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 .
Election/Restrictions
Applicant’s election without traverse of Species A, 1, I and X in the reply filed on 7/27/2026 is acknowledged. Claims 3, 5, 10, 17 and 72 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/29/2025 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 2, 4, 6, 8, 9, 13, 14, 16 and 18 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, 2, 13 and 14, Khoo discloses a treatment probe for treating a ciliary process, as seen in at least figures 1 and 3-5 (par. 0038). The probe includes an elongate body 106/330/406/506 defining a handle and having a proximal and distal end. A treatment fiber 104/304/336/436/536 is configured to deliver treatment light energy to the eye from a distal end of the fiber (par. 0041, 0047, 0055, 0057). An automated assembly 110 is FOR directing the treatment light energy along a treatment path to the eye from the distal end of the treatment fiber by adjusting laser settings, adjusting laser paths, and/or automatically triggering output (par. 0043, 0070-0073). A tip member 332/432/532 is disposed on and extends from the the distal end of the elongated body and the tip member includes a surface 334/434/534 for positioning on a surface of the eye (figures 4 and 5).
Regarding claim 4, the automated assembly can include a motorized wheel and gear mechanism (par. 0043, 0065, 0070-0073).
Regarding claims 6 and 18, the treatment path can be an arc radius, if so desired by a user. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 8, the entire device including the tip member can be replaced after a treatment session, if so desired by a user. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claims 9 and 16, pulsed laser light is delivered to treat the eye (par. 0027). No coagulation of tissue is disclosed.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 11, 12 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Khoo.
Regarding claims 11 and 12, Khoo discloses the applicant’s basic invention, but is silent as to using a rechargeable battery within the elongate body and including a display. However, par. 0041 discloses that a power supply can be included within the elongate body, and that the probe can include a user interface, but is silent as to the power supply being rechargeable and the user interface including a display. The Examiner takes Official Notice that the use of rechargeable power supplies is old and well known in the medical art, and is advantageous since the battery can be reused instead of being discarded. The Examiner takes Official Notice that the use of displays with user interfaces for medical devices is old and well known in the medical art, and is advantageous since the display allows for critical information to be given to the user during the procedure. It would have been obvious to one of ordinary skill in the art before the applicant’s effective filing date to modify the power supply of Khoo to be rechargeable and for the user interface to include a display for the motivation provided above.
Regarding claim 19, Khoo discloses in par. 0004 and 0071 that repositioning the probe is old and well known in the art. Khoo discloses that, ideally, the automated assembly can make it unnecessary to reposition the probe. However, in the instance where the treatment was unsuccessful without repositioning, it would have been obvious to one of ordinary skill in the art at the time of the applicant’s effective filing date that repositioning the probe and trying the treatment at new locations may produce preferred results.
Claims 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Khoo in view of WO 2014/172641 (hereinafter Iridex)
Regarding claims 7 and 15, Khoo discloses the applicant’s basic invention, but is silent as to an aiming beam housed in the elongate body for positioning the
treatment probe relative to the eye. However, Iridex is in the field of ocular treatment devices (abstract) and teaches an aiming beam housed in the elongate body for positioning the treatment probe relative to the eye (par. 0054, Fig. 1D). It would have been obvious to one of ordinary skill in the art before the priority date to modify the treatment probe of Khoo to include an aiming beam housed in the elongate body for positioning the treatment probe relative to the eye as taught by Iridex in order to ensure that the treatment is precisely targeted to the correct area of the eye, providing effective treatment and minimizing damage to surrounding tissues.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892, specifically US 2022/0331161, which discloses a treatment probe with a treatment fiber and a contact surface for positioning on the eye.
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
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