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 .
Response to Amendment
Receipt is acknowledged of the amendment filed 9/24/2025. Claims 1-2, 5, 8-19 are amended and claims 102, 5, 8-19 are currently pending.
Claim Rejections - 35 USC § 112
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 1-2, 5, 8-19 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.
Claims 1 and 18 recite “a camera sensor with a viewing direction oriented on a first axis towards a subject whose eyes are imaged; a first coaxial light source, configured to generate a first light that is aligned coaxially on a second axis that is perpendicular to the first axis; a first beam splitter mirror, disposed between the camera sensor and an eye of the subject along the first axis that is configured to redirect a portion of the first light from the second axis to the first axis; a second coaxial light source, configured to generate a second light that is aligned coaxially on a third axis that is parallel to neither the first axis nor the second axis”. In light of the Specifications, the claimed elements correspond to the disclosed embodiment depicted in Fig. 10C accordingly: a camera sensor (A) is unlabeled but shown on one pathway, a first coaxial light source (B), a first beam splitter mirror (S), a second coaxial light source (D). There appears to be no further matching of disclosed elements that substantially meet the contextual limitations of these claimed elements. Accordingly, the requirement that a “third axis that is parallel to neither the first axis nor the second axis” either incorrectly uses “parallel” when “coaxial” is intended or captures a feature of the disclosed invention that was not evidenced as possessed at the time of the invention. The disclosure details various axes sharing a common pathway to or from the eye and further details orienting light sources at angles with respect to the axis of the eye and/or camera (see lights E, F, G, H of Figs. 1-2). The originally-filed disclosure is silent as to the relative orientation between the light source D and the claimed components corresponding to A, B, S, N, O and P. While the figures are not disclosed as being provided to scale, it appears that the axis of light emitted from source D would be substantially parallel to the axis formed between the camera A and the subject’s eye and further substantially perpendicular to the axis of light emitted from source B toward beam splitter S. Dependent claims 2, 5, 8-17 and 19 are rejected for failing to cure the deficiency of the base claim.
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 1-2, 5, 8-19 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.
Claim 1 recites “a camera sensor with a viewing direction oriented on a first axis towards a subject whose eyes are imaged; a first coaxial light source, configured to generate a first light that is aligned coaxially on a second axis that is perpendicular to the first axis; a first beam splitter mirror, disposed between the camera sensor and an eye of the subject along the first axis that is configured to redirect a portion of the first light from the second axis to the first axis; a second coaxial light source, configured to generate a second light that is aligned coaxially on a third axis that is parallel to neither the first axis nor the second axis; a second beam splitter mirror, disposed between the first beam splitter mirror and the eye of the subject along the first axis, configured to receive the first light on a first side a first mirror, configured to direct the second light to a second side, opposite to the first side, of the second beam splitter mirror, wherein a first portion of the first light that passes through the second beam splitter mirror and a second portion of the second light that reflects from the second beam splitter mirror are directed along the first axis to the eye”. In light of the Specifications, the claimed elements correspond to the disclosed embodiment depicted in Fig. 10C accordingly: a camera sensor (A) is unlabeled but shown on one pathway, a first coaxial light source (B), a first beam splitter mirror (S), a second coaxial light source (D). There appears to be no further matching of disclosed elements that substantially meet the contextual limitations of these claimed elements. The metes and bounds of the term “coaxially” cannot be determined in light of the correspondence to the disclosed embodiments. The Oxford English Dictionary defines “coaxial” to mean “having a common axis” with the implication that two or more elements have a common axis. As claimed, light sources are limited as “coaxial” and having respective axes though there is no clarity as to that which is coaxial with the respective light sources. The claim appears to clearly limit a first light source B as generating light perpendicular to a direction between a camera sensor A and the subject. This claim language is consistent with the disclosed embodiment depicted in Fig. 10C. No other disclosed element shares a common axis defined by light propagating from light source B, though the light reflected from mirror N and propagating to beam splitter O appears substantially the same. For this reason, a person having ordinary skill in the art would not understand how “coaxial” defines the metes and bounds of the claimed language including “a first coaxial light source”. Analogously, the “second coaxial light source” does not share a common axis with any other element. In light of the Specifications, it appears that there are three possible interpretations of “coaxial” with some consistency though no interpretation clearly defines the metes and bounds of the claimed invention. Firstly, as discussed above, “coaxial” would be understood to require a geometrical relationship between elements or the light emitted, reflected, transmitted, or otherwise influenced by elements. Secondly, “coaxial” may be intended to define a relationship between an element or light relative to an axis defined by the element or light. This is a circular definition and essentially limits elements or light as being coaxial with itself. For example, if a “second axis” is defined by the direction of light propagating from light source B, a person having ordinary skill in the art would not understand the light (or light source) to be “coaxial” with the “second axis” because the second axis is an abstraction itself defined by the light (or light source). Thirdly, “coaxial” may be intended to define a relationship between an element or light such that it functions/operates to provide light with a shared common axis with the subject’s eye. This appears to be the most likely intention of the term “coaxial” in the claims, but suffers from defining the apparatus according to an unknown and uncontrolled variable – namely the direction of the subject’s eye. Under this interpretation, it appears that infringement becomes muddled for operations in which the subject’s eye is rotated relative to some default position. A person having ordinary skill in the art would not understand the meaning of “coaxial” in defining the metes and bounds of the claimed invention.
