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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/09/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/09/2026 has been considered by the Examiner and made of record in the application file.
Response to Amendment
The amendment filed 06/09/2026 has been entered. Claim 7 has been canceled. Claim 8 has been added.
Response to Arguments
Applicant's arguments filed 06/09/2026 have been fully considered but they are not persuasive.
Regarding claim 1, applicant’s arguments have been fully considered and are appreciated. However, the examiner respectfully disagrees. Applicant argues the currently applied prior art fails to disclose the newly amended independent claim 1 limitations “display, in a first region, a front image of the anterior segment sequentially acquired through the observing optical system and a first scan line,” “display, in the first region, a front image of the fundus sequentially acquired through the observing optical system and at least one second scan line,” and “the first region displays only: the front image of the anterior segment and the first scan line when in the anterior segment mode, and the front image of the fundus and the at least one second scan line when in the fundus mode.”
Examiner notes one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Examiner additionally notes the test for obviousness is not that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). It is further noted that “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” and in addition it has been further held that "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle" and taking into account "the inferences and creative steps that a person of ordinary skill in the art would employ." KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007), see MPEP 2141.
Applicant argues that because Ono does not teach an anterior segment mode, that Ishiai does not address the content of any display region or the role of an operation input in either mode, and because Endo does not address superimposing a scan line on the observation image or setting a scan position that the cited references do not teach a first region that, in the anterior segment mode, both displays the anterior segment front image with a scan line and receives an operation input controlling the driving part, as recited in amended claim 1. However, for the reasons listed above, one of ordinary skill in the art would, based on the combination of these references, find it obvious to incorporate the teachings of all three references to have a first region that, in the anterior segment mode, both displays the anterior segment front image with a scan line and receives an operation input controlling the driving part.
Applicant further argues that none of the cited reference display a scan line on an anterior segment front image because Ono only displays a scan line on a fundus front image, Ishiai switches between modes based on attachment detection and does not disclose a scan line on any image, and Endo displays an anterior segment observation image for alignment but does not display a scan line on that image. However, for the same reasons as listed above, one of ordinary skill would consider the scan line on the fundus image as disclosed by Ono and be motivated to include a scan line when in the anterior segment mode as taught by Ishiai for the purpose of being able to examine an anterior segment with the same capabilities and efficiencies as the fundus.
Applicant additionally argues none of the references individually recites an arrangement in which a single first region both displays the anterior segment front image with a scan line and receives an operation input controlling the driving part in the anterior segment mode, because Ono is directed to the fundus region, Ishiai is focused on attachment detection, and Endo moves the imaging unit for alignment without a scan line. In response to this argument examiner notes again that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding claim 8, applicant’s arguments have been fully considered and are appreciated. However, the examiner respectfully disagrees. Applicant argues the currently applied prior art fails to disclose new claim 8 limitation “a position of the first region on a screen is the same in the anterior segment mode and the fundus mode.” However, none of the references teach moving the position of the first region. Ono teaches the observing optical system displays a front image in the first region. Ishiai teaches an attachment to change whether the light is focused on the fundus or the anterior segment. There would be no reason that the combination of these features would result in the position of the first region being moved. It is implicit that the combination of these features would result in the position of the first region staying the same whether in the fundus mode or the anterior segment mode. Further, there are only two possibilities as to the position of the first region in the anterior segment more and the fundus mode – that the position is the same or different in the anterior segment mode and the fundus mode. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for a position of the first region on a screen to be the same in the anterior segment mode and the fundus mode.
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.
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) 1-2, 4-6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (US 20220151483 A1), hereinafter Ono, in view of Ishiai et al. (US 20170224213 A1), hereinafter Ishiai, and further in view of Endo et al. (JP 2017176545 A), hereinafter Endo.
