2026DETAILED 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
In response to the Election/Restriction mailed to applicant on 10/10/2025, applicant has made an election without traverse of Invention IV in the reply filed on 11/05/2025.
As a result of applicant’s election, claims 1-3 and 14-20, directed to the Invention IV, are examined in the present office action, and claims 4-13 have been withdrawn from further consideration as being directed to non-elected Inventions.
Applicant should note that the non-elected claims 4-13 will be rejoined if the linking claim 1 is later found as an allowable claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings contain sixteen sheets of figures 1-16 were received on 03/13/2024. These drawings are objected by the examiner for the following reason(s).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the reference character “C1” in fig. 3 which character is not mentioned in the description. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
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 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 limitations are:
a) “a superimposition device” and “an assistive image” as recited in claim 1;
b) “a folded optical system” as recited in claim 2; and
c) “an operation unit” as recited in claim 20.
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
11. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
12. Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 18 recites two ocular lenses attached to the ocular tube, see the claim on line 3, while it base claim 1 recites only one ocular lens attached to the ocular tube, see claim 1 on lines 1-2, Thus, claim 18 fails to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Should “an ocular lens” recited in claim 1 on line 1 be changed to --at least one ocular lens-- to provide support for the feature of “two ocular lenses” recited in claim 18?
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
13. 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.
14. 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.
15. Claims 1 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Soji et al (Japanese reference No. 2004-12622, submitted by applicant).
Soji et al discloses a microscopic system having a microscope with an ocular tube (1) attached to a support (2) and a probe device wherein the image/data of an operation area of a patient is guided to a projection optical system.
a) Regarding present claims 1 and 17, the ocular tube (1) is a single casing supporting two ocular lens systems (11) and a projection optical system having a display (14) wherein the projection optical system is configured to superimpose an assistive image on an image plane on which an optical image is formed with light from the microscope, see attached (machine) English translation in paragraphs [0012]-[0039], in particular, paragraphs [0021]-[0023] and [0034] and figs. 1-2.
b) Regarding present claim 18, the projection optical system is positioned/located at a position offset from a central line between two ocular lens systems, see figs. 1-2.
c) Regarding present claim 19, the microscopic system further comprises a processing device (19) connected to the probe device (3) and the projection optical system wherein connectors for a cable for signal exchange with the projection optical system being provided on a back face of the ocular tube (1), see fig. 2.
16. Claims 1-3 and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyagi (US Patent No. 5,601,549).
Miyagi discloses a microscopic system having a microscope (10) having an ocular tube (11) constituted by two ocular tube portions (11a, 11b) and a base portion (11x), and an endoscope (20) wherein the image/data of from the endoscope is guided to a projection optical system.
a) Regarding present claims 1 and 17, as described in columns 2-4 and shown in figs. 1-2, the ocular tube portion (11a) of the ocular tube (11) is a single casing supporting an ocular lens system (15) and a projection optical system (30-32) having a display (30) wherein the projection optical system is configured to superimpose an assistive image on an image plane on which an optical image is formed with light from the microscope, see columns 2-3 and figs. 1-2.
b) Regarding present claim 2, the projection optical system (30-32) comprises the following features:
b1) a first optical element (30) configured to cause light (X) from the projection optical system (30-32) to join an optical path for the light (A) of the microscope;
b2) a folded optical system (10a, 16a) to fold a travel direction of the light (X) from the projection optical system and the light (A) from the microscope;
b3) an image-forming lens (31) disposed between the first optical element (30) and the folded optical system (10a, 16a); and
b4) the projection optical system (30-32) serves as a projector to project the assistive image provided by the endoscope (20) on the image plane.
c) Regarding present claim 3, the ocular tube portion (11b) of the ocular tube (11) is a single casing supporting an ocular lens system (15), a digital camera (40) and an optical element (16b) which optical element is configured to divide light (A) from the microscope into light to the ocular lens (15) and light (Y) to the digital camera (40) wherein the ocular tube (11) serves as a trinocular device to which the digital camera (40) is to be attached.
d) Regarding present claim 15, the image-forming lens (31) is provided in a casing of the ocular tube (11a) such that the image-forming lens (31) is not exposed outward from the casing.
e) Regarding claim 16, the ocular lens system (15) comprises a concave lens, see the meniscus lens attached to a biconvex lens as shown in fig. 1.
f) Regarding present claim 18, the projection optical system (30-32) is positioned/located at a position offset from a central line between two ocular lens systems, see fig. 1.
g) Regarding present claim 19, the microscopic system further comprises a processing device (25) connected to the endoscope (20) and the projection optical system (30-32) located inside the ocular tube (11a) wherein connectors for a cable for signal exchange with the projection optical system on its back face of the ocular tube (11a), see fig. 1.
