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
The present office action is made in response to the amendment filed by applicant on 03/09/2026. It is noted that in the amendment, applicant has made changes to the claims. There was not any change being made to the abstract, the drawings and the specification.
Regarding the claims, applicant has amended claims 1-13 and 15.
Response to Arguments
The amendments to the claims as provided in the amendment of 03/09/2026, and applicant's arguments provided in the mentioned amendment, pages 9-12, have been fully considered and resulted the following conclusions.
A) Regarding the claims, because applicant has not added/canceled any claim into/from the application, thus the pending claims are still claims 1-15 in which claims 1-4, 7-9 and 15 are examined in the present office action, and claims 5-6 and 10-14 have been withdrawn from further consideration as being directed to non-elected Inventions and/or non-elected Species.
Applicant should note that the non-elected claims 5-6 and 10-14 will be rejoined if the linking/generic claim 1 is later found as an allowable claim.
B) Regarding the Claim Interpretation set forth in the office action of 02/24/2026, the amendments to the claims as provided in the amendment of 03/09/2026 and applicant’s arguments provided in the mentioned amendment, page 9, have been fully considered and resulted the following conclusions:
B1) the amendments to the claims are sufficient overcome the Claim Interpretation to the claims for the reasons named as 9a) and 9d) set forth in the mentioned office action;
B2) The Claim Interpretation of the generic placeholder “an imaging device” set forth in the office action, element numbered as 9b) for claim 7 and the generic placeholder “a light path switching mechanism” set forth in the office action, element numbered as 9c) are repeated because applicant has not amended the claim or provided any argument to overcome the Claim Interpretation of the mentioned generic placeholder in the claim; and
B3) the amendments to the claims raise new Claim Interpretation to generic placeholder thereof “a superimposing device” which is newly-added to each of claims 1 and 15 as provided in the present office action.
C) Regarding the rejections of claims 7-9 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and the rejections of claims 1-4 and 7-9 7-9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the office action of 02/24/2026, the amendments to the claims as provided in the amendment of 03/09/2026 and applicant’s arguments provided in the mentioned amendment, page 9, have been fully considered and are sufficient overcome the rejections of claims 7-9 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and the rejections of claims 1-4 and 7-9 7-9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the mentioned office action.
However, the amendments to the claims raise new rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, to claims 7-9 as set forth in the present office action.
D) Regarding the rejection of claims 1-3 and 15 under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (US Patent No. 7,050,225) as set forth in the office action of 02/24/2026, the amendments to the claims as provided in the amendment of 03/09/2026 and applicant’s arguments provided in the mentioned amendment, pages 10-12, have been fully considered but are not persuasive. Thus, the claims 1-3 and 15 are rejected by the same applied art as set forth in the present office action. It is noted that the rejection of those claims is modified to response to the amendments to the claims as provided in the amendment of 03/09/2026.
Regarding applicant’s arguments as provided in the amendment, pages 11-12, have been fully considered but they are not persuasive.
Applicant is respectfully invited to review the claims with claimed language as provided. The elements and their arrangements recited with the claimed language as provided are examined and those are compared with the applied art.
Applicant argued that “the element in Fig. 5 … (nd not the beam splitter/split mirror 14 identified by the examiner”, amendment in page 11. The examiner respectful disagree. The addition optical element recited in claim 1 on lines 26-28 is read from the additional optical element (12a, 10a, 14a)) which comprises a projection lens (12a) that transmits/passes a light flux from a superimposing device, i.e., the LCD (11a), for forming an image that is different from the secondary image (61) on the object plane of the eyepiece. Applicant should note that the claimed language as recited in present claim just recites that the additional optical system having a projection lens for passing light from a superimposing device, see claim 1 on lines 26-28. In the aet of Nakamura, the elements (12a, 10a, 14a) are not the elements constituted the first , second and third optical systems in the rejection of the claim as provided in the present office action.
Regarding applicant’s argument regarding the fourth optical element, see amendment in page 11, the last full paragraph, the examiner respectfully disagree and respectfully invited to review the art of Nakamura. The optical element (60) disposed on the second horizontal plane is used for guiding a light path of the light flux from the additional optical system (12a, 10a, 14a) and a light path of the light flux from the imaging lens (49) to the object plane of the eyepiece. Because the light paths/fluxes as understood are coincide to each other due to the arrangement of the optical elements along the same light path from the imaging lens (49) thus the optical element combines those light paths/fluxes. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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 superimposing device” as recited in each of claims 1 and 15;
b) “an imaging device” as recited in claim 7; and
c) “a light path switching mechanism” as recited in claim 9.
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
8. 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.
9. Claims 7-9 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.
a) Claim 7 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, because the feature thereof “the imaging device” (lines 6-7) lacks a proper antecedent basis. Further, it is unclear about the structural relationship between “an image sensor” recited in the claims on lines 2-3 and “the imaging device” as recited in the claim on lines 6-7.
b) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiency thereof.
Claim Rejections - 35 USC § 102
10. 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.
11. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
12. Claims 1-3 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura (US Patent No. 7,050,225, of record).
Nakamura discloses a lens-barrel device attached to a microscope body of a microscope.
a) Regarding present claims 1 and 15, the microscope having a lens-barrel device attached to a microscope body as described in columns 7-9 and shown in figs. 4-5 comprises a microscope body (40), an objective (3), an eyepiece (62), an imaging device (17), and a lens-barrel device (47, 57, 43, 44).
Regarding the structure of the lens-barrel device, the lens-barrel device as described in the mentioned columns and figures comprises the following features:
a1) an eyepiece sleeve (44) for supporting the eyepiece (62). It would have been obvious to one skill in the art to arrange the eyepiece (62) inside the eyepiece sleeve (44) in a detachably manner for the purpose of replacement it with other eyepiece of different features to meet a particular application or to replace the eyepiece in use due to a damage;
a2) an imaging lens (49) that a light flux from the microscope body (40) is made incident in a state in which the lens barrel device is attached to the microscope body, see fig. 4, for example;
a3) a relay optical system comprising lenses (56, 55) that relays a primary image (54) to an object plane of the eyepiece and forms a secondary image (61) on the object plane wherein the primary image (54) is formed by the imaging lens (49);
a4) a first reflection optical system (50) comprises a first optical element (50a) that reflects and bends a light flux from the imaging lens (49) in a first horizontal direction;
a5) a second optical system (52) comprises a second optical element, i.e., the inclined mirrored surface on the lower part of the second optical element (52a) which receives light flux from the element (50a) and which is disposed on a first horizonal plane where the first optical reflection system (50) is disposed, wherein the second reflection optical system (52) reflects and bends the light flux passed through the first reflection optical system (50) in a vertical upward direction;
a6) a third optical system (59) comprises a third optical element (59a) that is disposed on a second horizontal plane that is different from the first horizontal plane wherein the third optical system (59) reflects and bends the light flux passed through the second reflection optical system (52) in a second horizontal direction;
a7) an additional optical system (12a, 10a, 14a)) comprises a projection lens (12a) that transmits/passes a light flux from a superimposing device, i.e., the LCD (11a), for forming an image that is different from the secondary image (61) on the object plane of the eyepiece; and
a8) an optical element (60) disposed on the second horizontal plane for guiding a light path of the light flux from the additional optical system (12a, 10a, 14a) and a light path of the light flux from the imaging lens (49) to the object plane of the eyepiece.
b) Regarding present claim 2, there is a pair of reflection surfaces (59, 60) disposed on the second horizontal plane that reflect the light flux that travel in a horizontal direction wherein the pair of refection surfaces (59, 60) make a direction of an emitted light flux different from a direction of an incident light flux by 90 degrees in a horizonal plane.
c) Regarding present claim 3, the pair of refection surfaces (59, 60) is disposed in a second horizonal plane and one of the pair of reflection surfaces (59, 60) is the optical element (60).
Allowable Subject Matter
13. Claims 4 and 7-9 are objected to as being dependent upon a rejected base claim, but would be allowable if each of claims 4 and 7 is rewritten in independent form including all of the limitations of the base claim and any intervening claims. It is noted that the rewritten/amended claim 7 and its dependent claim 9 needs to comply with the requirement of rule 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See the rejection of claims 7-9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the present office action.
14. The following is a statement of reasons for the indication of allowable subject matter:
a) The lens-barrel device attached to a microscope body as recited in the dependent claim 4 is allowable with respect to the prior art, in particular, the US Patent No 7,050,225 and the EP 4 009 095 by the limitations regarding the arrangement of the pair of reflections surfaces and at least one of the second and third reflection optical systems as recited in the features thereof “one of the pair of reflection surfaces … the eyepiece” (claim 4 on lines 2-6), Such arrangements of the pair of reflections surfaces and at least one of the second and third reflection optical systems as recited in the claim 4 on lines 2-6 in a lens-barrel device having an eyepiece sleeve supporting an eyepiece, an imaging lens, a relay optical system, three reflection optical systems, an additional optical system and an optical element with features thereof “an eyepiece sleeve … the eyepiece” recited in its base claim 1 on lines 3-31 is not disclosed in the prior art.
b) The lens-barrel device attached to a microscope body as recited in the dependent claim 7 is allowable with respect to the prior art, in particular, the US Patent No 7,050,225 and the EP 4 009 095 by the limitations regarding the structure of the lens-barrel device with respect to an eyepiece sleeve supporting an eyepiece and an image sensor and the structure of first optical element as recited in the features thereof “the lens-barrel device … the imaging device” (lines 2-7). Such structures as claimed in the claim 7 on lines 2-7 in a lens-barrel device having an eyepiece sleeve supporting an eyepiece, an imaging lens, a relay optical system, three reflection optical systems, an additional optical system and an optical element with features thereof “an eyepiece sleeve … the eyepiece” recited in its base claim 1 on lines 3-31 is not disclosed in the prior art.
Conclusion
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The EP reference No. 3 961 285 is cited as of interest in that it discloses a microscope having a plurality of reflecting systems arranged in two different horizontal plane wherein at least one relf4ection system is sued for reflecting and bending a light flux in a vertical direction. However, the microscope of the mentioned EP does not discloses all features as recited in present claims 1 and 15.
16. 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.
17. 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
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