DETAILED ACTION
This office action is responsive to the response filed 12/22/2025. Claims 1-20 remain pending and under prosecution.
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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
No elements are interpreted under 112(f).
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 1-4, 6-15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kriebel (US Pat No. 3882718 – cited by applicant) in view of Samec et al (US Pub No. 20160270656), Nishi (US Pub No. 20060072215), and Iijima et al (US Pat No. 5989195).
In regard to Claims 1, 10-13, and 18, Kriebel discloses a device for detecting motion of a surface, i.e. eyeball, the device comprising:
a light/excitation source 22 configured to emit light, best seen in Figure 1 (Col.4: 25-38),
a focusing lens 20 that is aspherical and configured to focus the light, best seen in Figure 1 (Col.4: 25-38), and
a detector 30 configured to receive the focused light reflected off the surface and configured to detect motion of the received light being indicative of the motion of the surface reflecting the light – “the difference between the two signals developed on leads 32 and 34 [which are outputted from photodetector 30] can be used to provide an analog error signal proportional to the displacement of the eyeball surface” (Col.4: 60-63), which provides for noncontact intraocular pressure measurement of the eye.
However, Kriebel do not expressly disclose the detector detecting motion of a distribution pattern of the received light, the motion of the distribution pattern of the received light being indicative of the motion of the surface reflecting the light.
Samec et al teach that it is well-known in the art that a distribution pattern of reflected light from an eye from an analogous device that emits light from a light source and detected by a photodetector is an effective indicator intraocular pressure – “The pattern of backscattering or reflection of the emitted light may be an indicator of the intraocular pressure of the eye” (1739).
Samec et al teach processing device 32 is used to determine said intraocular pressure of the eye with the light sensor by measuring said distribution pattern (1738).
Since Kriebel disclose the detector already having the function of detecting the reflected light, it would have been obvious to one of ordinary skill in the art at the time of filing to substitute the functioning of said detector of Kriebel with one that provides a distribution pattern of the received light that is analyzed by a processing device as taught by Samec et al, as an updated means to determine the intraocular pressure from the reflected light, wherein in combination, the detector would thus detect motion of a distribution pattern of the received light, the motion of the distribution pattern of the received light being indicative of the motion of the surface reflecting the light and the processing device is configured to determine an estimate of the pressure of the eye based on the detected motion of the surface of the eye as taught by Samec et al.
However, Kriebel as modified do not disclose the focusing lens having a conic constant in a range from -1.5 to -0.5.
Nishi teach that it is well-known in the art to provide an analogous optical measurement system wherein a lens that allows light to enter the eye has a conic constant in a range from -1.5 to -0.5 as an effective configuration for its use – “a far surface shape of the optical element from the eyeball has a aspherical shape of a Conic surface such that the light flux entering a pupil of the eyeball enters a far surface of the optical element from the eyeball approximately at right angles and a Conic coefficient of the Conic surface is -1 and less” (0008).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kriebel such that the focusing lens is an aspherical lens having a conic constant in a range from -1.5 to -0.5 as taught by Nishi to provide an effective configuration for the focusing lens for its use.
However, Kriebel as modified do not disclose a diameter of the focusing lens is at least 60% of a distance from a light egress surface of the focusing lens to a beam waist of the focused light.
Iijima et al teach that it is well-known in the art to provide an analogous noncontact intraocular pressure measurement device (tonometer) comprising a focusing lens 202 with a diameter that is at least 60% of a distance from a light egress surface of the focusing lens to a beam waist of the focused light, wherein the diameter of the focusing lens need to be large enough to reflect the light despite the size of the light beam, best seen in Figure 10a-c (Col.1: 63-Col.2: 12).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kriebel such that a diameter of the focusing lens is at least 60% of a distance from a light egress surface of the focusing lens to a beam waist of the focused light as taught by that to effectively provide the best size for the focusing lens for its desired use, “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Kriebel would not operate differently with a specific sized diameter. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kriebel such that a diameter of the focusing lens is at least 70%, 90%, or 110% of a distance from a light egress surface of the focusing lens to a beam waist of the focused light (Claims 10-12) as desired.
