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 Arguments
Applicant's arguments filed 26 January 2026 have been fully considered but they are not persuasive. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Please see response to arguments below in the present Office action.
In response to the applicant's argument that ‘Kamikawa fails to disclose the claimed feature of "designating a position of the subject eye in the face image displayed,"’ the Examiner traverses. Kamikawa explicitly discloses “the device control unit 70 may move the eye examination unit 2 toward the predicted position of the left eye based on information regarding the measurement position of the right eye, or may move the eye examination unit 2 based on position information of the left eye acquired by the face photographing unit 3” ([0058]). Thus, Kamikawa explicitly discloses a designated measurement position or position information of an eye in an image acquired by a face photographing unit. Kamikawa further discloses “the observed image Ia of the subject displayed on the display unit 7” ([0057]). See §§ 102 and 103 rejections below in present Office action for further detail.
In response to the applicant's argument that "Accordingly, Kamikawa does not disclose a configuration in which the positions of both eyes are collectively acquired at the stage of examining one eye. Nor does Kamikawa disclose prioritized control that immediately moves to designated coordinates on the face image (the second acquisition step in the present invention as claimed) without waiting for the result of automatic detection (the first acquisition step in the present invention as claimed)," the Examiner traverses. Examiner notes that the features upon which applicant relies (i.e., "prioritized control that immediately moves to designated coordinates on the face image" and "without waiting for the result of automatic detection") are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, Kamikawa discloses when the positions of the left eye and the right eye are collectively acquired (perform measurements for each eye; [0026], measurement position for the right eye to the measurement position for the left eye; [0058]) in the position acquisition (control means controls the communication means to receive position information of the subject's eye; [0008]), the apparatus (ophthalmic apparatus 1; [0010]) is configured to allow input operation (receives function switching input by pressing function button 83; [0050]) for each eye to be requested (examiner may switch between left and right eyes to be measured by operating controller 80; [0058]). See §§ 102 and 103 rejections below in present Office action for further detail.
In response to the applicant's argument that "The purposes of the manual alignment (interrupt) in Kamikawa and the manual alignment (backup upon failure of automatic alignment) in Kitamura are entirely different from each other…claim 1 and claims dependent therefrom are patentable and, therefore, kindly requests the Examiner to reconsider the rejections," the Examiner traverses. Applicant’s arguments with respect to Claim(s) 7 have been considered but are moot because the new ground of rejection does not rely on the same reference(s) applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See new ground(s) of § 103 rejection(s), necessitated by amendment, below in the present Office action.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which they think the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Drawings
The applicant’s drawings submitted are acceptable for examination purposes.
Claim Objections
Claims 1, and 5-9 are objected to because of the following informalities:
With respect to Claims 1, and 5-9, the broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met i.e., contingent limitations, requires structure for performing the function should the condition occur. See MPEP § 2111.04 (II). In the current instance, “a controller configured to perform comprising programming that when executed carries out an adjustment process” in Claim 1, and “when the positions of the left eye and the right eye are collectively acquired in the position acquisition, the apparatus is configured to allow input operation for each eye to be requested” in Claim 9, imply hypothetical or conditional scenarios without clarifying the structure or whether the claimed limitations are a necessary or optional aspect of the product(s). This is not an exhaustive list, for the claims are replete with contingent limitations without reciting sufficient structure. This creates uncertainty about whether the claimed elements and limitations are required or merely illustrative. Thus, these limitations do not establish the relationship between the conditions and the claimed invention.
With respect to Claims 1, and 5-9, Claims 1 and 9 recites the limitation "the apparatus." Claim 9 recites the limitation "the first acquisition unit" in lines 18-19. There is insufficient antecedent basis for these limitations in the claim. This is not an exhaustive list, for the claims are replete with claim limitations lacking antecedent basis.
With respect to Claim 5 and 9, Several of the claim amendments utilize strike-through instead of double brackets for showing deletion of five or fewer consecutive characters. For example, lines 3-4 of Claim 5 recites “using the designated position,” and line 5 of Claim 9 recites “
(2) When claim text with markings is required… The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived…
Proper correction is required to ensure accuracy and consistency in the claims, for the language is so awkward that it renders the claims nearly incomprehensible. The primary purpose of the requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter. See MPEP § 2173.
Appropriate correction is required.
Claim Rejections - 35 USC §§ 112(f) and 112(b)
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.
