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 amendments filed on 12/12/2025 are acknowledged and accepted. Claims 1 and 4-5 are amended and Claims 1-18 remain pending in the application. The objections to the specification, drawings and claim 1 are withdrawn.
Drawings
The drawings filed on 7/31/2023 are acceptable.
Claim Rejections - 35 USC § 102
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.
Claims 1, 7, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Obrebski (US 20080204660 A1).
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With respect to Claim 1, Obrebski discloses an ophthalmic viewing device (Fig. 6-- element 550, ophthalmoscopic attachment module; [0038]) (“viewing device”), comprising:
a mounting feature (Fig. 6-- element 553, holding device; [0038]) configured for mounting the viewing device (Fig. 6-- element 550, ophthalmoscopic attachment module; [0038]) to a visualization device (Fig. 6-- element 500, surgical microscope; [0037]);
an upper arm (Fig. 6-- element 556, second section; [0038]) connected to the mounting feature (Fig. 6-- element 553, holding device; [0038]) proximate a proximate end of the upper arm (Fig. 6-- element 556, second section; [0038]);
a lower arm (See annotated Fig. 6-- lower arm) connected to the upper arm (Fig. 6-- element 556, second section; [0038]) proximate a distal end of the upper arm (Fig. 6-- element 556, second section; [0038]);
a first mirror (Fig. 6-- element 593, path-folding mirror; [0038]) movably connected to the mounting feature (Fig. 6-- element 553, holding device; [0038]) and having at least a first mirror position (Fig. 6-- element 593 translated along either double arrow 594 and/or 599) and a second mirror position (Fig. 6-- element 593 translated along either double arrow 594 and/or 599) (Fig. 6—element 593 may move to multiple positions along the double arrows 594 and 599);
a second mirror (Fig. 6-- elements 570 and 571, mirrors; [0038]) connected to the upper arm (Fig. 6-- element 556, second section; [0038]); and
a lens assembly (See annotated Fig. 6--lens assembly) having a lens frame (See annotated Fig. 6--lens frame) configured to shift between a first lens frame position and a second lens frame position (Fig. 6—the lens frame may be moved into multiple different positions along the double arrow 560), the lens frame (See annotated Fig. 6--lens frame) having a central cavity (Fig. 6-- element 593 is disposed in a frame with a cavity for receiving the lens) configured for receiving a lens, wherein:
in a first configuration (The configuration as pictured in Fig. 6) of the viewing device (Fig. 6-- element 550, ophthalmoscopic attachment module; [0038]): the lens frame (See annotated Fig. 6--lens frame) is in the first lens frame position, such that a plane of the central cavity (Fig. 6-- element 593 is disposed in a frame with a cavity for receiving the lens) is perpendicular to an axis of the visualization device (See annotated Fig. 6—visualization axis) (“visualization device”) along an on-axis imaging optical path (Fig. 1-- Equivalent elements 106 and 107 correspond to viewing beam path in Fig. 5) between a patient's eye and the visualization device (Fig. 6-- element 500, surgical microscope; [0037]) for viewing a first field of view of the patient’s eye (Fig. 6 and [0010]—the driver allows for different regions of the eye to be viewed);
the first mirror (Fig. 6-- element 593, path-folding mirror; [0038]) is in the first mirror position (Fig. 6-- element 593 translated along either double arrow 594 and/or 599) outside of the on-axis imaging optical path (The configuration as pictured in Fig. 6);
in a second configuration (The configuration as pictured in Fig. 6 but element 533 is moved along the double arrow 560 in order to move 554 outside the optical axis) of the viewing device (Fig. 6-- element 550, ophthalmoscopic attachment module; [0038]):
the lens frame (See annotated Fig. 6--lens frame) is in the second lens frame position, wherein in the second lens frame position the plane of the central cavity (Fig. 6-- element 593 is disposed in a frame with a cavity for receiving the lens) is disposed at a frame angle relative to the visualization device axis (See annotated Fig. 6—visualization axis), such that the plane of the central cavity (Fig. 6-- element 593 is disposed in a frame with a cavity for receiving the lens) is perpendicular to a first angled axis of an off-axis imaging optical path (Fig. 1-- Equivalent elements 106 and 107 correspond to viewing beam path in Fig. 5);
