DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
1. Claim(s) 1-4, 7-8, 14-15, and 18-20 is/are rejected under pre-AIA 35 U.S.C. 102(a)(1) as being anticipated by Homer (US 20050049584 A1).
In regards to claims 1 and 18, Homer discloses a method for preventing accidental overexposure of electromagnetic radiation to human eyes while applying electromagnetic radiation (Abstract and Par. 0037 disclose applying radiation to the eye to change its color and in way that minimizes damage), the method comprising:
determining a laser profile for a laser beam during a color changing operation, wherein the laser profile has a first energy density at an iris of a human eye and a second energy density at a posterior portion of the human eye, and wherein the first energy density is greater than a second energy density (Par. 0020 discloses applying laser energy to the eye. Since the energy is applied anteriorly, the energy density would be greater at the anterior portion of the iris and less at the posterior portion);
generating, using an electromagnetic radiation generator, the laser beam based on the laser profile (Par. 0021 and Claim 1 teaches applying electromagnetic radiation via a laser); and
applying, using a computerized scanning system, the laser beam to a surface area of an anterior surface of the iris (Par. 0041 and claim 21 teaches using a scanning system to apply the laser to the iris).
In regards to claims 2 and 19 Homer discloses the method of claim 1, wherein the surface area comprises at least 25% of the anterior surface (Par. 0021 teaches applying the beam to the entire iris, thus covering at least 25%).
In regards to claims 3 and 20, Homer discloses the method of claim 1, wherein the laser profile causes the laser beam to produce a spot on the surface area (Par. 0040 teaches focusing the beam to a spot).
In regards to claim 4, Homer discloses the method of claim 1, wherein applying the laser beam to the surface area of the anterior surface of the iris comprises: determining a first treatment zone concentric to a pupil of the human eye; and determining a second treatment zone concentric to the pupil (Par. 0013-0014 and Fig 2 and 4 teach that the treatment laser is applied around the pupil, with the pupil being covered by a circular patch, i.e. the treatment zone is concentric to the pupil).
In regards to claim 7, Homer discloses the method of claim 1, wherein applying the laser beam to the surface area of the anterior surface of the iris comprises: determining a first spot on the surface area for a first laser treatment; determining a second spot on the surface area for a second laser treatment, wherein the first spot overlaps the second spot; applying the laser beam to the first spot during the first laser treatment; and applying the laser beam to the second spot during the second laser treatment (Par. 0021 discloses applying the laser in a single spot or in several spots directionally)
In regards to claim 8, Homer discloses the method of claim 1, wherein applying the laser beam to the surface area of the anterior surface of the iris comprises: determining a first spot on the surface area for a first laser treatment; and determining a second spot on the surface area for a second laser treatment, wherein the second laser treatment is within a 24-hour period of the first laser treatment (Par. 0021 discloses applying the laser in a single spot or in several spots directionally. Par. 0010 teaches reapplying the laser treatment after a day).
In regards to claim 14, Homer discloses the method of claim 1, wherein applying the laser beam to the surface area of the anterior surface of the iris comprises: determining a depth of the human eye during application; determining a shift in the depth; and determining to modify application of the laser beam based on the shift (Par. 0037 teaches measuring the depth and applying the laser at the appropriate depth).
In regards to claim 15, Homer discloses the method of claim 1, wherein applying the laser beam to the surface area of the anterior surface of the iris comprises: determining a location of the anterior surface of the iris during application; and determining a shift in the location; and determining to modify application of the laser beam based on the shift (Par. 0041 teaches using a position or guidance system that can determine the position of the iris, i.e. its location, and adjust the beam based on the changes in position).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
2. Claims 5-6 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Homer and in view of Larsen (US 20100292676 A1).
In regards to claims 5-6, Homer discloses the method of claim 1,except for wherein applying the laser beam to the surface area of the anterior surface of the iris comprises: determining a first treatment zone, wherein the first treatment zone extends approximately from an outer periphery of a pupillary constrictor muscle to an outer periphery of a pupil of the human eye; and determining a second treatment zone, wherein the second treatment zone extends approximately from a limbus of the human eye to the outer periphery of the pupillary constrictor muscle; in a spiral pattern.
However, in the same field of endeavor. Larsen teaches radiation applied to the eye for color changes (Abstract and Par. 0069) wherein the laser is applied to the eye in a spiral pattern (Par. 0086- since the laser is being applied to the iris (Par. 0103), it would ne inherent that the scan pattern could be applied from an outer periphery of a pupillary constrictor muscle) in order to provide uniform coverage.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Homer and modified them by having the scan pattern be performed in a spiral patten, as taught and suggested by Larsen, in order to provide uniform coverage.
