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 .
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 1-14, 16 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, 16 and 17 of U.S. Patent No. 12,551,377 to Rathjen et al (hereinafter “Rathjen”). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to analogous ophthalmological device for treating eye tissue. With respect to claim 1 of the instant application, Rathjen discloses an ophthalmological device for treating eye tissue of an eye, comprising: a laser source which is configured to generate a pulsed laser beam; an application head having focusing optics and a patient interface, the focusing optics having a projection axis and being configured to focus the pulsed laser beam in the eye tissue onto a treatment point, and the patient interface having a central axis and being configured to fix the application head on the eye; a scanner system which is configured to steer the pulsed laser beam in the eye tissue onto treatment points on a treatment path; and a circuit which is configured to control the scanner system in order to incise an incision surface, which is symmetrical with respect to the central axis of the patient interface, in the eye tissue, the pulsed laser beam being steered onto treatment points on the incision surface on a first treatment path,
wherein the circuit is furthermore configured, in the event of a tilt of the eye with respect to the central axis of the patient interface, to determine an apex of a tilted incision surface, which is determined by a co-tilt of the incision surface corresponding to the tilt of the eye, to determine a transformed second curved treatment path, which extends around the apex and determines treatment points on the tilted incision surface, and to control the scanner system in such a way that the pulsed laser beam is steered onto treatment points on the transformed second curved treatment path.
With respect to claim 2 of the application, see claim Rathjen claim 2 teaches the claimed limitations.
With respect to claim 3 of the application, see Rathjen claim 3. With respect to claim 4 of the application, Rathjen claim 4. With respect to claim 5 of the application, see Rathjen 5 .
With respect to claim 6 of the application, see Rathjen 6.
With respect to claim 7 of the application, see Rathjen 7. With respect to claim 8 of the application see Rathjen claim 8. With respect to claim 9 of the application see Rathjen claim 9.
With respect to claim 10 of the application see Rathjen claim 10. With respect to claim 11 of the application see Rathjen claim 11. With respect to claim 12 of the application see Rathjen claim 12. With respect to claim 13 of the application see Rathjen claim 13.
With respect to claim 14 of the application see Rathjen claim 14.
With respect to claims 16 and 17 of the application see Rathjen claims 16 and 17.
Allowable Subject Matter
Claims 15 and 18-20 are 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
