by Dennis Crouch
To the extent that folks are studying this, the following is a list of the 111 applications for which third parties have submitted prior art references under pre-issuance submission authorization of the America Invents Act.
File Attachment: AppsWith3rdPtySubmissions.xlsx (9 KB) (Current Through December 5, 2012)
In December, PTO Director David Kappos reported that the PTO had received 270 third party submissions. The PTO’s figure represents the number of submissions but the report fails to mention multiple submissions per application.
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The first case from the list that I pulled-up with an Office Action is U.S. App. No. 12/829,968 owned by Alcon and that claims an implantable sensor that fits in the anteriour chamber of a patient’s eye.
1. A sensor comprising:
a housing having a configuration that generally conforms to a curvature of an anterior chamber of a patient's eye; and
a sensing device disposed in the housing and configured to detect physiological parameters and transmit a signal representing the physiological parameters.
The anonymous third party submitted a german patent application as a reference and now that application has served as the basis for the USPTO rejection of the claims. The Office Action also rejected the claims as being indefinite based upon the claim term “generally.” The examiner writes:
The term ‘generally’ is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and the one of ordinary skill in the art would not be reasonable apprised of the scope of the invention. As such, it is unclear what is claimed by ‘generally conforms.’
Citing 35 U.S.C. 112(a).
The examiner also rejected the claim for lacking subject matter eligibility under 35 U.S.C. 101 because the claim is “drawn to a body part.” The examiner suggested that a cure for the perceived problem would be to claim that the device is “configured to” conform to the patient’s eye.