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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/09/2026 has been entered.
Response to Amendment
The Amendment filed 07/09/2026 has been entered. The amendments to the claims have overcome every objection and 112(b) and 112(a) rejection previously set forth in the office action of 03/10/2026.
Response to Arguments
Applicant's arguments filed 07/09/2026 have been fully considered but they are not persuasive.
Regarding the 103 rejections of claims 1-6 and 9-19 and new dependent claim 20, applicant’s arguments 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.
Regarding new independent claim 21, applicant’s arguments have been fully considered. However, the examiner respectfully disagrees. Applicant argues “neither Yaqoob nor Murata disclose a diffraction grating disposed in a reference arm”. However, the abstract of Yaqoob states “the system uses a diffraction grating in the reference arm”. See prior art rejection below for more.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Group I. Claims 1-3, 5-6, and 20-21, drawn to an optical apparatus for eye examination, classified in A61B 3/102.
Group II. Claims 1, 4, and 9-19, drawn to a device for performing data analysis, classified in G06T 2207/10101.
The inventions are independent or distinct, each from the other because:
Claim 1 links inventions of Groups I and II. The restriction requirement among the linked inventions is subject to the nonallowance of the linking claim, claim 1. Upon the indication of allowability of the linking claim, the restriction requirement as to the linked inventions shall be withdrawn and any claims depending from or otherwise requiring all the limitations of the allowable linking claim will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104. Claims that require all the limitations of an allowable linking claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. Amendments submitted after final rejection are governed by 37 CFR 1.116; amendments submitted after allowance are governed by 37 CFR 1.312.
Inventions I and II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a materially different design, mode of operation, function, or effect; for example Group I requires. Furthermore, the inventions as claimed have significantly diverging subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received multiple actions on the merits for the invention of Group I, the invention of Group I has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 4 and 9-19 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification, the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicants are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Specification
The amendments to the specification were received on 07/09/2026. These amendments to the specification are accepted. Although the beam splitter 115 was not previously explicitly included in the disclosure or shown in Fig. 1, the intersection of lines previously shown in Fig. 1 implies that there is inherently a beam splitter present to split the light into the sample arm and the reference arm.
Claim Objections
Claims 3 and 20 are objected to because of the following informalities:
In claim 3, examiner suggests “the focus tunable optics is capable of ensuring that a retinal plane of [[an]] the eye is continuously conjugated”
In claim 20, examiner suggests “The optical apparatus of claim 1”
Appropriate correction is required.
Drawings
The drawings were received on July 9, 2026. These drawings are unacceptable for the following reasons. The drawings are objected to under 37 CFR 1.83(a) because they fail to show the following structural details and claimed subject matter. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). The drawings must show every feature of the invention specified in the claims.
Fig. 1 has 115 (a beam splitter) shown by an arrow pointing to a straight line. Beam splitter 115 should instead point to the intersection of the arrow leaving the light source and the arrow going into the detection channel.
The “photodetector detector unit is adapted to receive and combine light from the reference arm and the sample arm” as claimed in claim 1 is not shown. Additionally, there is no element shown that does combine light from the reference arm and the sample arm.
The layout of the detection fiber, focus tunable optics, and photodetector together is not shown. Specifically, the “detection fiber adapted to…guide the light from the focus tunable optics to the photodetector” as claimed in claim 6 is not shown.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-3, 5-6, and 20 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 photodetector unit is adapted to receive and combine light from the reference arm and the sample arm” 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 what is combining the light from the reference arm and the sample arm, and what is comprised in the photodetector unit. It is unclear if the photodetector unit simply refers to a photodetector, in which case it is unclear how the light from the reference arm and the sample arm are being combined, or whether the photodetector unit includes multiple elements, such as a beam splitter and a photodetector, for performing both the functions of combining light and then receiving the combined light. The specification states “a photodetector unit is adapted for receiving the recombined light from the sample arm and the reference arm” on page 2 lines 22-23, indicating that the photodetector unit is not combining the light itself. Further, since the photodetector unit is neither given a reference number, nor directly shown in the figures (Fig. 1, which applicant has stated in the remarks of 07/09/2026 is the embodiment that claim 1 refers to, only shows a “detection channel 130”). The limitations of claim 6, dependent on claim 1, additionally raise clarity issues regarding this limitation. Claim 6 states “a detection fiber adapted to…guide light…to the photodetector”. Since claim 6 does not state the light is guided to the photodetector unit, it is unclear if this indicates the photodetector unit of claim 1 also comprises the detection fiber, wherein the detection fiber guides light to the photodetector, all considered within the photodetector unit, or if the photodetector unit is simply just a photodetector.
