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 .
Specification
The abstract of the disclosure is objected to because it uses the terminology, “There is described an apparatus comprising”, which can be inferred.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be inferred, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 28-31, 35, 36 and 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kreitzer et al. (2015/0234149; cited by Applicant).
Regarding claim 28, Kreitzer et al. disclose an apparatus for providing magnification of an object, the apparatus comprising:
a first optical element 21, 23, 24 (para. 0027; Fig. 3) at a first location, wherein the first optical element provides an image of the object in an intermediate image plane 28 (para. 0027; Fig. 3);
a second optical element L13 (para. 0027; Fig. 3) at a second location, wherein the second optical element optically magnifies the intermediate image and provides a final image in a final image plane 17 (para. 0025; Fig. 3);
a spacing element, e.g., side wall of housing at 14 (Fig. 1), wherein the spacing element maintains the first optical element at a fixed distance from the object; and
an optical path (Fig. 3) extending between the first optical element 21, 23, 24 and the final image plane 17,
wherein the intermediate image plane 28 and the second optical element L13 are disposed along the optical path,
wherein the second optical element L13 is disposed on the optical path between the intermediate image plane 28 and the final image plane 17,
wherein the optical path defines a first distance from the intermediate image plane 28 to the final image plane 17 and a second distance from the first optical element 21, 23, 24 to the intermediate image plane 28, and
wherein the second distance is greater than the first distance (Fig. 3).
Regarding claim 29, the apparatus further comprises a device (e.g., a board), having a camera 56 (e.g., a semiconductor CMOS; para. 0024), wherein the device having the camera is aligned with the final image plane 17 (Fig. 3).
Regarding claim 30, the device having the camera comprises a mobile user device, e.g., a cellphone (para. 0024).
Regarding claim 31, the apparatus comprises a mounting element 54 (Fig. 1), wherein the mounting element is configured to mount the apparatus in a fixed position relative to the device (i.e., the board) having the camera 56 such that a camera aperture of the device having the camera is supported in the final image plane 17 (para. 0024; Fig. 3).
Regarding claim 35, the apparatus further comprises a third optical element L12,
wherein the third optical element contains the entire image at the intermediate image plane 28; and
wherein the third optical element is disposed on the optical path in the intermediate image plane 28 such that the first optical element 21, 23, 24 and the second optical element L13 lie in conjugate planes (i.e., an image at a plane of the first optical element is formed on a plane of the second optical element).
Regarding claim 36, the first optical element 21, 23, 24 comprises two doublets, (i.e., at least paired lens elements), e.g., L3, L4 and L6, L7 (Fig. 3).
Regarding claim 40, the first optical element, e.g., L6, L7 thereof, is achromatic (i.e., a negative (concave) lens L6 paired with a positive (convex) lens L7; Fig. 3).
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.
Claims 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Kreitzer et al. (2015/0234149; cited by Applicant) in view of Elson et al. (2021/0068645).
Regarding claim 32 Kreitzer et al. disclose the claimed invention, including a smartphone (Fig. 1 and para. 0002), except for disclosing a body for defining an aperture through which an object is examined; wherein the body is a speculum for placing in an ear canal of a subject.
Elson et al. disclose that a speculum 6 of an otoscope 1 can be provided as an attachment for a smartphone 10 to enable ear examination where desired with a readily available camera, processor and screen (e.g., paras. 0002 and 0028).
It would have been obvious to a person having ordinary skill in the art before the effective filing date to provide the smartphone of Kreitzer et al. with an otoscope provided as an attachment to a smartphone, in view of Elson et al., to enable ear examination where desired with a readily available camera, processor and screen.
Regarding claim 33, the apparatus of the combination comprises an otoscope 1 (e.g., Fig. 1 and para. 0002 of Elson et al.).
Regarding claim 34, the speculum 6 of the combination is disposed at a distal end of a spacing element 7, and the spacing element 7 provides a gap (Fig. 1, i.e., between the back of the speculum 6/mount 3 and the optical aperture 13) capable of tool access to the ear canal through the speculum if desired.
Claims 41-43 are rejected under 35 U.S.C. 103 as being unpatentable over Kreitzer et al. (2015/0234149; cited by Applicant).
Regarding claim 41, Kreitzer et al. disclose the claimed invention except for explicitly reciting a front focal length of the first optical element from about 80 millimeters (mm) to about 180 mm.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date to configure a front focal length of the first optical element from about 80 mm to about 180 mm, e.g., to achieve a desired image size or magnification. It is further noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 42, Kreitzer et al. disclose the claimed invention except for explicitly reciting wherein the optical power of the second optical element is from about 3 diopters to about 25 diopters.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date to configure the second optical element with an optical power from about 3 diopters to about 25 diopters, e.g., to achieve a desired focus. It is further noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 43, Kreitzer et al. disclose the claimed invention except for explicitly reciting wherein the optical magnification factor of the apparatus is at least about 8.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date to provide an optical magnification factor of the apparatus of at least about 8, e.g., to achieve a desired magnification factor. It is further noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
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 28-45 and 47 are rejected on the ground of nonstatutory double patenting as being patentably indistinct over claims 1-17 of U.S. Patent No. 10,898,069.
