DETAILED ACTION
Response to Remarks
1. As a preliminary matter, the Examiner notes the Applicant’s assertions that “the examiner indicated the present response would overcome the outstanding rejections and claim interpretation assertion [during the interview of 02/12/2026]” (pg. 5 of the Remarks filed 02/24/2026) are not fully correct. With respect to the rejection of claims under 35 U.S.C. 102, the proposed amendments were discussed in the form of suggestions by the Examiner and by the Applicant to avoid a written description (new matter) rejection under 35 U.S.C. 112(a). Examiner further suggested that the newly recited structure of ‘the processing circuitry’ (as recited in claim 3; see proposed amendments in Office Action Appendix filed 02/24/2026) correspond to more than simply a general purpose computer/processor, that the specification must disclose an algorithm for performing the claimed functions of mode switching and trimming by the processing circuitry to satisfy definiteness requirements under 35 U.S.C. 112(b) for computer-implemented functional limitations. The Examiner stated that if the aforementioned issues are resolved in the formally filed remarks, the proposed amendments would appear to overcome the prior art rejection of record as anticipated by the Mueller and Suzuki references (see Examiner Interview Summary of 02/24/2026).
2. Applicant’s remarks (see pgs. 6-10 of Remarks filed 02/24/2026) regarding the prior art rejection of the claims under 35 U.S.C. 102 have been fully considered but are moot upon further consideration because the new grounds of rejection in light of a change of statutory basis and/or in light of McWilliams et al.’s teachings are necessitated by the Applicant’s amendments to the claims (on 02/24/2026), as detailed below.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the processing circuitry must be shown or the feature(s) canceled from the claim(s) 3. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 3 limitation “processing circuitry configured as a mode switching unit capable of selectively switching among…modes…and further configured as a trimming unit configured to trim…” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This limitation, and in particular the functions of mode switching and the trimming, does not have sufficient structure.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 3-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention. The replacement claims submitted 02/24/2026 were not filed with the original disclosure filed on 11/24/2023 and are therefore examined for new matter, see MPEP 608.04(b) and 714.01(e). Claim 3 limitation “processing circuitry configured as a mode switching unit capable of selectively switching among a first mode for acquiring a first image obtained by stereoscopically imaging the observation lights from both the observation optical paths using the imaging system, a second mode for acquiring only a second image obtained by imaging the observation light from one of the observation optical paths using the imaging system, and a third mode for acquiring only a third image obtained by imaging the observation light from the other of the observation optical paths using the imaging system…processing circuitry is further configured as a trimming unit configured to trim the first image output from the imaging system” amounts to prohibited new matter. Specifically, the limitation directed to a processing circuitry lacks support in the original specification and claims submitted 11/24/2023 because all embodiments corresponding to FIGS. 1-9 and the embodiments as disclosed in the as-filed specification fail to disclose a processing circuitry configured to perform the functional limitations directed to the mode switching unit and the trimming unit comprised therein. Rather, the as-filed specification discloses that the mode switching unit and/or functions is controlled by a control device 40 (¶0063 of spec. & FIG. 8) and the trimming unit and/or functions is executed by the image processor 77 (¶0084 of spec. & FIG. 9), wherein the control device 40 functions as an image processor 77 (¶0083). Furthermore, FIGS. 8-9 fail to depict any such processing circuitry configured to satisfy the functional limitations of the units as recited in newly amended claim 3. The Examiner respectfully suggests that the claim(s) be amended to recite limitations that are supported by the originally-filed specification.
Claim Rejections - 35 USC § 112
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.
Claims 3-8 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.
The following limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, and the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function:
Claim 3 recites “a processing circuitry” which invokes 35 U.S.C. 112(f) as detailed above. However, the specification is silent to any structure required to meet the functional limitations of the processing circuitry. As such, the processing circuitry amounts to a general purpose computer, and the specification fails to provide any specific algorithm for achieving the functions of mode switching and trimming as claimed. However, to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer to perform the functions as claimed. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241 (MPEP 2181.II.B).
Accordingly, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor. Aristocrat, 521 F.3d at 1337-38, 86 USPQ2d at 1242. Since the claimed “processing circuitry” invokes 35 U.S.C. 112(f) as detailed above and the specification is silent as to any structure for the “processing circuitry” other than a general purpose computer, claim 3 is therefore indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Therefore, Claim 3 is rendered indefinite and rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The dependent claims inherit the deficiencies of the base claims, respectively, and claims 4-8 are thus rejected under 35 U.S.C. 112(b).
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 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (CN 101511260 A) in view of McWilliams et al. (WO 2019/056042 A1).
The Examiner notes that the text of foreign references as cited throughout this Office Action are to the English translation retrieved from the Patent Translate feature of https://worldwide.espacenet.com and provided herewith.
