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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/19/2025 has been considered by the Examiner and made of record in the application file.
Response to Amendment
The Amendment filed 11/19/2025 has been entered. Claims 7-8 have been canceled. Claims 1-6 and 9-19 remain pending in the application. Applicant’s amendments were sufficient to overcome the 112(b) rejections and drawing objections previously set forth in the Non-Final Office Action mailed 05/19/2025.
The examiner notes that the response by applicant fails to address all of the objections of the Office Action of 05/19/2025, particularly the claim objections of claims 4-6 and 9-19. Since the response addresses the rest of the Office Action the examiner considers this a bona fide Response, and in an effort to maintain a compact prosecution will proceed as if the Response is fully responsive and maintain the objections of claims 4-6 and 9-19, as set forth below.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the elements/terms "first portion of the illumination light", "second portion of the illumination light", "first light spot", and "second light spot" in claim 1 are not stated anywhere in the Specification.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: OCT System and Computing Unit for Calculating Wavefront Error.
Claim Objections
Claims 4-6, 9-17, and 19 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Further regarding claim 9, claim 9 is dependent on “any one of claims 4 to 8”, however claims 7 and 8 have been canceled. Additionally, claim 18 is objected to as being in improper form because claim 18 is dependent on “claim 7 or 8”, both of which have been canceled. As the limitations of neither 7 nor 8 appear in another claim, claim 18 is incomplete. Accordingly, the claims 4-6 and 9-19 have not been further treated on the merits.
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.
Claims 1-6 and 9-19 are 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.
Regarding independent claim 1, the limitation “a focus tunable optics to receive a first portion of the illumination light and direct it through a second beam splitter as a first light spot to a sample”, “an illumination channel configured to direct a second portion of the illumination light via the second beam splitter onto the sample to form a second light spot on the sample, wherein the second portion of light”, and “ the focus tunable optics positioned (i.) to receive light of the first light spot from the sample and light of the second light spot from the sample after both as transmitted through the second beam splitter” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear where the first portion of illumination light and the second portion of illumination light are coming from or how they are formed. Further, it is unclear how there is a first light spot and a second light spot being formed on the sample, and how they are both passing through the focus tunable optics. See instant application Fig. 10A, included below, which “shows schematic illustration of the wavefront sensor based on digital off-axis holography according to an embodiment of the present disclosure” and is therefore being interpreted as the intended invention.
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According to Fig. 10A, the light which is emitted from the 1001 then passes through 1002 and reflects off of 1003 to arrive at beam splitter 1011. Beam splitter 1011 is being interpreted as the first beam splitter according to the language of claim 1 “a first beam splitter positioned to receive the light and direct a first part of the light to a sample arm as illumination light and a second part of the light to a reference arm as reference light”. Fig. 10A shows the light being reflected from 1011 towards the eye, which is the sample arm 1010, and transmitted through 1011 towards the reference arm 1020. Once the light spot from 1011 is reflected onto the eye, it is reflected from the eye and transmits through 1011 to be received at the focus tunable optics 1012, which then focuses the light spot through beam splitter 1005 onto a detection plane. However, the claim indicates that “a focus tunable optics to receive a first portion of the illumination light and direct it through a second beam splitter as a first light spot to a sample”. It is unclear how the illumination light is being split into portions. The light from the light source is being split at the first beam splitter 1011 into illumination light and reference light, but there is nothing to further split the illumination light into a first and second portion. Further, with the layout of elements pictured above, the focus tunable optics is not directing illumination light to a sample, it is receiving light reflected from the sample. Beam splitter 1005 can be considered the second beam splitter, however, light is being directed to it to the detection plane, not to the sample. Claim 1 continues “an illumination channel configured to direct a second portion of the illumination light via the second beam splitter onto the sample to form a second light spot on the sample”. As stated above, it is unclear how a second portion of illumination light is being formed, and there is only one beam splitter, the first beam splitter 1011, which directs light to the sample, therefore there cannot be a first light spot and a second light spot on the sample, only a single light spot which is reflected from the illumination channel at the first beam splitter 1011 to be directed onto the eye. The next limitation “the focus tunable optics positioned (i.) to receive light of the first light spot from the sample and light of the second light spot from the sample after both are transmitted through the second beam splitter” has the same issues – there can only be one light spot, and it passes through the second beam splitter 1005 after the focus tunable optics. In the event that 1011 is to be considered the second beam splitter, the light path still would not be what is claimed in claim 1. In the event that there is an additional beam splitter adjacent to 1011 to further portion the illumination light, this would warrant a drawing objection as this is not shown, and further it still would not resolve the focus tunable optics supposedly transmitting light towards the sample. And as stated above, there are no mentions of “a first portion of the illumination light”, “a second portion of the illumination light”, “a first light spot”, or “a second light spot”, present in the Specification. Therefore, this claim is being interpreted such that it follows the arrangement of elements shown in Fig. 10A.
