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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/12/2026 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.
Claims 84-101 and 103-104 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-44 of U.S. Patent No. 11,730,356. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of instant claim 84 are fully encompassed and met by the details of reference claims 1, 21, 29, 33, 40, and 44 which recite a similar main body configured to support a smartphone, cellphone, or electronic tablet, mobile slit-lamp, a curved track, and camera.
Additionally, the limitations of instant claim 85 are fully encompassed and met by the details of reference claims 1, 29, and 33; the limitations of instant claims 86-88 are fully encompassed and met by the details of reference claims 23-25; the limitations of instant claim 89 are fully encompassed and met by the details of reference claims 1, 21, 29, and 33; the limitations of instant claim 90 are fully encompassed and met by the details of reference claims 1, 4, 21, 29, 33, and 40; the limitations of instant claims 91-93 are fully encompassed and met by the details of reference claims 2-3; the limitations of instant claim 94 are fully encompassed and met by the details of reference claims 33, 34, 40, and 42; the limitations of instant claim 95 are fully encompassed and met by the details of reference claims 35 and 43; the limitations of instant claims 96 are fully encompassed and met by the details of reference claims 1, 21, 29, 33, 40, and 44; the limitations of instant claim 97-98 are fully encompassed and met by the details of reference claims 26-28; the limitations of instant claim 99 are fully encompassed and met by the details of reference claim 19; and the limitations of instant claims 100, 103, and 104 are met and fully encompassed by the details of reference claims 1, 11, 21-22, 29, 33, 40, and 44.
Allowable Subject Matter
Claims 84-101 and 103-104 would be allowable if rewritten or amended, or upon the timely filing of a terminal disclaimer, to overcome the double patenting rejection set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 84, the best prior art, Su et al. (U.S. PG-Pub No. 2016/0073878; hereinafter – “Su”), teaches an ophthalmic device configured to obtain one or more images of a subject’s eye, said ophthalmic device comprising:
a main body (100, 112, 200, 212, 300, 309, 400, 412, 500, 600, 700, 800) having a front side and a rear side (See e.g. Figs. 1-8; Paragraphs 0373-0375, 0379-0381, 0402, 0405, 0409, 0414, and 0416):
a mobile slit-lamp comprising a light source (405, 406, 408, 409, 605, 606a, 608a, 609, 705a, 706a, 708a, 709a, 805a, 806a, 808a, 809a, 805b, 806b, 808b, 809b) (See e.g. Figs. 4-8; Paragraphs 0402-0416); and
at least one camera (407, 607a, 610a, 710a, 711a, 810a, 811a, 807b, 810b, 811b) supported by said main body (See e.g. Figs. 4-8; Paragraphs 0402-0416);
wherein the ophthalmic device is configured such that a smartphone, a cellphone or an electronic tablet (104, 204, 304, 404, 1401) can be removably attached to the rear side of the main body opposite the front side of the main body such that camera is configured to be between the mobile slit-lamp and the rear side of the main body (See e.g. Figs. 1-8 and 12-14; Paragraphs 0375-0376, 0379-0381, 0385-0391, and 0422-0435), said camera being different from a camera integrated in the smartphone, cellphone, or electronic tablet (See e.g. Figs. 3-8; Paragraph 0388 and 0391),
wherein said ophthalmic device is a handheld ophthalmic device (See e.g. Figs. 1-8 and 12-14; Paragraphs 0376, 0385-0391, and 0422-0435).
Su fails to teach or reasonably suggest a mobile slit-lamp configured to be laterally translated across at least a portion of the main body along a curved path that has a center of curvature at the eye such that the light from the mobile slit-lamp is in focus on the eye as the mobile slit-lamp is translated across said portion of the main body, the mobile slit-lamp comprising a light source.
Thus, the prior art of record, taken alone or in combination, fails to teach the cumulative details of claim 84, specifically including the limitation: “a mobile slit-lamp configured to be laterally translated across at least a portion of the main body along a curved path that has a center of curvature at the eye such that the light from the mobile slit-lamp is in focus on the eye as the mobile slit-lamp is translated across said portion of the main body, the mobile slit-lamp comprising a light source.”
Response to Arguments
Applicant's arguments, see page 7, filed 01/12/2026, with respect to the double patenting rejections have been fully considered but they are not persuasive.
Applicant argues that the amended claims are patentably distinct from those of the reference patent. However, the instant claims are not patentably distinct from the reference claims, as detailed above. As such, the double patenting rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas R Pasko whose telephone number is (571)270-1876. The examiner can normally be reached M-F 8 AM - 5 PM.
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Nicholas R. Pasko
Primary Examiner
Art Unit 2896
/Nicholas R. Pasko/Primary Examiner, Art Unit 2896