Independent claim 18 is rejected for reciting substantially the same language as identified above.
Dependent claims 2, 5, 8-17 and 19 are rejected for failing to cure the deficiency of the base claim.
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 1-2, 5, 8, 11, 12, 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 7,677,728 to Hirohara et al. (hereinafter Hirohara) in view of US Pat. 9357920 to Yates, et al. (hereinafter Yates).
Regarding claims 1 and 18, Hirohara discloses an optical imaging apparatus (“an optical system of an ophthalmologic measuring apparatus”, Fig. 1) comprising: a plurality of eye imaging systems (Figs. 19-20; col. 21, ll. 5-20), each eye imaging system comprising: a camera sensor with a viewing direction oriented on a first axis (left to right, Fig. 1) towards a subject whose eyes are imaged (third light receiving part 41, Fig. 1); a first coaxial light source (“second adjustment optical part 70 is for performing, for example, an alignment adjustment in an XY direction, and includes an optical source part for alignment, a lens, and a beam splitter”), configured to generate a first light that is aligned coaxially on a second axis (up and down, Fig. 1) that is perpendicular to the first axis; a first beam splitter mirror (“second adjustment optical part 70 is for performing, for example, an alignment adjustment in an XY direction, and includes an optical source part for alignment, a lens, and a beam splitter”), disposed between the camera sensor and an eye of the subject (eye 100, Fig. 1) along the first axis that is configured to redirect a portion of the first light from the second axis to the first axis; a second coaxial light source (first light source part 11, Fig. 1), configured to generate a second light that is aligned coaxially on a third axis that is parallel to neither the first axis nor the second axis (first light source part 11 is aligned on an arbitrary third axis that distinct from claimed first and second axes, Fig. 1); a second beam splitter mirror (beam splitter 61, Fig. 1), disposed between the first beam splitter mirror and the eye of the subject along the first axis (Fig. 1), configured to receive the first light on a first side (upper right side of beam splitter 61, Fig. 1); a first mirror (beam splitter 63, Fig. 1), configured to direct the second light to a second side (lower left side of beam splitter 61, Fig. 1), opposite to the first side, of the second beam splitter mirror, wherein a first portion of the first light that passes through the second beam splitter mirror and a second portion of the second light that reflects from the second beam splitter mirror are directed along the first axis to the eye (Fig. 1) and a plurality of supplementary light sources configured to light an eye from different angles (an anterior eye part illuminating part 30, Fig. 1; col. 5, ll. 44-64).
Note: This rejection is based on taking “coaxial” and “alight coaxially” to not limit the structure of the optical imaging system.
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Hirohara discloses the claimed invention as cited above though does not explicitly disclose: a plate disposed on the first side of the second beam splitter mirror, configured to absorb a third portion of the first light that reflects from the second beam splitter mirror and a fourth portion of the second light that passes through the second beam splitter mirror.
Yates discloses a plate (light trap 6, Fig. 2A)disposed on the first side of the second beam splitter mirror (splitter 7, Fig. 2A), configured to absorb a third portion of the first light that reflects from the second beam splitter mirror and a fourth portion of the second light that passes through the second beam splitter mirror (Fig. 2A).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to provide an absorbing plate as taught by Yates with the system as disclosed by Hirohara. The motivation would have been to “[eliminate] the inherent back reflections caused by using a beam splitter 7 on the final image of the retina, and thus improves image quality drastically” (col. 16, ll. 49-51).
Regarding claims 2 and 19, Hirohara discloses the first coaxial light source includes a provides a fixation target for the subject during imaging (unlabeled light source part of index optical part 90, col. 6, ll. 33-56). Light path from index optical part 90 crosses other optical axes in Fig. 1.
Regarding claim 5, Hirohara discloses the second coaxial light source illuminates the eye during imaging (first light source part 11, Fig. 1).
Regarding claim 8, Hirohara discloses the plurality of supplementary light sources includes at least two of: (i) temporal lights angled distally away from a centerline of the eye, (ii) nasal lights angled proximally away from a centerline of the eye, (iii) top lights angled above the eye, and (iv) bottom lights angled below the eye (an anterior eye part illuminating part 30, Fig. 1; col. 5, ll. 44-64).
Regarding claim 11, Hirohara discloses the second coaxial light source and the plurality of supplementary light sources can illuminate on a continuous basis and a strobe basis (first light source part 11, Fig. 1-2; col. 20, ll. 30-39). Note: The claim recites optional further limitations.
Regarding claim 12, Hirohara discloses the optical imaging apparatus can adjust and measure an angle of the supplementary light sources (an anterior eye part illuminating part 30, Fig. 1; col. 5, ll. 44-64). Note: The claim recites optional further limitations. Further, this claim recites a functional limitation (i.e. adjustment of light sources) indirectly limiting the structure of the apparatus. In this instance, the light sources are only required to be capable of adjustment prior to construction for example.