Claim limitation(s) “a controller comprising programming that when executed carries out an adjustment process including: a position acquisition of acquiring a position of the subject eye… wherein: when a left eye and a right eye are consecutively examined, the controller programming when executed carries out collective acquisition of respective positions of the left eye and the right eye in the position acquisition of the adjustment process performed for one subject eye to be examined first out of the left eye and the right eye, and when the positions of the left eye and the right eye are collectively acquired in the position acquisition, the apparatus is configured to allow input operation for each eye to be requested” in Claim 1 and “a control step of performing an adjustment process including: a position acquisition of acquiring a position of the subject eye, in which the position is the detected position when the first acquisition unit detects the detected position, and the position is the designated position, regardless of whether the detected position is detected, when the designated position is detected in the second acquisition step after the detection in the first acquisition step starts” in Claim 9, have been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. This list is not exhaustive, for several claim limitations are replete with generic placeholders not preceded by a structural modifier, wherein the generic placeholders are coupled with functional language. Thus, it is unclear whether these limitation(s) should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because: the term “step” is modified by a word, which is ambiguous regarding whether it conveys an act or a function; a claim limitation uses the word “step” coupled with functional language, but it is modified by some act that is ambiguous regarding whether that act is sufficient for performing the claimed function; the generic placeholder(s) are modified by a word, which is ambiguous regarding whether they convey structure or function; and the claim limitation(s) uses generic placeholder(s) coupled with functional language, but they are modified by some structure or material that is ambiguous regarding whether that structure or material is sufficient for performing the claimed function. In other words, the claims recite limitations that use generic placeholders (i.e., programming) and define them only by what they do without specifying any concrete architecture or algorithm, recite results or intended functions rather than identifiable structure or defined elements performing said functions, ties capability to user-driven interaction without structural detail as to how the apparatus(es) implements this, and introduces method steps and temporal conditions into apparatus claims without reciting corresponding acts or structural components that perform them. Thus, it is unclear whether the claims recite sufficient structure, materials, or acts for these limitations. The boundaries of these claim limitation(s) are ambiguous; therefore, Claims 1, and 5-9 are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim Rejections - 35 USC § 112(b)
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, and 5-9 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.
With respect to Claims 1, and 5-9, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). In Katz, a claim directed to "[a] system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data" was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited "an input means" and required a user to use the input means was found to be indefinite because it was unclear "whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means."); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990).
In the instant case, “a second acquisition unit configured to receive an input operation for designating a position of the subject eye in the face image displayed on the display unit, and acquire the position of the subject eye identified based on a designated position from an input operation” in Claim 1 and “the apparatus is configured to allow input operation for each eye to be requested” in Claim 9 are indefinite for reciting both an apparatus and the method steps of using the apparatus. This list is not exhaustive, for several claim limitations are replete with errors. The Claim 1 limitation recites user actions (designating, inputting, identifying, etc.) rather than definite structure or functionality of the second acquisition unit. It is unclear whether the claim covers the apparatus itself or requires performance of the user’s method steps. Similarly, the Claim 9 limitation merely depends on external user interaction (e.g., requesting input), not a clearly defined structural capability. This also introduces ambiguity as to whether infringement requires actual user operation or merely a device capable of such generic interaction. The claim boundaries hinge on how the apparatus(es) is used rather than what it structurally is, and thus, a person having ordinary skill in the art would not be able to reasonably ascertain the scope of the claims.
Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942); see MPEP § 2173.05(g). In re Donaldson, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994) (see MPEP § 2181- MPEP § 2186) see also MPEP § 2111.01. Furthermore, “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
For the prosecution on merits, examiner assumes the claimed subject matter described above as introducing optional elements, optional structural limitations, optional conditional expressions, and optional functionality of an ophthalmic system.
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed.
If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5-6, and 8-9 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kamikawa et al. WO 2017171058 A1 (see machine translation; herein after "Kamikawa").