4. Kriebel disclose the device according to claim 1, wherein the light egress surface of the focusing lens 20 is non-planar, as shown in Figure 1, and a light ingress surface of the focusing lens is non-planar, as shown in Figure 1, so that a combined optical effect of the light ingress and light egress surfaces is a same as an optical effect of a plano-convex lens whose conic constant of a convex surface is in the range from -1.5 to -0.5 when modified by Nishi above.
6. Kriebel disclose the device according to claim 1, wherein the device comprises a collector lens 26 configured to direct, to the detector 30, the light reflected off the surface, best seen in Figure 1.
7. Nishi disclose the device according to claim 1, wherein the conic constant is in a range from -1.3 to -0.6 (0008).
8. Nishi disclose the device according to claim 1, wherein the conic constant is in a range from -1.1 to -0.7 (0008).
9. Nishi disclose the device according to claim 1, wherein the conic constant is in a range from -0.9 to -0.7 (0008).
14. Kriebel in combination with Samec et al disclose the apparatus according to claim 13, wherein the processing device is capable and thus configured to measure time between a first time instant when the excitation source directs the airborne excitation to a first spot on the surface of the eye and a second time instant when the detector device detects the motion from a second spot on the surface of the eye, and to determine the estimate of the pressure of the eye based on the measured time because Kriebel already teaching magnitudes of the electrical signals designating the eyeball displacement obtained from the photodetector 30 (Col.4: 39-63), wherein it would be obvious to a skilled artisan to use a measure time between a first time instant when the excitation source directs the airborne excitation to a first spot on the surface of the eye and a second time instant when the detector device detects the motion from a second spot on the surface of the eye as an equivalent measure of displacement.
15. Kriebel as modified by Samec et al disclose the apparatus according to claim 13, wherein the processing device is configured to measure related to the motion of the surface of the eye, and to determine the estimate of the pressure of the eye based on the measured oscillation frequency as taught by Kriebel – “an indicator responsive to the electrical signals for indicating a resonant frequency of the container; the resonant frequency providing an indication of the internal pressure within the container” (abst of Kriebel) as elaborated above.
Claims 2-3, 5, 16, 17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kriebel (US Pat No. 3882718 – cited by applicant) in view of Samec et al (US Pub No. 20160270656), Nishi (US Pub No. 20060072215), and Iijima et al (US Pat No. 5989195), further in view of Shaver (US Pub No. 20040080759 – cited by applicant).
In regard to Claims 2-3, Kriebel in combination with Samec et al, Nishi, and Iijima et al disclose the invention above including the conic constant in the range from -1.5 to -0.5 but do not expressly disclose the focusing lens is a plano-convex lens with a light ingress surface of the focusing lens is planar or the light egress surface of the focusing lens is planar.
Shaver teach that it is well-known in the art to provide an analogous eye measurement device wherein a focusing lens 18, 20 is a plano-convex lens with a light ingress surface of the focusing lens is planar or the light egress surface of the focusing lens is planar, best seen in Figure 1, as an effective configuration for the lens and desired light flow.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kriebel as modified by Samec et al, Nishi, and Iijima et al such that the focusing lens is a plano-convex lens with a light ingress surface of the focusing lens is planar or the light egress surface of the focusing lens is planar as taught by Shaver as an effective configuration for the focusing lens as desired.
In regard to Claims 5, 17, 19, and 20, Kriebel in combination with Samec et al, Nishi, and Iijima et al disclose the invention but do not expressly disclose the detector comprises an array of photosensor elements, changes of differences between output signals of the photosensor elements being indicative of the motion of the distribution pattern of the received light.