the first mirror (Fig. 6-- element 593, path-folding mirror; [0038]) is in the second mirror position (Fig. 6-- element 593 translated along either double arrow 594 and/or 599), wherein in the second mirror position (Fig. 6-- element 593 translated along either double arrow 594 and/or 599) the first mirror (Fig. 6-- element 593, path-folding mirror; [0038]):
at least partially intercepts the on-axis imaging optical path (Fig. 1-- Equivalent elements 106 and 107 correspond to viewing beam path in Fig. 5), and
is positioned at a first angle (Fig. 6-- element 593 may be adjusted along double arrows 594 and 599) relative to the visualization device axis (See annotated Fig. 6—visualization axis) for redirecting the off-axis imaging optical path (Fig. 1-- Equivalent elements 106 and 107 correspond to viewing beam path in Fig. 5), received along a second angled axis from the second mirror (Fig. 6-- elements 570 and 571, mirrors; [0038]), towards the visualization device (Fig. 6-- element 500, surgical microscope; [0037]) (Fig. 6—element 593 may be adjusted to capture light off-axis); and the second mirror (Fig. 6-- elements 570 and 571, mirrors; [0038]) is:
positioned within the off-axis imaging optical path (Fig. 6-- elements 570 and 571 are positioned off axis) at a second angle (Fig. 6—elements 570 and 571 may be adjusted along double arrows 572, 573, 574, and 575) relative to the visualization device axis (See annotated Fig. 6—visualization axis) , and
configured to redirect the off-axis imaging optical path (Fig. 1-- Equivalent elements 106 and 107 correspond to viewing beam path in Fig. 5), received along the first angled axis from the lens in the lens frame (See annotated Fig. 6--lens frame) in the second lens frame position, towards the first mirror (Fig. 6-- element 593, path-folding mirror; [0038]) (Fig. 6— elements 570 and 571 may be adjusted along double arrows 572, 573, 574, and 575 to redirect light which may reach the lens towards element 593) for viewing a second field of view of the patient’s eye that is different from the first field of view (Fig. 6 and [0010]—the driver allows for different regions of the eye to be viewed).
With respect to Claim 7, Obrebski discloses the viewing device of claim 1, wherein the lens frame (See annotated Fig. 6--lens frame) is configured to shift into more than two lens frame positions (Fig. 6—the lens frame may be moved into multiple different positions along the double arrow 560).
With respect to Claim 14, Obrebski discloses the viewing device of claim 1, further comprising a primary switch ([0010]: drives are assigned to move adjustable optical elements), the primary switch ([0010]: drives are assigned to move adjustable optical elements) being configured to simultaneously move ([0010]: drives are assigned to move adjustable optical elements to favorable viewing locations) the first mirror (Fig. 6-- element 593, path-folding mirror; [0038]) between the first mirror position and the second mirror position (Fig. 6-- element 593 translated along either double arrow 594 and/or 599) and the lens frame (See annotated Fig. 6--lens frame) between the first lens frame position and the second lens frame position (Fig. 6—the lens frame may be moved into multiple different positions along the double arrow 560).
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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Obrebski (US 20080204660 A1) in view of John (US 20130103145 A1).
With respect to Claim 2, Obrebski discloses the viewing device of claim 1, and Obrebski further discloses
the lower arm (See annotated Fig. 6-- lower arm) and the lens frame (See annotated Fig. 6--lens frame). However, Obrebski does not disclose wherein:
the lower arm comprises two extensions,
the lower arm comprises two pairs of slots at corresponding distal ends of the two extensions,
the lens frame comprises two pairs of pins, including one pair of pins on one side of the lens frame and another pair of pins on another side of the lens frame.