With respect to Claim 1, Kamikawa discloses an ophthalmic apparatus (ophthalmic apparatus 1; [0010]) comprising:
an examination unit (examination unit 2; [0027]) configured to examine a subject eye ([0027]);
a drive unit (driving unit 4; [0027]) configured to three-dimensionally move the examination unit (examination unit 2; [0027]) relative to the subject eye ([0027]);
a first imaging unit (face photographing unit 3; [0028]) configured to capture a face image ([0031]; fig. 3) including left and right subject eyes ([0028]);
a second imaging unit (anterior eye photographing optical system 60; [0041]) configured to capture an anterior segment image of the subject eye ([0041]);
a display unit (display unit 7; [0028]) configured to display the face image (displays observed image of subject's eye and measurement results; [0028]) captured by the first imaging unit (face photographing unit 3; [0028]);
a first acquisition unit (device control unit 70; [0061]) configured to detect a position of the subject eye by analyzing the face image (obtained by the face photographing unit 3; [0061]), and acquire the position of the subject eye ([0061]) identified through the detection as a detected position (detected position of alignment bright spot; [0061]);
a second acquisition unit (control unit 87; [0050]) configured to receive an input operation (receives function switching input by pressing function button 83; [0050]) for designating a position of the subject eye (test eye at the position where device control unit 70 receives a measurement start signal from the controller 80; [0060]) in the face image (through first input unit and information acquired by device control unit 70; [0060]) displayed on the display unit (display unit 7; [0028]; fig. 2 & 3), and acquire the position of the subject eye (through automatic alignment; [0060-61]) identified based on a designated position from an input operation (control unit 87 transmits measurement start signal; [0050] & [0060-61]), in which the face image (obtained by the face photographing unit 3; [0061]) is displayed on the display unit (display unit 7; [0028]; fig. 2 & 3) before the first acquisition unit (device control unit 70; [0061]) completes the detection (at this time, device control unit 70 measures test eye at position where it receives a measurement start signal from controller 80, OR moves eye examination unit 2 so that position of bright spot is within a predetermined range and then automatically start measuring test eye E; [0060-61], i.e., moves eye examination unit 2 toward predicted position of left eye based on information regarding measurement position of right eye, OR moves eye examination unit 2 based on position information of left eye acquired by face photographing unit 3; [0058]); and
a controller (controller 80; [0010]) comprising programming that when executed carries out (various operation instructions in control program i.e., operation unit 8 via controller 80; [0010], [0028-30]) an adjustment process (alignment mode and transmission of alignment information; [0020-24]) including:
a position acquisition of acquiring a position of the subject eye (control means controls the communication means to receive position information of the subject's eye; [0008]), in which the position is the detected position (detected position of alignment bright spot; [0061]) when the first acquisition unit (device control unit 70; [0061]) detects the detected position (device control unit 70 detects eye to be examined; [0061]), and the position is the designated position (function switching input by pressing function button 83; [0050] & control unit 87 transmits measurement start signal; [0060-61]), regardless of whether the detected position is detected (detected position of alignment bright spot; [0061]), when the second acquisition unit (control unit 87; [0050]) detects the designated position (when alignment is complete, stick 81 is pressed, when control unit 87 detects stick 81 being pressed, it transmits measurement start signal; [0057], alignment mode and transmission of alignment information; [0020-24]) after the first acquisition unit (device control unit 70; [0061]) starts the detection (device control unit 70 detects alignment bright spot and performs fine alignment based on its position; [0060-61]);
a first drive control (first input unit 81; [0055]) of controlling the drive unit (upon receiving signal from controller 80 through stick 81, device control unit 70 drives driving unit 4; [0057-58]), such that the subject eye is positioned (through tilt direction, tilt angle, etc. of stick 81; [0055]) within an imaging range (movable range; [0056]) of the second imaging unit (anterior eye photographing optical system 60; [0041]; fig. 1 & 2), based on the acquired position of the subject eye (based on position information of the eyes; [0058]); and
a second drive control (second input unit 82; [0055]) of controlling the drive unit (upon receiving signal from controller 80 through buttons 82 & 83, device control unit 70 drives driving unit 4; [0058]) based on the anterior segment image ([0041]; fig. 1 & 2) after the first drive control (based on information regarding the measurement position of the eyes; [0058]), to adjust a relative position of the examination unit (examination unit 2; [0027]) with respect to the subject eye ([0058]);
wherein:
when a left eye and a right eye are consecutively examined (switch the eye to be measured using the controller 80; [0053]), the controller (controller 80; [0010]) programming when executed carries out (various operation instructions in control program i.e., operation unit 8 via controller 80; [0010], [0028-30]) collective acquisition of respective positions of the left eye and the right eye (upon receiving signal from controller 80, device control unit 70 moves eye examination unit 2 toward predicted position of left eye based on information regarding measurement position of right eye, OR moves eye examination unit 2 based on position information of left eye acquired by face photographing unit 3; [0054-61]) in the position acquisition (control means controls the communication means to receive position information of the subject's eye; [0008]) of the adjustment process (alignment mode and transmission of alignment information; [0020-24]) performed for one subject eye to be examined first out of the left eye and the right eye (after completing the measurement of one eye, alignment is performed for the other eye, switching between the left and right eyes to be measured by operating the controller 80; [0058]), and
when the positions of the left eye and the right eye are collectively acquired (perform measurements for each eye; [0026], measurement position for the right eye to the measurement position for the left eye; [0058]) in the position acquisition (control means controls the communication means to receive position information of the subject's eye; [0008]), the apparatus (ophthalmic apparatus 1; [0010]) is configured to allow input operation (receives function switching input by pressing function button 83; [0050]) for each eye to be requested (examiner may switch between left and right eyes to be measured by operating controller 80; [0058]).