3. Claim 12 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Homer and in view of Andersen (US 7263255 B2)
In regards to claims 12, Homer discloses the method of claim 1, except for wherein the laser profile is Gaussian and causes the laser beam to converge to a focal point and then diverge from that focal point.
However, in the same field of endeavor. Andersen teaches radiation applied to the iris (Abstract and Col 6, lines 39-45) wherein the laser profile is Gaussian (Fig 1-4) in order to provide a relatively smooth scan (Col. 4, lines 35-41).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Homer and modified them by having the profile be Gaussian, as taught and suggested by Andersen, in order to provide a relatively smooth scan (Col. 4, lines 35-41 of Andersen).
4. Claim 13 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Homer and in view of Spooner (US 20120078240 A1).
In regards to claim 13, Homer discloses the method of claim 1, except for wherein applying the laser beam to the surface area of the anterior surface of the iris comprises: passively tracking the human eye; and determining to modify application of the laser beam based on passively tracking the human eye.
However, in the same field of endeavor, Spooner teaches a system for applying radiation to the eye (Abstract) wherein the system employs passive eye tracking and uses this the modify the beam (Par. 0029) in order to halt laser treatment when the eye motion ranges beyond an acceptable limit (Par. 0029).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Homer and modified them by having the system passively track the eye and make adjustments, as taught and suggested by Spooner, in order to halt laser treatment when the eye motion ranges beyond an acceptable limit (Par. 0029 of Spooner).
5. Claim 16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Homer and in view Clapham (US 6132421 A).
In regards to claims 16, Homer discloses the method of claim 1, except for wherein applying the laser beam to the surface area of the anterior surface of the iris comprises: determining a rotation around an orbital axis of the human eye during application; and determining a shift in the rotation; and determining to modify application of the laser beam based on the shift.
However, in the same field of endeavor, Clapham teaches a method for laser eye surgery (Abstract) wherein the orbital motion about a moving axis is considered ad the movement of the tool being used will be adjusted based on this orbital motion (Col 3, lines 1-15) in order to allow for alignment with the optical path (Col. 3, lines 1-15).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Homer and modified them by having the system track movement including rotations around the orbital axis and make adjustment, as taught and suggested by Clapham, in order to allow for alignment with the optical path (Col. 3, lines 1-15 of Clapham).
6. Claims 9-11 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Homer in view of Vera (US 20120259321 A1).
In regards to claims 9-11, Homer discloses the method of claim 1, except for wherein the laser profile causes the laser beam to converge at a focal point and then diverges from the focal point at a divergence angle of 1 degree or greater from the focal point, wherein the laser profile causes at least a portion a convergence of the laser beam to occur anterior to the surface area.
However, in the same field of endeavor, Vera discloses a method for applying a beam to the anterior portion of the eye (Par. 0125) wherein the degree of divergence of the beam is 30
degrees or greater (Par. 0158) and wherein the beam converges at the anterior and diverges at the posterior (Par. 0156) in order to create high angular access to the anterior chamber angle and minimizes beam aberrations to effectively delivery of the beam (Par, 0156)
Therefore, it would have been obvious to one having ordinary skill in the art before the
effective filing date of the claimed invention to have taken the teachings of Homer and modified them by having the divergence angle be greater than 1 degree and to converge at the anterior and diverge at the posterior, as taught and suggested by Vera, in order to create high angular access to the anterior chamber angle and minimizes beam aberrations to effectively delivery of the beam (Par, 0156 of Vera)
7. Claim 17 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Homer in view of Knopp (US 20020198516 A1).
In regards to claim 17, Homer discloses the method of claim 1, except for wherein applying the laser beam to the surface area of the anterior surface of the iris comprises restricting movement of the human eye during application of the laser beam.
However, in the same field of endeavor, Knopp discloses a system for ophthalmic laser surgery (Abstract) wherein the patient is immobilized during the laser procedure (Par. 0014) in order to improve the accuracy and efficacy of eye surgery (Par. 0014).
Therefore, it would have been obvious to one having ordinary skill in the art before the
effective filing date of the claimed invention to have taken the teachings of Homer and modified them by having the system immobilize the eye, as taught and suggested by Knopp, in order to improve the accuracy and efficacy of eye surgery (Par. 0014 of Knopp).
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.
8. Claims 1-3, 9-11, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 21, and 41 of of U.S. Patent No. 12161588 B2 and of claims 1 and 21 of U.S. Patent No. 11806282 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the contain the same subject matter.
Conclusion
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/S.L.C./Examiner, Art Unit 3792
/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796
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