John and Obrebski are related as both pertaining to the field of optical surgical apparatuses. John discloses a device wherein:
the lower arm (Fig. 4—element 205, bracket; 0038]) comprises two extensions (Fig. 4—element 225, lens bracket and element 210, stabilizing bracket; [0040]),
the lower arm (Fig. 4—element 205, bracket; 0038]) comprises two pairs of slots (Fig. 4—element 230, slots and the slot which receives element 211; [0039] and [0038]) at corresponding distal ends of the two extensions (Fig. 4—element 225, lens bracket and element 210, stabilizing bracket; [0040]),
the lens frame (Fig. 4—element 233, lens belt; [0039]) comprises two pairs of pins (Fig. 4—element 232, extruding pins and element 211 pins; [0039] and [0038]), including one pair of pins on one side of the lens frame and another pair of pins on another side (Fig. 4— there are two pins on each side of the lens frame) of the lens frame (Fig. 4—element 233, lens belt; [0039]).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to combine the viewing device of Obrebski with the stabilizing mechanism of John in order to create a device which can allow clinicians to visualize and have positioning control of the eye without the application of excessive pressure on the eye (John, [0006]).
With respect to Claim 3, Obrebski and John disclose the viewing device of claim 2, Obrebski does not disclose wherein the two pairs of pins are configured to engage with the corresponding two pairs of slots to enable shifting the lens frame from the first lens frame position to the second lens frame positions and vice versa.
John and Obrebski are related as both pertaining to the field of optical surgical apparatuses. John discloses a device wherein the two pairs of pins (Fig. 4—element 232, extruding pins and element 211 pins; [0039] and [0038]) are configured to engage with the corresponding two pairs of slots (Fig. 4—element 230, slots and the slot which receives element 211; [0039] and [0038]) to enable shifting the lens frame from the first lens frame position to the second lens frame positions and vice versa (Fig. 4— the pins allow for the lens frame to be moved to several different positions).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to combine the viewing device of Obrebski with the stabilizing mechanism of John in order to create a device which can allow clinicians to visualize and have positioning control of the eye without the application of excessive pressure on the eye (John, [0006]).
Claims 6, 8, 13, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Obrebski (US 20080204660 A1).
With respect to Claim 6, Obrebski discloses the viewing device of claim 1, wherein the lower arm (See annotated Fig. 6-- lower arm) is connected to the upper arm (Fig. 6-- element 556, second section; [0038]).
However, Obrebski does not disclose wherein the lower arm is removably connected to the upper arm.
It would have been obvious to one of ordinary skill in the art before the effective filing date to make the lower arm separable from the upper arm, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. In re Dulberg 129 USPQ 348, 349 (CCPA 1961).
With respect to Claim 8, Obrebski discloses the viewing device of claim 1, wherein the mounting feature (Fig. 6-- element 553, holding device; [0038]) comprises:
a stationary ring (See annotated Fig. 6—stationary ring) mounted to the visualization device (Fig. 6-- element 500, surgical microscope; [0037]); and
a rotatable ring (Fig. 6—element 559, nut; [0025]) attached to and rotatable with respect to the stationary ring, wherein the upper arm (Fig. 6-- element 556, second section; [0038]) is connected to the rotatable ring.
However, Obrebski does not disclose wherein a stationary ring is removably mounted to the visualization device.
It would have been obvious to one of ordinary skill in the art before the effective filing date to make thee stationary ring separable from the visualization device, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. In re Dulberg 129 USPQ 348, 349 (CCPA 1961).
With respect to Claim 13, Obrebski discloses the viewing device of claim 1, Obrebski further discloses the upper arm (Fig. 6-- element 556, second section; [0038]) and the lower arm (See annotated Fig. 6-- lower arm), and the upper arm (Fig. 6-- element 556, second section; [0038]) includes a stop (See annotated Fig. 6-- stop) proximate the connection-location (Fig. 6—the joint where the upper and lower arm are connected), and configured to restrict motion (Fig. 6—the wider part of element 556 will restrict the movement of the lower arm) of the lower arm (See annotated Fig. 6-- lower arm).
Obrebski does not explicitly disclose wherein the upper arm and the lower arm are connected at a hinged connection-location, and the upper arm includes a stop proximate the hinged connection-location.