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). See also MPEP § 2112.02.
With respect to Claim 5, Kamikawa discloses the ophthalmic apparatus (ophthalmic apparatus 1; [0010]) of claim 1,
wherein the controller (controller 80; [0010]) programming when executed carries out (various operation instructions in control program i.e., operation unit 8 via controller 80; [0010], [0028-30]) the first drive control (first input unit 81; [0055]) using the designated position corresponding to the one subject eye (test eye at the position where device control unit 70 receives a measurement start signal from the controller 80 & control unit 87 transmits measurement start signal; [0050] & [0060-61]) in accordance with a predetermined procedure (device control unit 70 receives measurement start signal from controller 80 & may move examination unit 2 so that position of bright spot is within a predetermined range; [0060]), and performs the first drive control (first input unit 81; [0055]) using the designated position ([0050] & [0060-61]) corresponding to the other eye after an examination of the one subject eye is completed (after switching of the eye to be measured is completed, controller is operated to align the examination/optometry unit 2 with the other eye; [0059]).
With respect to Claim 6, Kamikawa discloses the ophthalmic apparatus (ophthalmic apparatus 1; [0010]) according to claim 1,
wherein the second acquisition unit (control unit 87; [0050]) is configured to detect a position of the subject eye (test eye at the position where device control unit 70 receives a measurement start signal from the controller 80; [0060]) based on an analysis of a part of the face image (through first input unit and information acquired by device control unit 70; [0060]) using coordinates designated through the input operation ([0050]) in the face image as a reference (obtained by the face photographing unit 3; [0061]), and is further configured to acquire the position of the subject eye (through automatic alignment; [0060-61]) identified through the detection as the designated position (receives function switching input by pressing function button 83, & control unit 87 transmits measurement start signal; [0050] & [0060-61]).
With respect to Claim 8, Kamikawa discloses the ophthalmic apparatus (ophthalmic apparatus 1; [0010]) according to claim 1, further comprising:
a determination unit (CPU 71; [0041]) configured to determine that the designated position is for the left subject eye or the right subject eye (determine whether the alignment state is appropriate based on the position; [0041]), based on whether the designated position is present in a right eye region or a left eye region (based on the image pickup results of the eyes in image pickup element 62; [0041]) in the face image ([0031]; fig. 3) captured by the first imaging unit (face photographing unit 3; [0028]) when the single designated position is designated through the input operation (function switching input by pressing function button 83, control unit 87 transmits measurement start signal, & test eye at the position where device control unit 70 receives a measurement start signal from the controller 80; [0050] & [0060-61]),
wherein the controller (controller 80; [0010]) programming when executed carries out the following control (various operation instructions in control program i.e., operation unit 8 via controller 80; [0010], [0028-30]):
performs the first drive control (first input unit 81; [0055]) based on the designated position input through the input operation and then shift (control unit 87 receives switching input by pressing function button 83, converts input from the first input unit 81 or the second input unit 82 into a left/right eye switching signal; [0050]) to the second drive control (second input unit 82; [0055]);
determines left or right for a relative movement (device control unit 70 receives signal from the controller 80 and moves examination/optometry unit 2 in X and Y directions according to the tilt direction, tilt angle, etc. of the stick 81; [0055]) of the examination unit (examination unit 2; [0027]) with respect to the subject eye (position of measurement optical axis of examination/optometry unit 2 relative to eye E; [0055]) based on a determination result (CPU 71 determines whether alignment state is appropriate based on position & based on image pickup results of the eyes in image pickup element 62; [0041]) from the determination unit (CPU 71; [0041]) in order to examine an unexamined subject eye after an examination (recitation of the intended use; see Ex parte Masham, 2 USPQ2d - 164 7 (1987)) of one of the left and right subject eyes is completed (after switching of the eye to be measured is completed, controller is operated to align the examination/optometry unit 2 with the other eye; [0059]); and
controls the drive unit (driving unit 4; [0027]), such that the examination unit (examination unit 2; [0027]) approaches the unexamined subject eye ([0059]), based on the determined result of left or right ([0041]), and shift ([0050]) to the second drive control (second input unit 82; [0055]).