Regarding independent claim 1, Ono discloses an OCT apparatus comprising:
an OCT optical system (L1; Fig. 2; ¶0046) configured to irradiate an imaging site of an examinee's eye (E; Fig. 2) with measurement light (Fig. 2), the OCT optical system (L1) being configured to detect a spectral coherence signal between the measurement light and a reference light (¶0003, ¶0303);
an observing optical system (L2; Fig. 2; ¶0046) configured to irradiate the imaging site with observation light (Fig. 2), the observing optical system (L2) being configured to acquire a front image (¶0041) of the imaging site based on reflected light of observation light from the imaging site (Fig. 2);
a driving part (¶0040) configured to move an imaging unit (100; Fig. 2; ¶0040) including the OCT optical system (L1) and the observing optical system (L2) with respect to the examinee's eye (E) (Fig. 1; ¶0040); and
a controller (20; Fig. 1; ¶0039), wherein
the controller (20) is configured to operate in a fundus mode (this is just a definition of the state the controller is in, additionally this is the default mode of Ono because observing system L2 is observing the fundus to display in the first region, as stated below) when the fundus is selected as the imaging site (402; Fig. 4; ¶0041)
in the fundus mode, the controller (20) is configured to:
display, in the first region (402; Fig. 4; ¶0071), a front image of the fundus sequentially acquired through the observing optical system (L2) (Fig. 4; ¶0071) and at least one second scan line (¶0321 states “At such time, a configuration may be adopted so that a line indicating the position of the tomographic image is displayed in a superimposed manner on the fundus front image. Furthermore, a configuration may be adopted so that the aforementioned line can be moved on the fundus front image according to an instruction from the examiner.”), and
receive a second operation input in the first region (402), by the user, for changing a scan position on the fundus in an XY direction (¶0321), and
the first region (402) displays only: the front image of the fundus and the at least one second scan line when in the fundus mode (Fig. 4; ¶0321).
Ono further discloses the controller (20) is configured to receive a first operation input for controlling the driving part (¶0090).
Ono does not disclose a changing means configured to change the imaging site in the OCT optical system and the observing optical system between a fundus of the examinee's eye and an anterior segment; the controller is configured to operate in an anterior segment mode when the anterior segment is selected as the imaging site, in the anterior segment mode, the controller is configured to: display, in a first region, a front image of the anterior segment sequentially acquired through the observing optical system and a first scan line, and receive a first operation input in the first region, by a user, for controlling the driving part, and the first region displays only: the front image of the anterior segment and the first scan line when in the anterior segment mode.
However, Ishiai teaches a similar OCT apparatus with an OCT optical system (21; Fig. 1; ¶0021) and an observing optical system (22; Fig. 1; ¶0021), a driving part (5; Fig. 1; ¶0027), and a controller (7; Fig. 1; ¶0027) configured to operate in a fundus mode and an anterior segment mode (Fig. 3; ¶0034), and further comprising a changing means (4; Fig. 1; ¶0025-¶0026) configured to change the imaging site in the OCT optical system (21) and the observing optical system (22) between a fundus of the examinee's eye and an anterior segment (Fig. 3; ¶0026). Ishiai further teaches the image in the fundus mode and the anterior segment mode would be displayed on a display device (implicit from ¶0031-¶0033).
The functionality and operations of: displaying at least one scan line and a front image sequentially acquired through the observing optical system in a first region, receiving a first operation input for controlling the driving part, and the first region displaying only the front image and the scan line are already disclosed by Ono, as discussed above. It has been held that a mere duplication of working parts of a device involves only routine skill in the art. In re Harza 124 USPQ 378 (CCPA 1960). One would have been motivated to duplicate these operations to be performed in the anterior segment mode for the purpose of being able to examine the anterior segment of an eye with the same capability and efficiency as the fundus of the eye.
Ishiai does not explicitly teach the first operation input is received in the first region, by the user, for controlling the driving part.
However, Endo teaches a similar OCT apparatus (Figs. 1-2), comprising an optical system (2; Figs. 1-2; ¶0011) configured to irradiate an eye (Figs. 1-2), a driving part (4; Figs. 1-2; ¶0011) configured to move the optical system (2) (Figs. 1-2; ¶0011), and a controller (70; Figs. 1-2; ¶0011), configured to display an image of the eye in a first region (75; Figs. 3-10; ¶0014) and receive an operation unit in the first region (75), by the user, for controlling the driving part (4) (Figs. 3-10; ¶0016, ¶0031, ¶0074).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ono to incorporate the changing means and controller with a fundus mode and an anterior segment mode as taught by Ishiai for the purpose of being able to examine both the fundus and the anterior segment in an appropriate imaging mode without additional imaging (¶0005-¶0006 of Ishiai), and to incorporate the touch panel as taught by Endo such that the controller receives an operation input in the first region by the user for controlling the driving part for the purpose of efficiently being able to examine a desired part of the eye.