It would have been obvious to one of ordinary skill in the art before the effective filing date to make the connection between the upper arm and the lower arm adjustable, since it has been held that adjustability, where needed, involves only routine skill in the art. In re Stevens 101 USPQ 284 (CCPA 1954).
With respect to Claim 15, Obrebski discloses the viewing device of claim 1, and further discloses the first angle (Fig. 6-- element 593 may be adjusted along double arrows 594 and 599).
Obrebski does not explicitly discloses wherein the first angle is between 15 degrees and 75 degrees.
It would have been obvious to one of ordinary skill in the art before the effective filing date to choose a first angle between 15 degrees and 75 degrees, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955).
With respect to Claim 16, Obrebski discloses the viewing device of claim 1, and further discloses the first angle (Fig. 6-- element 593 may be adjusted along double arrows 594 and 599).
Obrebski does not explicitly discloses wherein the first angle is between 15 degrees and 25 degrees.
It would have been obvious to one of ordinary skill in the art before the effective filing date to choose a first angle between 15 degrees and 25 degrees, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955).
With respect to Claim 17, Obrebski discloses the viewing device of claim 1, and further discloses the second angle (Fig. 6—elements 570 and 571 may be adjusted along double arrows 572, 573, 574, and 575).
Obrebski does not explicitly discloses wherein the second angle is between 15 degrees and 75 degrees.
It would have been obvious to one of ordinary skill in the art before the effective filing date to choose a second angle between 15 degrees and 75 degrees, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955).
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Obrebski (US 20080204660 A1 Fig. 5; hereinafter “6Obrebski”) in view of Obrebski (US 20080204660 A1, Fig. 6; hereinafter “7Obrebski”).
With respect to Claim 9, Obrebski discloses the viewing device of claim 8, 6 Obrebski discloses the rotatable ring (Fig. 6—element 559, nut; [0025]) of the mounting feature (Fig. 6-- element 553, holding device; [0038]).
6Obrebski does not disclose further comprising a motorized rotation feature coupled to the rotatable ring of the mounting feature, the motorized rotation feature being configured to rotate the rotatable ring.
7Obrebski does disclose further comprising a motorized rotation feature (Fig. 7—element 670, adjusting motor; [0040]) coupled to the rotatable ring (Fig. 7—element 659, nut; [0040]) of the mounting feature (Fig. 7-- element 653, holding device; [0040]), the motorized rotation feature (Fig. 7—element 670, adjusting motor; [0040]) being configured to rotate ([0040]: element 670 drives element 659) the rotatable ring (Fig. 7—element 659, nut; [0040]).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to combine the viewing device of 6Obrebski with the motorized rotation feature of 7Obrebski in order to create a device which can provide an automated adjustment of favorable illumination configurations in the ophthalmoscopic attachment module so that this module can be easily and ergonomically favorably manipulated (7Obrebski, [0010]).
With respect to Claim 10, 6Obrebski and 7Obrebski disclose the viewing device of claim 9,
6Obrebski discloses the rotatable ring (Fig. 6—element 559, nut; [0025]).
6Obrebski does not disclose wherein the motorized rotation feature (Fig. 7—element 670, adjusting motor; [0040]) comprises a spinner (Fig. 7—element 658, threaded spindle; [0040]) that is set into the stationary ring (analogous to the same part in annotated Fig. 6—stationary ring) and that engages (Fig. 7—element 658 allows for element 659 to move up and down) the rotatable ring (Fig. 7—element 659, nut; [0040]).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to combine the viewing device of 6Obrebski with the motorized rotation feature of 7Obrebski in order to create a device which can provide an automated adjustment of favorable illumination configurations in the ophthalmoscopic attachment module so that this module can be easily and ergonomically favorably manipulated (7Obrebski, [0010]).
With respect to Claim 11, 6Obrebski and 7Obrebski disclose the viewing device of claim 9, 6Obrebski does not disclose wherein the motorized rotation feature is controlled by a foot-activated pedal or a remote.
wherein the motorized rotation feature (Fig. 7—element 670, adjusting motor; [0040]) is controlled by a foot-activated pedal or a remote ([0010]: drives are assigned to adjustable optical elements to provide automated adjustment).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to combine the viewing device of 6Obrebski with the motorized rotation feature of 7 Obrebski in order to create a device which can provide an automated adjustment of favorable illumination configurations in the ophthalmoscopic attachment module so that this module can be easily and ergonomically favorably manipulated (7Obrebski, [0010]).