For the purposes of examination, examiner assumes “a photodetector unit is adapted to receive [[and]] combined light from the reference arm and the sample arm” and that the photodetector unit refers to just a photodetector.
Claims 2-3, 5-6, and 20 are dependent on claim 1 and therefore inherit the same issues.
Regarding claim 6, the limitation “wherein the sample arm further comprises a detection fiber adapted to receive an image of the light at the detection plane and guide the light from the focus tunable optics to the photodetector” 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 if this is a new detection fiber of the same detection fiber at the detection plane in the sample arm already claimed in claim 1. Further, “the photodetector” in the third line lacks sufficient antecedent basis.
For the purposes of examination, examiner assumes “wherein the detection fiber is adapted to receive an image of the light at the detection plane and guide the light from the focus tunable optics to the photodetector unit”.
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 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US 20210156671 A1), hereinafter Xu, in view of Murata et al. (US 20160317028 A1), hereinafter Murata.
Regarding independent claim 1, Xu discloses an optical apparatus, comprising:
a source of wavelength tunable laser light (208; Fig. 2; ¶0074, ¶0097) or a broad band partially coherent light,
a first beam splitter (PBS; Fig. 2; ¶0074) positioned to receive the light from the light source (208) and direct a first part of the light to a sample arm (206; Fig. 2; ¶0064) as illumination light (212; Fig. 2; ¶0074) and a second part of the light to a reference arm (204; Fig. 2; ¶0064) as reference light (214; Fig. 2; ¶0074),
the sample arm (206) comprising:
an illumination channel (from PBS to sample; Fig. 2) configured to direct the illumination light (212) via a second beam splitter (BS2; Fig. 2) onto a sample (Fig. 2), wherein the light in the illumination channel does not pass through a focus tunable optics on its way to the sample (Fig. 2), and
a focusing optics (L1, L2; Fig. 2) positioned to receive reflected light from the sample (Fig. 2) after the reflected light transmitted through the second beam splitter (BS2) (Fig. 2) and to focus the reflected light onto a detection plane (implicit that the lens would focus the light onto the detection plane in order to have an image that is in focus)1, and
a photodetector unit (BS3 and camera) is adapted to receive and combine light from the reference arm (204) and the sample arm (206) (Fig. 2).
Xu does not disclose the focusing optics is a focus tunable optics and a detection fiber located at a detection plane.
However, Murata teaches a similar optical apparatus, comprising an illumination source (90; Fig. 1A; ¶0060), an illumination channel (90 to eye; Fig. 1A) configured to direct illumination light onto a sample (Fig. 1A), a focus tunable optics (23a; Fig. 1A; ¶0041-¶0042) positioned to receive reflecting light from the sample (Fig. 2) and to focus the reflected light onto a detection fiber (15b, 15d; Fig. 1A; ¶0046) located at a detection plane (Fig. 1A).
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 Xu to incorporate the tunable optics and detection fiber as taught by Murata for the purpose of being able to adjust the focus of the light (¶0042 of Murata), thus focusing the light onto the detector and for allowing light to pass through to connect the elements together (¶0035 of Murata).
Regarding claim 2, Xu in view of Murata discloses the optical apparatus according to claim 1, as set forth above. Xu 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 (23a) 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, Xu in view of Murata discloses the optical apparatus according to claim 1 or 2, as set forth above. Xu does not disclose the sample is an eye and wherein the focus tunable optics is capable of ensuring that a retinal plane of an eye is continuously conjugated to or imaged at the detection plane.
However, Murata teaches the sample is an eye (Fig. 1A; ¶0002) and wherein the focus tunable optics is capable of ensuring that a retinal plane of an 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 which comprise 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)2.
Regarding claim 6, Xu in view of Murata discloses the optical apparatus according to claim 1, as set forth above. Murata further teaches the sample arm further comprises a detection fiber (15b, 15d; Fig. 1A; ¶0035) adapted to receive an image of the light at the detection plane (16b) (Fig. 1A) and guide the light from the focus tunable optics (23a) to the photodetector (40; Fig. 1A; ¶0035, ¶0055).
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Xu (US 20210156671 A1) in view of Murata (US 20160317028 A1), and further in view of Kumar (US 20200146545 A1).
Regarding claim 5, Xu in view of Murata discloses the optical apparatus according to any one of claim 1, as set forth above. Xu does not disclose the sample arm further comprises a 2-D scanner placed at the Fourier plane of collimation optics located in front of the detection plane.
Murata further teaches the sample arm further comprises a 2-D scanner (24; Fig. 1A; ¶0043) placed near collimation optics (21; Fig. 1A; ¶0038) located in front of the detection plane (16b) (Fig. 1A). Murata does not explicitly teach the 2-D scanner is placed at the Fourier plane of the collimation optics.