Regarding claim 17, Hirohara discloses the optical imaging apparatus is configured to vertically adjust a position of the eye imaging systems and to horizontally adjust a position of the eye imaging systems (Fig. 1). The functional language does not require a specific structure, but rather a capability of being adjusted.
Claims 9-10 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Hirohara in view of Yates, as applied to Claim 1, and further in view of US PG Pub. 2021/0212601 to Neal et al. (hereinafter Neal).
Regarding claim 9, Hirohara discloses the claimed invention as cited above though does not explicitly disclose: the optical imaging apparatus is configured to take a plurality of images using at least a subset of the plurality of supplementary light sources, wherein at least a subset of the plurality of images are captured by illuminating a single supplementary light source from among the subset of the plurality of supplementary light sources.
Neal discloses the optical imaging apparatus is configured to take a plurality of images using at least a subset of the plurality of supplementary light sources, wherein at least a subset of the plurality of images are captured by illuminating a single supplementary light source from among the subset of the plurality of supplementary light sources (Figs. 34-36; [0130]-[0134].
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to use subsets of light sources as taught by Neal with the system as disclosed by Hirohara. The motivation would have been to improve eye-tracking during movement ([0018]-[0019],[0050]-[0051]).
Regarding claim 10, Hirohara discloses the claimed invention as cited above though does not explicitly disclose the optical imaging apparatus can adjust and measure a light intensity of the second coaxial light source and the plurality of supplementary light sources.
Neal discloses the optical imaging apparatus can adjust and measure a light intensity of a second coaxial light source and the plurality of supplementary light sources ([0118]).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to vary light source intensity as taught by Neal with the system as disclosed by Hirohara. The motivation would have been to distinguish between measurement probes ([0118]).
Regarding claims 14 and 16, Hirohara discloses the claimed invention as cited above though does not explicitly disclose the first coaxial light source and the plurality of supplementary light sources are configured to emit light in at least a portion of the visual electromagnetic spectrum.
Neal discloses the first coaxial light source and the plurality of supplementary light sources are configured to emit light in at least a portion of the visual electromagnetic spectrum (LED lights 12, 12′ can be visible or infrared (IR) LEDs (preferably IR LEDs), Fig. 24) and the camera sensor is configured to detect light in at least the portion of the visual electromagnetic spectrum emitted by the at least one coaxial light source and the plurality of supplementary light sources (CCD camera 24, [0106]-[0109]).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to provide visible light sources and detectors as taught by Neal with the system as disclosed by Hirohara. The motivation would have been to improve eye-tracking during movement ([0018]-[0019],[0050]-[0051]).
Regarding claim 15, Hirohara discloses wherein the second coaxial light source and the plurality of supplementary light sources are configured to emit light at least partially in the near infrared light spectrum (“a wavelength of the first light source part 11 for illumination, for example, a wavelength (for example, 780 nm or 860 nm) of an infrared range can be used”; col. 4, ll. 40-42).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hirohara in view of Yates, as applied to Claim 1, and further in view of JP 3610133 to Satoshi et al. (hereinafter Satoshi).
Regarding claim 13, Hirohara discloses the claimed invention as cited above though does not explicitly disclose a chin rest and forehead restraint, and wherein the optical imaging apparatus can adjust and measure at least one of (i) a distance between the plurality of eye imaging systems and the chin rest and forehead restraint and (ii) a distance between the first coaxial light source for at least one eye imagining system of the plurality of eye imagining systems and the chin rest and forehead restraint.
Satoshi discloses a chin rest (chin rest 32, Fig. 3) and forehead restraint (forehead support plate 31, Fig. 3), and wherein the optical imaging apparatus can adjust (via screws 47 and 51, Fig. 3) and measure (via distance sensor 51 and 59, Fig. 3) at least one of (i) a distance between the plurality of eye imaging systems and the chin rest and forehead restraint (“the distance sensor 51 detects the protruding piece 46 a at the end of the column 46 to detect the position of the forehead plate 31” and “a distance sensor 59 for detecting the protruding piece 53a at the end of the column 53 and detecting the position of the chin rest 32 is disposed”; [0044]).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to provide user support structures as taught by Satoshi with the system as disclosed by Hirohara. The motivation would have been to assist in eye alignment ([0044]-[0045]).
Response to Arguments
Applicant's arguments filed 9/24/2025 have been fully considered but they are not persuasive.
On page 11 of the Remarks, Applicant argues that Hirohara does not disclose the claimed third axis of the second coaxial light source. Examiner respectfully disagrees and the teachings are cited in the rejection above and illustrated in an annotated version of Hirohara’s Fig. 1.
Applicant’s arguments with respect to some claim language have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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 CHRISTOPHER J STANFORD whose telephone number is (571)270-3337. The examiner can normally be reached 8AM-4PM PST M-F.
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/CHRISTOPHER STANFORD/Primary Examiner, Art Unit 2872