pattern for scanning the transverse focal zone of the laser beam for performing an incision opening the lens capsule, and operate the laser and the scanning assembly to scan the transverse focal zone of the laser beam to perform the incision, wherein positioning of the transverse focal zone is guided by the control system based on the image data so as to perform the incision opening the lens capsule.
Regarding claim 22 of the application, claim 2 of the U.S. patent recites “The system of claim 1, wherein the one or more optical elements are selected from the group consisting of a cylindrical lens, a cylindrical mirror, and an adaptive optic”.
Regarding claim 23 of the application, claim 3 of the U.S. patent recites “The system according to claim 2, wherein the adaptive optic is a MEMS mirror or a phased array”.
Regarding claim 24 od the application, claim 4 of the patent recites “The system of claim 1, wherein the scanning assembly is configured to translate the transverse focal zone along a z-axis.”
Regarding claim 25 of the application, claim 5 of the patent recites “The system of claim 1, wherein the control system is configured to scan the transverse focal zone in a lens by ablating from the posterior to the anterior portion of the lens, thus planing it.”
Regarding claim 26 of the application, claim 6 of the patent recites “The system of claim 1, wherein the scanning assembly is configured to rotate the transverse focal zone.”
Regarding claim 27 of the application, claim 7 of the patent recites the system of claim 1 wherein the incision scanning pattern further comprises scanning the transverse focal zone for performing a dissection of the lens.
Regarding claim 28 of the application, claim 8 of the patent recites the method of claim 1, wherein the dissection of the lens comprises ablating the lens.
Regarding claim 29 of the application, claim 9 of the patent recites the system of claim 8, wherein the control system is configured to scan the transverse focal zone in the lens from the posterior to the anterior portion of the lens.
Regarding claim 30 of the application, claim 10 of the application recites “The system of claim 8, wherein the control system is configured to scan the transverse focal zone along a single meridian in the lens.”
Allowable Subject Matter
Claim 31 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
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/AHMED M FARAH/Primary Examiner, Art Unit 3792