With respect to Claim 9, Kamikawa discloses a non-transitory computer-readable storage medium (flash ROM 72 & storage unit 74; [0030]) storing a control program (stores an ophthalmic apparatus control program i.e., operation unit 8; [0028-30]) for an ophthalmic apparatus (ophthalmic apparatus 1; [0010]) including a drive unit (driving unit 4; [0027]) configured to three-dimensionally move an examination unit (examination unit 2; [0027]), which examines a subject eye ([0027]), relative to the subject eye ([0027]), a first imaging unit (face photographing unit 3; [0028]) configured to capture a face image ([0031]; fig. 3) including left and right subject eyes ([0028]), a second imaging unit (anterior eye photographing optical system 60; [0041]) configured to capture an anterior segment image of the subject eye ([0041]; fig. 1 & 2), and a display unit (display unit 7; [0028]) configured to display the face image (displays observed image of subject's eye and measurement results; [0028]) captured by the first imaging unit (face photographing unit 3; [0028]), the control program (control program i.e., operation unit 8; [0028-30]) comprising instructions which (various operation instructions; [0028]), when executed by a controller (controller 80; [0010]) of the ophthalmic apparatus (ophthalmic apparatus 1; [0010]), cause the ophthalmic apparatus (ophthalmic apparatus 1; [0010]) to perform:
a first acquisition step (via device control unit 70; [0061]) of detecting a position of the subject eye by analyzing the face image (obtained by the face photographing unit 3; [0061]), and acquiring the position of the subject eye ([0061]) identified through the detection as a detected position (detected position of alignment bright spot; [0061]);
a second acquisition step (via control unit 87; [0050]) of receiving an input operation (receives function switching input by pressing function button 83; [0050]) for designating a position of the subject eye (test eye at the position where device control unit 70 receives a measurement start signal from the controller 80; [0060]) in the face image (through first input unit and information acquired by device control unit 70; [0060]) displayed on the display unit (display unit 7; [0028]; fig. 2 & 3), and acquiring the position of the subject eye (through automatic alignment; [0060-61]) identified based on the input operation (control unit 87 transmits measurement start signal; [0050] & [0060-61]) as a designated position (when alignment is complete, stick 81 is pressed, when control unit 87 detects stick 81 being pressed, it transmits measurement start signal; [0057], alignment mode and transmission of alignment information; [0020-24]), in which the face image (obtained by the face photographing unit 3; [0061]) is displayed on the display unit (display unit 7; [0028]; fig. 2 & 3) before the detection in the first acquisition step completes (at this time, device control unit 70 measures test eye at position where it receives a measurement start signal from controller 80, OR moves eye examination unit 2 so that position of bright spot is within a predetermined range and then automatically start measuring test eye E; [0060-61], i.e., moves eye examination unit 2 toward predicted position of left eye based on information regarding measurement position of right eye, OR moves eye examination unit 2 based on position information of left eye acquired by face photographing unit 3; [0058]); and
a control step (control method; [0054]) of performing an adjustment process (alignment mode and transmission of alignment information; [0020-24]) including:
a position acquisition of acquiring a position of the subject eye (control means controls the communication means to receive position information of the subject's eye; [0008]), in which the position is the detected position (detected position of alignment bright spot; [0061]) when the first acquisition unit (device control unit 70; [0061]) detects the detected position (device control unit 70 detects eye to be examined; [0061]), and the position is the designated position (function switching input by pressing function button 83; [0050] & control unit 87 transmits measurement start signal; [0060-61]), regardless of whether the detected position is detected (detected position of alignment bright spot; [0061]), when the designated position is detected in the second acquisition step (when alignment is complete, stick 81 is pressed, when control unit 87 detects stick 81 being pressed, it transmits measurement start signal; [0057], alignment mode and transmission of alignment information; [0020-24]) after the detection in the first acquisition step starts (device control unit 70 detects alignment bright spot and performs fine alignment based on its position; [0060-61]);
a first drive control (first input unit 81; [0055]) of controlling the drive unit (upon receiving signal from controller 80 through stick 81, device control unit 70 drives driving unit 4; [0057-58]), such that the subject eye is positioned (through tilt direction, tilt angle, etc. of stick 81; [0055]) within an imaging range (movable range; [0056]) of the second imaging unit (anterior eye photographing optical system 60; [0041]), based on the acquired position of the subject eye (based on position information of the eyes; [0058]); and