Shaver teach that it is well-known in the art to provide an analogous eye measurement device wherein an array of photosensor elements is used to detect reflected flight – “Reflector 24 then reflects light onto sensor 26 to sense parameters of the reflected light. For example, sensor 26 can include an appropriately small active element or any detector or detector array with proper spatial filtering for the original light configuration from light source 14” (0023).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kriebel as modified by Samec et al, Nishi, and Iijima et al such that the detector comprises an array of photosensor elements as taught by Shaver as an updated and equivalent detector to measure the reflected light already taught by Kriebel such that changes of differences between output signals of the photosensor elements being indicative of the motion of the distribution pattern of the received light as already taught by the general functioning of Kriebel.
In regard to Claim 16-17, Kriebel in combination with Samec et al, Nishi, and Iijima et al disclose the invention but do not expressly disclose the processing device is configured to correct the estimate of the pressure of oscillation frequency the eye in accordance with a predetermined correction rule based on a location and/or a size of a light spot on a light receiving area of the detector, the location and/or the size of the light spot being indicative of a position and an orientation of the apparatus with respect to the eye, which is a predetermined rule based on a position of a pattern of the received light on the photosensor array.
Shaver teaches that it is well-known in the art to provide an analogous eye measurement device wherein a location and/or a size of a light spot on a light receiving area of the detector indicative of a position and an orientation of the apparatus with respect to the eye is corrected for – “a relative phase error between return signals sensed by the detectors can be used to determine the angle at which device 50 is held. Calculations can then be made by signal processing module 28 to correct for the angle at which the device 50 is held” (0033).
Shaver teach an array of photosensor elements is used to detect reflected flight – “Reflector 24 then reflects light onto sensor 26 to sense parameters of the reflected light. For example, sensor 26 can include an appropriately small active element or any detector or detector array with proper spatial filtering for the original light configuration from light source 14” (0023).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kriebel in combination with Samec et al, Nishi, and Iijima et al such that the processing device is configured to correct the estimate of the pressure of oscillation frequency the eye in accordance with a predetermined correction rule based on a location and/or a size of a light spot on a light receiving area of the detector, the location and/or the size of the light spot being indicative of a position and an orientation of the apparatus with respect to the eye, which constitutes a predetermined rule based on a position of a pattern of the received light on the photosensor array, wherein the light is received on a photosensor array as taught by Shaver et al to take into account said position and orientation of the apparatus with respect to the eye, and such that an array of photosensor elements is used to detect the reflected light as taught by Shaver as an updated and equivalent detector to measure the reflected light already taught by Kriebel.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. Applicant contends that “one skilled in the art would not have been led to modify the apparatus of Kriebel by the system of Nishi because Kriebel is not an image display device that is used in proximity to an eye and projects an image to the eye” (Remarks pg. 6). In other words, applicant appears to contends that Nishi is not analogous prior art. However, this is not persuasive as Nishi is considered analogous art as pertaining to applicant’s field of endeavor, which is an optical system for the eye, and includes the instant invention of intraocular pressure measurement using reflected light. The optical image system of Nishi which is concerned with reflection of light into a user’s eyes is analogous to the function of the focusing lens of the instant invention to also focus light into the subject’s eye to measure intraocular pressure. Thus, it is submitted that Nishi constitutes analogous art.
Although the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art, it cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, said specific advantages (cited in Remarks pg. 7) have not been presently claimed. Thus, applicant’s contention that “the cited prior art does not disclose that the measures for providing a viewing angle ≥60 degrees and a small aberration in the image display device of Nishi would also improve robustness against deviation from an optimal positioning and/or orientation between the light source system (a light source + a focusing lens) of Kriebel and an eye under examination” (Remarks pg. 8) is not persuasive because that is not the motivation that has been set forth in the obviousness rejection. To reiterate, applicant has not refuted that combination as motivated by Nishi to provide an effective configuration for the focusing lens for its use in Kriebel as set forth. Therefore, the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/H.Q.N/Examiner, Art Unit 3791
/JENNIFER ROBERTSON/ Supervisory Patent Examiner, Art Unit 3791