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 .
Response to Arguments
Applicant’s amendments filed 8/13/2026 with respect to the previous rejections of the claims have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, and as necessitated by the amendments, new grounds of rejection is made in view of Khoo et al. (US 2021/0186755).
Claim Interpretation
Any use of the term “and/or” and “or” in the claims renders the associated limitation(s) as optional (as one example, the new limitations in claim 8).
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 and 7-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khoo et al. (US 2021/0186755, hereinafter Khoo).
Regarding claims 1-3 and 7-20, Khoo discloses a system with a footplate 534 shaped to mate with a slcera or adjacent a corneal limbus of the eye (see abstract and fig. 5). One or more waveguides 536 are coupled to the footplate at an angle between 1 degree and less than 90 degrees and are positioned to transmit laser light through aperture(s) of the footplate when mated with the eye (par. 0030, 0052, 0057, figure 5). A laser control system 102 delivers energy to the pans plana, pans plicata and/or the trabecular meshwork, if so desired by a user (see par. 0038, 0041, abstract).
As claims 1-18 are apparatus claims, they are governed by the following principles of law:
"To anticipate a claim, a reference must disclose every element of thechallenged claim and enable one skilled in the art to make the anticipatingsubject matter." PPG Indus. Inc. v. Guardian Indus. Corp, 75 F.3d 1558,1566 (Fed. Cir. 1996).
"[T]he patentability of apparatus or composition claims depends onthe claimed structure, not on the use or purpose of that structure." CatalinaMktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,809 (Fed. Cir.2002).
"It is well settled that the recitation of a new intended use for an oldproduct does not make a claim to that old product patentable." In reSchreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
The footplate is configured/shaped/dimensioned to be placed and moved as necessary in any manner (e.g., tangential, circumferential, zig-zag and/or radial motion) to accomplish the recited limitations.
Regarding claim 9, Khoo discloses the width (diameter) to be greater than 5 mm (i.e., about 1 cm) and the footplate of Khoo is defined by the Examiner as a portion of the distal end 534 that has a thickness of 0.1-1cm (par. 0048).
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 1-3 and 7-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 9,700,461 in view of Khoo. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate most of the disclosed structure of the current claims (contact member = footplate, treatment fibers = waveguides, laser = laser) and are configured/sized/dimensioned to perform any claimed intended uses in the current claims (e.g., positioning, tangential, circumferential and/or radial motion, etc.). However, the patented claims are silent as to the waveguides being at an angle to the footplate. Khoo discloses an analogous system with one or more waveguides 536 coupled to a footplate at an angle between 1 degree and less than 90 degrees. Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the patented claims to couple the waveguides to the footplate at an angle between 1 degree and less than 90 degrees in order to direct the laser light to appropriate target tissues.
Claims 1-3 and 7-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,500,094 in view of Khoo. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate most of the disclosed structure of the current claims (contact surface = footplate, treatment fibers = waveguides) and are configured/sized/dimensioned to perform any claimed intended uses in the current claims (e.g., positioning, tangential, circumferential and/or radial motion, etc.). However, the patented claims are silent as to the waveguides being laser waveguides attached at an angle to the footplate. Khoo discloses an analogous system with one or more laser waveguides 536 coupled to a footplate at an angle between 1 degree and less than 90 degrees. Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the patented claims to couple the waveguides to the footplate at an angle between 1 degree and less than 90 degrees in order to direct the laser light to appropriate target tissues.
Claims 1-3 and 7-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,292,868 in view of Khoo. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate most of the disclosed structure of the current claims (contoured distal end = footplate, optical fibers = waveguides, laser = laser) and are configured/sized/dimensioned to perform any claimed intended uses in the current claims (e.g., positioning, tangential, circumferential and/or radial motion, etc.). However, the patented claims are silent as to the waveguides being at an angle to the footplate. Khoo discloses an analogous system with one or more waveguides 536 coupled to a footplate at an angle between 1 degree and less than 90 degrees. Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the patented claims to couple the waveguides to the footplate at an angle between 1 degree and less than 90 degrees in order to direct the laser light to appropriate target tissues.
Allowable Subject Matter
Claims 4-6 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric D Bertram whose telephone number is (571)272-3446. The examiner can normally be reached Monday-Friday 8am-6pm Central Time.
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, Jennifer McDonald can be reached at 571-270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eric D. Bertram/Primary Examiner, Art Unit 3796