Additionally, the terms “the light” in lines 4-6, and “the focused light” in the second to last line lack sufficient antecedent basis.
For the purposes of examination, examiner interprets claim 1 as follows:
“Optical apparatus, comprising:
a source of wavelength tunable laser light or a broad band partially coherent light source,
a first beam splitter positioned to receive from the light source and direct a first part of the light to a sample arm as illumination light and a second part of the light to a reference arm as reference light,
the sample arm comprising:
first beam splitter onto the sample to form a wherein the first beam splitter transmits the light spot reflected from the sample,
first beam splitter and (ii.) to transmit the light spot through a second beam splitter to focus the light spot on a detection plane, and
wherein the illumination light in the illumination channel does not pass through the focus tunable optics, and
wherein a photodetector unit is adapted to receive combined light from the reference arm and the light spot from the focus tunable optics.”
Claims 2-6 and 9-19 are dependent on claim 1 and therefore inherit the same issues.
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed.
If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 and 9-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the configuration of elements shown in Fig. 10A, does not reasonably provide enablement for the configuration of elements recited in claim 1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Regarding independent claim 1, there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the scope of enablement requirement and whether any necessary experimentation is “undue”. These factors include, but are not limited to: (A) The breadth of the claims; (B) The Nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure (see In re Wands, 858 F.2d 7331, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
In the instant case, the claim requires a first beam splitter, a second beam splitter, and a focus tunable optics, wherein the first beam splitter splits light from a light source into illumination light towards a sample arm and reference light towards a reference arm. Then, a second beam splitter splits the illumination light into a first portion and a second portion to form a first light spot and a second light spot on the sample, wherein the first portion passes through the focus tunable optics to reach the sample and the second portion does not pass through the focus tunable optics to reach the sample. Then, both the first light spot and the second light spot are transmitted through the focus tunable optics to be focused onto the detection plane. However, the specification points to Fig. 10A as a “schematic illustration of the wavefront sensor based on digital off-axis holography according to an embodiment of the present disclosure”, and Fig. 10A shows a configuration wherein the illumination light cannot be split into two portions, there is only one light spot that can be formed on the eye, and the light cannot pass through the focus tunable optics before reaching the eye. Further, there is only one beam splitter that splits the light into separate components, and it only splits the light into illumination light and reference light. See 112(b) rejection above for more detail.
Thus, the breadth of the limitations (Wands factor A) does not match the nature of the invention (Wands factor B) in light of prior art (Wands factor C) beyond what one skilled in the art (Wands factor D) could predictably arrive at (Wands factor E). There is no disclosure, teaching, or suggestion in this specification to support this limitation (Wands factors F & G). Therefore, one of ordinary skill in the art would be unable to arrive at the claimed invention without undue experimentation (Wands factor H) using the instant application disclosure, see MPEP 2164.01(a).
For the purposes of examination, the examiner will use the interpretation written in the 112(b) rejection above.
Claims 2-6 and 9-19 are dependent on claim 1 and therefore inherit the same issues.
Claims 1-6 and 9-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding independent claim 1, the limitations “a focus tunable optics to receive a first portion of the illumination light and direct it through a second beam splitter as a first light spot to a sample”, “an illumination channel configured to direct a second portion of the illumination light via the second beam splitter onto the sample to form a second light spot on the sample, wherein the second portion of light”, and “ the focus tunable optics positioned (i.) to receive light of the first light spot from the sample and light of the second light spot from the sample after both as transmitted through the second beam splitter” are not described anywhere in the specification. Fig. 10A appears to show the intended configuration of the elements, and the written description supports what is shown in Fig. 10A. The limitations described in claim 1 do not appear what is described in the specification or shown in Fig. 10A. Further, as a result, these features also appear to be prohibited new matter.
For the purposes of examination, the examiner will use the interpretation written in the 112(b) rejection above.
Claims 2-6 and 9-19 are dependent on claim 1 and therefore inherit the same issues.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Yaqoob et al. (US 20120307035 A1), hereinafter Yaqoob, in view of Murata et al. (US 20160317028 A1), hereinafter Murata.