Although the claims at issue are not identical, they are not patentably distinct from each other because the differences amount to minor changes in the arrangement and phraseology of the claim limitations (e.g., the first distance being significantly smaller than the second distance in the patent claim vs. the second distance is greater than the first distance in the application). The only substantive difference between the application claims and the patent claims resides in the fact that the patent claims include more elements and are more specific (e.g., a means for mounting the apparatus in a fixed position relative to the device such that a camera aperture of the device is supported in the final image plane; and, a mirror arrangement comprising a plurality of mirrors to divert the optical path away from and then towards an axis extending between the first optical element and the final image plane, such that the optical path is longer than the distance between the first optical element and the final image plane, as set forth in independent patent claim 1). Thus, the claimed invention is patentably indistinct from the claim of the issued patent, the issued patent merely having additional elements beyond what is required for the present claim.
Regarding independent application claim 28, patent claim 1 discloses an apparatus for providing magnification of an object, the apparatus comprising:
a first optical element at a first location, wherein the first optical element provides an image of the object in an intermediate image plane;
a second optical element at a second location, wherein the second optical element optically magnifies the intermediate image and provides a final image in a final image plane;
a spacing element, wherein the spacing element maintains the first optical element at a fixed distance from the object; and
an optical path extending between the first optical element and the final image plane,
wherein the intermediate image plane and the second optical element are disposed along the optical path,
wherein the second optical element is disposed on the optical path between the intermediate image plane and the final image plane,
wherein the optical path defines a first distance from the intermediate image plane to the final image plane and a second distance from the first optical element to the intermediate image plane, and
wherein the second distance is greater than the first distance (i.e., the first distance is significantly smaller than a second distance).
The dependent application claims are mapped to the patent claims as set forth in the table at the end of this section.
Claim 46 is rejected on the ground of nonstatutory double patenting as being patentably indistinct over claim 1 of U.S. Patent No. 10,898,069 in view of Woods (5,501,652).
Claim 1 of the issued patent discloses the invention of claim 46 of the present application except for explicitly reciting the plurality of mirrors comprising a plurality of plane mirrors, wherein at least one plane mirror of the plurality of plane mirrors has a diameter from about 10 millimeters (mm) to about 12.5 mm.
Woods also discloses an otoscope (Fig. 5) and teaches that a plurality of plane mirrors 46, 60, 24 can be provided to direct light (i.e., the image) in a desired path to a final image plane (i.e., the eyepiece) (Fig. 5; col. 1, lines 31-41; col. 4, lines 38-48; col. 6, lines 21-28). It is noted that the plane mirrors are at least generally circular and would be of a size appropriate to match with the otoscope ear portion 34 (col. 4, lines 38-48; col. 6, lines 21-28).
Therefore, it would have been an obvious modification of the patented invention to configure the plurality of mirrors as plane mirrors, in view of Woods, to direct light in a desired path to a final image plane. It would have been further obvious to have formed the mirrors of a desired size, including a diameter from about 10 mm to about 12.5 mm, e.g., because this size would be generally within a range dictated by the physical size constraints of an otoscope ear portion.
The claims in the present application and those of the issued patent are mapped as follows:
Appl. 17/777,778
Pat. 10,898,069
1-27 (canceled)
N/A
28
1
29
1
30
2
31
1
32
3
33
4
34
5
35
6
36
7
37
8
38
1
39
9
40
10
41
11
42
12
43
13
44
16 (16/15/14)
45
17
46
1 v. Woods
47
9
Allowable Subject Matter
No claims are currently allowed.
Reasons for Allowance
No claims are currently allowed. However, it is noted that claim 37 has not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose or suggest the claimed combination of limitations recited in claim 37. In particular, none of the cited references teach or suggest wherein the first optical element comprises two doublets and the aperture stop is disposed between the two doublets (the aperture stop 88 is not between two doublets of the first optical element 21, 23, 24; Fig. 3), as required by claim 37.
It is also noted that claim 38 has not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose or suggest the claimed combination of limitations recited in claim 38. In particular, none of the cited references teach or suggest wherein the mirror arrangement is configured to divert the optical path away from and then towards an axis extending between the first optical element and the final image plane, such that the optical path is longer than the distance between the first optical element and the final image plane, as required by claim 38. It is further noted that claims 39, 46 and 47 depend from claim 38.
It is also noted that claim 44 has not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose or suggest the claimed combination of limitations recited in claim 44. In particular, none of the cited references teach or suggest wherein the attaching element attaches the powered light source and the electronic circuitry to the spacing element; and an optical arrangement configured to guide light from the powered light source towards the object, wherein the optical arrangement comprises a collimator, as required by claim 44. It is further noted that claim 45 depends from claim 44.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see attached PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID C COMSTOCK whose telephone number is (571)272-4710. The examiner can normally be reached M-F 9:00-5:00 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached at 571-272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID C. COMSTOCK
Examiner
Art Unit 3773
/DAVID C COMSTOCK/Examiner, Art Unit 3773 /EDUARDO C ROBERT/Supervisory Patent Examiner, Art Unit 3773