a second drive control (second input unit 82; [0055]) of controlling the drive unit (upon receiving signal from controller 80 through buttons 82 & 83, device control unit 70 drives driving unit 4; [0058]) based on the anterior segment image ([0041]; fig. 1 & 2) after the first drive control (based on information regarding the measurement position of the eyes; [0058]), to adjusting a relative position of the examination unit (examination unit 2; [0027]) with respect to the subject eye ([0058]);
wherein:
when a left eye and a right eye are consecutively examined (switch the eye to be measured using the controller 80; [0053]), the controller (controller 80; [0010]) programming when executed carries out (various operation instructions in control program i.e., operation unit 8 via controller 80; [0010], [0028-30]) collective acquisition of respective positions of the left eye and the right eye (upon receiving signal from controller 80, device control unit 70 moves eye examination unit 2 toward predicted position of left eye based on information regarding measurement position of right eye, OR moves eye examination unit 2 based on position information of left eye acquired by face photographing unit 3; [0054-61]) in the position acquisition (control means controls the communication means to receive position information of the subject's eye; [0008]) of the adjustment process (alignment mode and transmission of alignment information; [0020-24]) performed for one subject eye to be examined first out of the left eye and the right eye (after completing the measurement of one eye, alignment is performed for the other eye, switching between the left and right eyes to be measured by operating the controller 80; [0058]), and
when the positions of the left eye and the right eye are collectively acquired (perform measurements for each eye; [0026], measurement position for the right eye to the measurement position for the left eye; [0058]) in the position acquisition (control means controls the communication means to receive position information of the subject's eye; [0008]), the apparatus (ophthalmic apparatus 1; [0010]) is configured to allow input operation (receives function switching input by pressing function button 83; [0050]) for each eye to be requested (examiner may switch between left and right eyes to be measured by operating controller 80; [0058]).
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). See also MPEP § 2112.02.
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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kamikawa et al. WO 2017171058 A1 (see machine translation; herein after "Kamikawa") in view of Fujimura US 20160345822 A1.
With respect to Claim 7, Kamikawa discloses the ophthalmic apparatus (ophthalmic apparatus 1; [0010]) according to claim 1, and controller (controller 80; [0010]) programming that executes controls (various operation instructions in control program i.e., operation unit 8 via controller 80; [0010], [0028-30]).
Kamikawa does not appear to explicitly teach the following limitation(s): a notification unit to perform a notification for requesting an examiner to perform an input operation for the designated position when an acquisition error of the detected position occurs in the adjustment process using the detected position.
However, in the same field of endeavor, Fujimura teaches an ophthalmologic apparatus (1; [0072]; fig. 1), comprising controller programming (via control unit 200 provided with computer that executes various arithmetic processes, control processes, and so on; [0072]), wherein a notification unit performs notification (main controller 211 executes notification; [0256]) for requesting an examiner to perform an input operation for the designated position (notification is, for example, process of outputting information for inviting user to manual position matching of supporting part 440; [0240]) when an acquisition error (notification that movement request of supporting part 440 cannot be received; [0256]) of the detected position (image of anterior eye part is located within predetermined area is obtained; [0239], detection result from contact detector 600 indicates contact state; [0256]) occurs in the adjustment process (main controller 211 controls optical system driver 2A to move examination optical system; [0256]) using the detected position (image of anterior eye part is located within predetermined area is obtained; [0239], when detection result from contact detector 600 indicates an out-of-contact state, main controller 211 executes bot controls of optical system driver 2A; [0257], main controller 211 controls other elements so as to move supporting part 440 to determined moving target position, thereby, movement operation of supporting part 440 may be carried out automatically; [0260]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the ophthalmic apparatus of Kamikawa to include the technical feature of a notification system for requesting a human to perform an input operation upon receiving an acquisition error from a computer, for the purpose of executing examination and automatic alignment while also creating a system that is capable of judging whether or not a position of an examination optical system is appropriately converged, as taught by Fujimura ([0180], [0237], [0241], and [0260]).
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 K MUHAMMAD whose telephone number is (571)272-4210. The examiner can normally be reached Monday - Thursday 1:00pm - 9:30pm EDT.
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/K MUHAMMAD/Examiner, Art Unit 2872 18 March 2026
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872