However, Kumar teaches a similar optical apparatus, comprising an illumination source (20; Fig. 7; ¶0085), a first beam splitter (22; Fig. 7; ¶0085) which splits light into a sample arm and a reference arm (Fig. 7; ¶0085), wherein the sample arm further comprises a 2-D scanner (25; Fig. 7; ¶0085) placed at the Fourier plane (¶0085) of collimation optics (24; Fig. 7; ¶0085). 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 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955).
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 Xu in view of Murata to incorporate the 2-D scanner placed at the Fourier plane of collimation optics as taught by Kumar for the purpose of scanning a 2-D lateral view using collimated light (¶0085 of Kumar) and since 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.
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Xu (US 20210156671 A1) in view of Murata (US 20160317028 A1), and further in view of Day (US 20170227469 A1).
Regarding claim 20, Xu in view of Murata discloses the apparatus of claim 1, as set forth above. Neither Xu nor Murata disclose an actuator configured to translate the detection fiber laterally across the focused light.
However, Day teaches a similar optical apparatus (Fig. 3) comprising an illumination source (24; Fig. 3; ¶0033), a focus tunable optics (22; Fig. 3; ¶0033), a sample, (31; Fig. 3; ¶0033), and a detector fiber (42; Fig. 3; ¶0033), and further teaches an actuator (implicit that there is an actuator to move 44; Fig. 3; ¶0037)3 configured to translate the detection fiber (42) laterally across the focused light (¶0037).
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 Xu in view of Murata to incorporate the actuator to translate the detection fiber laterally across the focused light as taught by Day for the purpose of alighting the detection fiber to the focused light spot (¶0037 of Murata).
Claim(s) 21 is rejected under 35 U.S.C. 103 as being unpatentable over Yaqoob et al. (US 20120307035 A1), hereinafter Yaqoob, in view of Murata (US 20160317028 A1).
Regarding independent claim 21, 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 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,
A. the sample arm comprising:
an illumination channel configured to direct the illumination light via the first beam splitter (BS1) onto a sample to form a light spot on the sample (Fig. 1A), wherein the first beam splitter (BS1) transmits light of the light spot reflected from the sample (Fig. 1A), and
a focusing optics (L16, L15; Fig. 1A; ¶0026) positioned (i.) to receive the light of the light spot from the sample after being transmitted through the first beam splitter (BS1) (Fig. 1A) and (ii.) to transmit the light of the light spot through a second beam splitter (BS3; Fig. 1A; ¶0026) to focus the light of the light spot on a detection plane (20; Fig. 1A; ¶0026),
wherein the illumination light in the illumination channel does not pass through the focusing optics (L6, L15) (Fig. 1A),
B. the reference arm comprising:
a beam-expander (any lenses among L7, L8, L9, L10, L11, L12, L13, and L14 can be used to expand the beam; Fig. 1A; ¶0026) and a diffraction grating (50; Fig. 1A; ¶0026),
wherein the second beam splitter (BS3) is arranged to receive the reference light after it has passed through the beam-expander (any lenses among L7, L8, L9, L10, L11, L12, L13, and L14) and the diffraction grating (50) and direct the reference light toward a photodetector unit (20; Fig. 1A; ¶0026),
whereby the photodetector unit (20) is adapted to receive combined light from the reference arm and the light of the light spot from the focusing optics (Fig. 1A).
Yaqoob does not disclose the focusing optics is a focus tunable optics.
However, Murata teaches a similar optical apparatus, comprising an illumination source (90; Fig. 1A; ¶0060), an illumination channel (90 to eye; Fig. 1A) configured to direct illumination light onto a sample (Fig. 1A), a focus tunable optics (23a; Fig. 1A; ¶0041-¶0042) positioned to receive reflecting light from the sample (Fig. 2) and to focus the reflected light onto the detection plane (16b) (Fig. 1A).
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 incorporate the tunable optics and detection fiber as taught by Murata for the purpose of being able to adjust the focus of the light (¶0042 of Murata), thus focusing the light onto the detector.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mazlin et al. (US 20210345873 A1), Frisken et al. (US 20210244278 A1), Pan et al. (US 20210196126 A1), Frisken et al. (US 20190365220 A1), Huang et al. (US 20190254516 A1), and Olivier et al. (US 7791734 B2) disclose similar optical apparatuses using beam splitters. Thienpont et al. (US 20190086325 A1) discloses an optical apparatus wherein a detection fiber is translated laterally for aligning with the illumination spot.
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 July 23rd, 2026
/George G. King/Primary Examiner, Art Unit 2872
1 The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995), see MPEP 2112.
2 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).
3 Additionally, 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).
Prosecution Insights