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 .
Election/Restrictions
Applicant’s election of invention I in the reply filed on 25 August 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 25 August 2025.
Information Disclosure Statement
The information disclosure statements (IDS) are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Some references in the IDS cannot be considered as they are only provided in a non-English language, as noted on the IDSs.
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.
Claim Objections
Claims 1-6 are objected to because of the following informalities: The claims define the device using active verbs (for example, claim 1, “analyzes the relationship curve”). As the claims are directed to a device and not a method, it is suggested the claims be amended to define the device itself, such as “configured to analyze” and similar. Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Force-applying element, first recited in claim 1 (rigid body of metal or polymer, paragraph [0020] as filed)
Displacement-sensing element, first recited in claim 1 (micro-displacement gauge, paragraph [0022] as filed)
Processing element, first recited in claim 1 (central processing unit and memory, paragraph [0025] as filed)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 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 limitation “force-sensing element”, first recited in claim 1, invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure only defines the element in terms of other elements – see paragraph [0021] as filed, “the force-sensing element 20 may be a piezoelectric force-sensing element… or a strain-type force-sensing element”. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moore (US 2004/0267108).
Regarding claim 1, Moore discloses an intraocular pressure detecting device, comprising:
a force-applying element adapted to apply a force to a target surface on a cornea of an eyeball in a direction, so that the target surface is deformed (element 118; paragraph [0030]);
a force-sensing element coupled to the force-applying element and adapted to sense the force applied by the force-applying element in the direction (element 104; paragraphs [0016], [0027]);
a displacement-sensing element coupled to the force-applying element and adapted to sense a displacement of the force-applying element in the direction (element 114; paragraphs [0016], [0029]); and
a processing element (element 110) electrically connected to the force-sensing element and the displacement-sensing element (figure 1) to obtain a relationship curve between the applied force and the displacement, wherein the processing element analyzes the relationship curve between the applied force and the displacement to obtain a characteristic critical point, and obtains an intraocular pressure value of the eyeball according to the applied force corresponding to the characteristic critical point (paragraphs [0016], [0038]-[0040]).
Regarding claim 2, Moore further discloses that the processing element obtains a fitting function of the relationship curve between the applied force and the displacement using a curve fitting operation and calculates the fitting function to obtain an inflection point of the relationship curve between the applied force and the displacement, and the characteristic critical point is the inflection point (paragraph [0038]).
Regarding claim 5, Moore further discloses that the processing element calculates a slope of the relationship curve between the applied force and the displacement, obtains a fitting function of a relationship curve between the slope and the displacement using a curve fitting operation, and calculates an extreme value of the fitting function to obtain the characteristic critical point (paragraph [0038]).
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore in view of Loose (US 4499383).
Moore does not disclose specifics of the fitting operation, particularly the inflection point being a position where a second differential of the fitting function is zero. Loose teaches a curve fitting operation which is configured to identify inflection points when a second differential of the fitted curve is zero (column 7, lines 54-59). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have made the device of Moore and used a curve fitting operation that identifies the inflection points when a second differential is zero, as taught by Loose, in order to “compensate[] for spurious signals” (Loose, column 7, lines 59-60).
Claim(s) 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore in view of Dubois (US 2017/0245751).
Regarding claims 4 and 6, Moore does not disclose specifics of the fitting function, particularly the function being a polynomial function and a power of a highest order term of the function being greater than or equal to three. Dubois teaches evaluation of a pressure-related curve which comprises curve fitting to find an inflection point in the curve, the curve fitting comprising use of a polynomial function having a highest order term greater than or equal to three (paragraph [0114]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have made the device of Moore and used a third order polynomial function for the curve fitting, as taught by Dubois, in order to obtain an accurate fit.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 2002/0010393 to Israel
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/KAREN E TOTH/Examiner, Art Unit 3791