Regarding independent claim 1, Yaqoob discloses an optical apparatus, comprising:
a source of wavelength tunable laser light or a broad band partially coherent light source (14; Fig. 1A; ¶0008, ¶0026),
a first beam splitter (BS1; Fig. 1A; ¶0041) positioned to receive light from the light source (14) (Fig. 1A) and direct a first part of the light to a sample arm (the path which reflects down from BS1, reflects back from sample, and transmits through BS1 and BS3 to camera; Fig. 1A) as illumination light and a second part of the light to a reference arm (the path which transmits through BS1 to reflect from the Ref. Mirror and reflect from BS3 to camera; Fig. 1A) as reference light,
the sample arm comprising:
an illumination channel (the light along the sample arm traveling towards the sample from the light source; Fig. 1A) configured to direct the illumination light via the first beam splitter (BS1) onto the sample to form a light spot on the sample (Fig. 1A), wherein the first beam splitter (BS1) transmits the light spot reflected from the sample (Fig. 1A),
a focusing optics (L6, L15; Fig. 1A; ¶0026) positioned (i.) to receive the light spot transmitted through the first beam splitter (BS1) (Fig. 1A) and (ii.) to transmit the light spot through a second beam splitter (BS3; Fig. 1A; ¶0026) to focus the light spot on a detection plane (20; Fig. 1Al ¶0026),
wherein the illumination light in the illumination channel (the light along the sample arm traveling towards the sample from the light source) does not pass through the focusing optics (L6, L15) (Fig. 1A), and
wherein a photodetector unit (20; Fig. 1A; ¶0026) is adapted to receive combined light from the reference arm and the light spot from the focusing optics (L6) (light from reference arm and light spot from focusing optics recombine at BS3; Fig. 1A).
Yaqoob does not disclose the focusing optics is a focus tunable optics.
However, Murata teaches a similar optical apparatus comprising a light source (11; Fig. 1A; ¶0029), a sample arm (light path to eye; Fig. 1A; ¶0029), a reference arm (30; Fig. 1A; ¶0029), and multiple focusing optics (lenses) throughout the optical apparatus (Fig. 2), wherein one of the focusing optics is a focus tunable optics (23a; Fig. 1A; ¶0042).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yaqoob to have the focusing optics (L6) be focus tunable optics as taught by Murata for the purpose of being able to adjust the light to focus the light onto the detector.
Regarding claim 2, Yaqoob in view of Murata discloses the optical apparatus according to claim 1, as set forth above, Yaqoob does not disclose the focus tunable optics is configured to be controlled automatically, the focus tunable optics comprising electrically focus tunable liquid crystal optical elements.
However, Murata teaches the focus tunable optics is configured to be controlled automatically (¶0068), the focus tunable optics (23a) comprising electrically focus tunable liquid crystal optical elements (23a; Fig. 1A; ¶0042).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the focus tunable optics to comprise electrically focus tunable optics and have the focus tunable optics be controlled automatically for the purpose of efficiently being able to adjust the focal length to focus light onto the detector and since it has been held that broadly providing a mechanical or automatic means to replace manual activity which accomplishes the same result involves only routine skill in the art. In re Venner 120 USPQ 193, 194 (CCPA 1958).
Regarding claim 3, Yaqoob in view of Murata discloses the optical apparatus according to claim 1 or 2, as set forth above. Yaqoob does not disclose the sample is an eye and wherein the focus tunable optics is capable of ensuring that a retinal plane of the eye is continuously conjugated to or imaged at the detection plane.
However, Murata teaches the sample is an eye (Fig. 1A; ¶0002) further teaches the focus tunable optics is capable of ensuring that a retinal plane of the eye is continuously conjugated to or imaged at the detection plane (this limitation is not given patentable weight – however, it is implicit that since Murata has the same focus tunable optics and even further that the focus tunable optics comprises electrically focus tunable liquid crystal optical elements that can be controlled automatically, that it is capable of ensuring that a retinal plane of the eye is continuously conjugate to or imaged at the detection plane)1.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yaqoob to have the focusing optics (L6) be focus tunable optics as taught by Murata for the purpose of being able to adjust the light to focus the light onto the detector and for the sample to be an eye for the purpose of examining an eye.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hirose et al. (US 20230050680 A1) discloses a similar optical apparatus with manual or automatic focusing. Kushida et al. (US 20210224997 A1) discloses a similar optical apparatus with multiple focus tunable optics. Puyo et al. (US 20210196120 A1) discloses a similar optical apparatus.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
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, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATASHA NIGAM/Examiner, Art Unit 2872 February 20th, 2026
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872
1 It has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense; In re Hutchison, 69 USPQ 138. Also see Intel Corp. v. U.S. Int'l Trade Comm’n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991), MPEP 2114. IV and MPEP 2173.05(g).