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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 42, 52, 54 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “multi-dimensional image” is not defined in the specification. The specification only discloses capturing a “three-dimensional image” but does not show any expanding beyond 3D to an undefined class of “multi-dimensional” image data.
The term “substantially perpendicular” isn’t defined in specification with specific bounds as to what “substantially perpendicular” would equate to. Are there specific angular tolerances?
The term “substantially real-time” isn’t defined in specification with specific bounds as to what “substantially real-time” would equate to. Are there specific latency thresholds?
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 42-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of Hallen (U.S. Patent No. 12186036) in view of Chang (US 20080097515). Hallen discloses an ophthalmic system comprising: a surgical console having tools for conducting an ophthalmic procedure, a console processor, and a console memory containing console instructions which, when executed by the console processor, cause the console processor to access procedure data stored in the console memory, the procedure data describing a plurality of procedure stages and determine when to transmit an action code relating to a transition between a first procedure stage and a subsequent procedure stage; a surgical camera for capturing a multi-dimensional image of an eye; a display for displaying a representation of the multi-dimensional image and the diagnostic image of the eye; a network interface; and a surgical suite optimization engine (SSOE) communicatively coupled with the surgical console and the positioning system, wherein the SSOE includes an SSOE processor and an SSOE memory containing SSOE instructions which, when executed by the SSOE processor, cause the SSOE processor to transmit instructions, after receiving the action code from the surgical console, which: cause the display to depict the representation of the multi-dimensional image and the diagnostic image of the eye.
However, Hallen (US Patent No. 12186036) does not claim a diagnostic device for capturing a diagnostic image and cause the surgical console to adjust one or more diagnostic settings of the diagnostic device based on the action code; and cause the display to depict the representation of the multi-dimensional image and the diagnostic image in accordance with the adjusted one or more diagnostic settings.
Chang discloses a diagnostic device for capturing a diagnostic image (Section 0017) and cause the surgical console to adjust one or more diagnostic settings of the diagnostic device based on the action code (section 0017-0018); and cause the display to depict the representation of the multi-dimensional image and the diagnostic image of the eye in accordance with the adjusted one or more diagnostic settings (Section 0196). This allows for proper data to be displayed in order to properly optimize imagery used for surgery. Chang discloses he diagnostic device comprises at least one of an optical coherence tomography (OCT) device (Section 0017), a digital endoscopic camera, a laser speckle flowgraphy device, an ultrasound/echograph device (Section 0017), a wavefront and laser device, or a light interrogation/reflection device.
Therefore it would have been obvious to one of ordinary skill in the art, at the time of the invention, to modify the device of Hallen by adding a diagnostic device for capturing a diagnostic image and cause the surgical console to adjust one or more diagnostic settings of the diagnostic device based on the action code; and cause the display to depict the representation of the multi-dimensional image and the diagnostic image in accordance with the adjusted one or more diagnostic settings as taught by Chang in order to facilitate proper data to be displayed in order to properly optimize imagery used for surgery.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JON ERIC C MORALES whose telephone number is (571)272-3107. The examiner can normally be reached Monday-Friday 830AM-530PM CST.
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/JON ERIC C MORALES/Primary Examiner, Art Unit 3796
/J.C.M/Primary Examiner, Art Unit 3796
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