Claims 4-5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Obrebski (US 20080204660 A1) in view of Delong (US 20210315455 A1).
With respect to Claim 4, Obrebski discloses the viewing device of claim 1, and further discloses the lower arm (See annotated Fig. 6-- lower arm). However, Obrebski does not disclose wherein the lower arm comprises a second lens frame configured for receiving a second lens.
Obrebski and Delong are related as both pertaining to the field of ophthalmic surgery devices. Delong discloses a device comprising a second lens frame (Fig. 9a—element 803, wall; [0112]) configured for receiving a second lens (Fig. 9a—element 801, window; [0112]).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to combine the viewing device of Obrebski with the second lens component of Delong in order to create a device which has a sterile barrier between the components and the patient (Delong, [0110]).
With respect to Claim 5, Obrebski and Delong disclose the viewing device of claim 4, and further the lens frame (See annotated Fig. 6--lens frame). However, Obrebski does not disclose wherein a second plane of the second lens frame is disposed at a second frame angle relative to the visualization device axis, the second frame angle being parallel to the frame angle of the central cavity of the lens frame when the lens frame is in the second lens frame position.
Obrebski and Delong are related as both pertaining to the field of ophthalmic surgery devices. Delong does disclose a device wherein a second plane (Fig. 9a— the horizontal plane that element 801 is disposed on) of the second lens frame (Fig. 9a—element 803, wall; [0112]) is disposed at a second frame angle relative to the visualization device axis (Fig. 9a—element 705), the second frame angle being parallel to the frame angle of the central cavity of the lens (Fig. 9a—the gap created by the two wall elements, 702, that element 710 occupies) (Fig. 9b—element 710 and 801 are disposed in parallel planes).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to combine the viewing device of Obrebski with the second lens component of Delong in order to create a device which has a sterile barrier between the components and the patient (Delong, [0110]).
With respect to Claim 12, Obrebski discloses the viewing device of claim 1, and further discloses the lens (Fig. 6—element 554, ophthalmoscopic magnifier lens; [0038]). However, Obrebski does not disclose wherein the lens is aspheric.
Obrebski and Delong are related as both pertaining to the field of ophthalmic surgery devices. Delong does disclose a device wherein the lens (Fig. 9a—element 710, aspheric exit lens; [0114]) is aspheric ([0114]: 710 is aspheric).
Therefore, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to combine the viewing device of Obrebski with the aspheric lens of Delong in order to create a device which has more design freedom over the shape and thickness of the lens (Delong, [0114]).
Response to Arguments
Applicant’s arguments, see Pages 6-7, filed 12/12/2025, with respect to the drawing objection have been fully considered and are persuasive. The drawing objection has been withdrawn.
Applicant's arguments filed 12/12/2025 have been fully considered but they are not persuasive.
Examiner disagrees with Applicant’s argument that Obrebski's mirrors and prisms (e.g., 181, 593) are part of an illumination pathway, not an imaging pathway and therefore does not teach or suggest a device that redirects the imaging path to enable viewing of different fields of view as claimed. Obrebski discloses, in paragraph [0013], that the illumination along the illuminating light path is used in imaging the eye; therefore, the illuminating light path is a portion of the imaging path and it is located in between the eye and the visualization device (See Fig. 6-- elements 590 and 500).
Obrebski discloses, in paragraph [0010], “drives make possible to provide a control loop for the at least partially adjustable optical elements and this control loop evaluates the image of a viewed region and optimizes the course of an illuminating beam path in the ophthalmoscopic attachment module”, therefore element 593 does direct illumination to different regions of the eye to allow for different fields of view to be seen.
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.
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/MACKENZI WADDELL/ Examiner, Art Unit 2872
/WILLIAM R ALEXANDER/ Primary Examiner, Art Unit 2872