Claim Rejections - 35 USC § 103
17. 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.
18. Claims 1-3, 14-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nakata et al (US Publication No. 2021/0215923) in view of Lowe (US Patent No. 10,183,231).
Nakata et al discloses microscopic system having a microscope (1) having an ocular tube (120) supporting an ocular lens, an intermediate tube (130) supporting a projecting system, and an imaging tube (140) supporting an imaging system wherein the intermediate tube and the imaging tube are attached to the ocular tube.
a) Regarding present claims 1 and 17, the ocular tube (120) is a single casing supporting an ocular lens system (104) and the intermediate tube (130) supporting a projection optical system (131-133) having a display (131) wherein the projection optical system is configured to superimpose an assistive image on an image plane on which an optical image is formed with light from the microscope, see [0041]-[0044] and [0065]-[0070] and figs. 1 and 4.
The only feature missing from the microscope provided by Nakata et al is that Nakata et al does not disclose that the projection optical system is formed inside the ocular tube or in other words, there is only one tube for supporting both the ocular lens and the projection optical system.
However, a microscope having only a single tube for supporting an ocular lens and a projection optical system is known to one skill in the art as can be seen in the microscope provided by Lowe. In particular, in columns 4-7 and 14-16 and shown in figs. 1-2 and 9-11, Lowe discloses a microscope (20) having a single tube (30) for supporting both an ocular lens (102) and a projection optical system (60) having a projector (62), a screen (66) acts as a beam splitter for combining light from the projector (60) and light from an object to be viewed by the microscope. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the microscope system having separate ocular tube supporting an ocular lens and intermediate tube supporting a projection optical system into a single tube supporting both an ocular lens and a projection optical system as suggested by Lowe for the purpose of reducing the weight of the microscope and to meet a particular application.
b) Regarding present claim 2, the projection optical system (131-133) comprises the following features:
b1) a first optical element (132) configured to cause light from the projection optical system (131-133) to join an optical path for the light of the microscope;
b2) a folded optical system, see the prism system disposed inside the tube (120) to fold a travel direction of the light from the projection optical system and the light from the microscope;
b3) an image-forming lens, see the lens (103), disposed inside the tube (120) which lens is located between the first optical element (132) and the folded optical system; and
b4) the projection optical system (131-133) serves as a projector to project the assistive image on the image plane.
c) Regarding present claim 3, the folded optical system, i.e., the prism system located in the tube (120) acts as a beam splitter configured to divide light from the microscope into light to the ocular lens (104) and light to the digital camera (141) wherein the ocular tube as resulted of the combined product serves as a trinocular device to which the digital camera (141) is to be attached.
d) Regarding present claim 14, the first optical element (132) serves as a beam splitter that forms transmitted light and reflected light wherein the characteristic of the beam splitter are variable in transmittance and reflectance to meet a particular application, see paragraph [0043].
e) Regarding present claim 15, the image-forming lens (103) is provided in a casing of the ocular tube (120) such that the image-forming lens (103) is not exposed outward from the casing.
f) Regarding present claim 18, the projection optical system (131-133) is positioned/located at a position offset from a central line between two ocular lens systems, see fig. 1.
g) Regarding present claim 19, the microscopic system further comprises a processing device (10) connected to projection optical system (131-133) located inside the single ocular tube as a result of the combined product wherein connectors for a cable for signal exchange with the projection optical system being provided on its back face of the ocular tube, see fig. 1.
h) Regarding present claim 20, it would have been obvious to install/affix/form a control panel on the front side/wall of the single ocular tube for the purpose of creating/providing an easy way for a user to control the operation of the microscope, see examples of a control panel located in a front face/wall of an ocular tube provided by the US Patent No. 4,784,481 and the Chinese reference No. CN 179122 A listed in the form PTO-892 attached with the present office action.
Conclusion
19. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
20. The US Patent No. 5,557,453 is cited as of interest in that it discloses a microscope having an ocular tube supporting an ocular lens and a superimposing device. The US Patent No. 4,784,481 and the Chinese reference No. CN-179122 A are cited as of interest in that each discloses a microscope having an ocular tube wherein a control panel is provided on the front face of the ocular tube.
21. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872