11. Regarding claim 2, Ono in view of Ishiai and further in view of Endo discloses the OCT apparatus according to claim 1, including the controller operating in the anterior segment mode, and the controller being configured to receive an operation input in the first region by a user for controlling the driving part, as set forth above. Neither Ono nor Ishiai disclose the controller receives an operation input that specifies a specified position on the front image of the anterior segment in the first region through a mouse or touchscreen display, and the controller moves the imaging unit in an XY direction with respect to the examinee's eye such that tissue of the anterior segment displayed at the specified position is displayed at a predetermined position in the first region.
However, Endo teaches the controller (70) receives an operation input that specifies a specified position on the front image of the anterior segment in the first region (75) through a mouse or touchscreen display (Figs. 3-10; ¶0031), and the controller (70) moves the imaging unit in an XY direction with respect to the examinee's eye (¶0016) such that tissue of the anterior segment displayed at the specified position is displayed at a predetermined position in the first region (75) (Figs. 3-10; ¶0016, ¶0031, ¶0074).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ono and Ishiai to incorporate the touch panel as taught by Endo such that the controller receives an operation input in the first region by the user for controlling the driving part for the purpose of efficiently being able to examine a desired part of the eye.
12. Regarding claim 4, Ono in view of Ishiai and further in view of Endo discloses the OCT apparatus according to claim 1, including the controller operating in a fundus mode and an anterior segment mode, as set forth above. Ono further discloses a second observing optical system (L3; Fig. 2; ¶0046) different from the observing optical system (L2) (Fig. 2; ¶0046), the second observing optical system (L3) being configured to observe the anterior segment of the examinee's eye (Fig. 4; ¶0046, ¶0071) when the controller (20) is operating in the fundus mode (default mode of Ono as explained above in the rejection of claim 1), wherein when the controller (20) is operating in the fundus mode, the controller (20) displays, in a second region (401; Fig. 4; ¶0071), the front image of the anterior segment sequentially acquired through the second observing optical system (L3) as a second observation image (Fig. 4; ¶0071).
13. Regarding claim 5, Ono in view of Ishiai and further in view of Endo discloses the OCT apparatus according to claim 4, as set forth above. Neither Ono, Ishiai, nor Endo disclose when the controller is operating in the anterior segment mode, the controller stops display control of the second observation image in the second region.
However, there are only two possibilities – that the controller continues display control of the second observation image in the second region or the controller stops display control of the second observation image in the second region. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the controller stop display control of the second observation image in the second region for the purpose of not having a blurry and out of focus image of the anterior segment displayed in the second region.
Regarding claim 6, Ono in view of Ishiai and further in view of Endo discloses the OCT apparatus according to claim 1, as set forth above. Ono further discloses on the screen (40), a third region (403) is disposed together with the first region (402) (Fig. 4; ¶0071), and the controller (40) displays, in the third region (403), a live image by an OCT image of the examinee's eye sequentially acquired through the OCT optical system (L1) (Fig. 4; ¶0071).
Regarding claim 8, Ono in view of Ishiai and further in view of Endo discloses the OCT apparatus according to claim 1, as set forth above. Neither Ono, Ishiai, nor Endo explicitly disclose a position of the first region on a screen is the same in the anterior segment mode and the fundus mode.
However, Ono teaches the front image obtained by the observing optical system (L2) is displayed in the first region (402). Ishiai simply teaches adding a changing means to focus the light between the fundus and the anterior segment, resulting in a fundus mode and an anterior segment mode. It is implicit from the combination that the front image in each mode would be displayed in the same first region (402).
Further, there are only two possibilities as to the position of the first region in the anterior segment more and the fundus mode – that the position is the same or different in the anterior segment mode and the fundus mode. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for a position of the first region on a screen to be the same in the anterior segment mode and the fundus mode since there are only two possible solutions and since it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp, for the purpose of displaying a front image both when in a fundus mode and an anterior segment mode.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATASHA NIGAM/Examiner, Art Unit 2872 June 18th, 2026
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872
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