Regarding Claim 3, Suzuki discloses: An ophthalmic microscope (¶0005) comprising: an observation system configured to observe an eye to be examined, the observation system including an objective lens and a pair of observation optical paths; an imaging system capable of stereoscopically imaging respective observation lights of the eye to be examined from the observation optical paths (¶0005: fundus camera capable of capturing images with parallax and two-aperture is provided at a position conjugate with the objective lens; ¶0139: two optical paths of stereo apertures 32d and 32d'; FIG. 1: objective lens 24; ¶0101: stereoscopic shooting mode); and processing circuitry configured as a mode switching unit capable of selectively switching among a first mode for acquiring a first image obtained by stereoscopically imaging the observation lights from both the observation optical paths using the imaging system, a second mode for acquiring only a second image obtained by imaging the observation light from one of the observation optical paths using the imaging system, and a third mode for acquiring only a third image obtained by imaging the observation light from the other of the observation optical paths using the imaging system (¶0084: ophthalmic imaging device configured to switch between normal monocular and stereoscopic imaging in each mode; ¶0123: aperture switching mechanism, which consists of an aperture switching switch 101 that can manually switch the aperture plate 32, the light shield 33 and 33'; ¶0154; ¶0157: in the case of the right image the aperture switch 101 is set to position X2; ¶0158: left image confirmed by flash, the aperture switch 101 is set to position X4; ¶0161-62: if stereoscopic shooting is not performed, the left and right stereoscopic apertures 32d and 32d' can be closed, and the central aperture 31a can be opened (step S58), and then proceed to step S19 of Figure 8a to perform monocular shooting; ¶0121: The operation unit 69 is equipped with various shooting modes for monocular and stereoscopic shooting in each mode; see FIGS. 1 & 21 showing mode switching unit 101+69); wherein the imaging system stereoscopically images the observation lights from both the observation optical paths and outputs the first image (¶0117: The image is input into the control and processing unit 60, which is composed of a CPU or the like, and is displayed as a moving image on the monitor 62… stereo monitor 63 [third mode] is provided as a dedicated display for stereoscopic vision, through which the examiner can observe the images on the left and right sides and view the fundus in stereoscopic form; ¶0138: the two fundus images through the optical paths of stereo apertures 32d and 32d' are separated and displayed [first and second modes]…The two separated fundus images are partially overlapped and displayed on monitor 62).
Suzuki does not appear to explicitly disclose: the processing circuitry is further configured as a trimming unit configured to trim the first image output from the imaging system, and the trimming unit trims the second image from the first image in the second mode, trims the third image from the first image in the third mode, and is in a standby state in the first mode.
McWilliams is related to Suzuki with respect to an ophthalmic microscope (FIGS. 1-5; ¶0084) comprising: an observation system and an imaging system capable of stereoscopically imaging respective observation lights of the eye to be examined from the observation optical paths (¶0117); processing circuitry configured as a mode switching unit (¶0143, 0145, 0147), and McWilliams teaches: the processing circuitry is further configured as a trimming unit configured to trim the first image output from the imaging system, and the trimming unit trims the second image from the first image in the second mode, trims the third image from the first image in the third mode, and is in a standby state in the first mode (¶0126: , processor 240 is in the form of a high powered single board computer; and storage component 250 is in the form of solid state storage; ¶0150: Initially, the image is pre-processed for feature enhancement and processing performance optimization [standby mode]; see FIG. 14 showing trimming unit of processor configured to trim the first image output from the imaging system, trim the second image from the first image, and trims the third image from the first image, and standby mode; ¶0147: reference image requires rotating, cropping, scaling and filtering (as shown in Figure 14 and explained below)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ophthalmic microscope of Suzuki in view of McWilliams to satisfy the claimed condition, because such a trimming unit is known and would be utilized in identifying suitable position of the retina for retinal rejuvenation therapy, as taught in ¶0151 of McWilliams.
Regarding Claim 8, Suzuki discloses the ophthalmic microscope according to Claim 3, as above. Suzuki further discloses: comprising a display unit configured to display the second image in the second mode, display the third image in the third mode, and display the first image in a stereoscopically viewable manner in the first mode (¶0087, 0168, 0171: when displaying a fundus image taken in monocular shooting mode, monitor 62 is automatically selected, and the fundus image is displayed on monitor 62 as a still image along with shooting condition information. Furthermore, when reading out the two images obtained by stereoscopic imaging and viewing the fundus in stereo, the stereoscopic monitor 63 displays the image with left position information on the left side and the image with right position information on the right side; ¶0117: a stereo monitor 63 is provided as a dedicated display for stereoscopic vision, through which the examiner can observe the images on the left and right sides and view the fundus in stereoscopic form; see FIG. 1 showing display units 62-63 for selection of modes).
Claims 3-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Müller et al. (DE 102015214082 A1; as cited in IDS filed 06/03/2025) in view of McWilliams et al. (WO 2019/056042 A1).
Regarding Claim 3, Müller discloses: An ophthalmic microscope (FIG. 1:10; ¶0009-11) comprising: an observation system configured to observe an eye to be examined, the observation system including an objective lens and a pair of observation optical paths; an imaging system capable of stereoscopically imaging respective observation lights of the eye to be examined from the observation optical paths (¶0035-36: objective lens and a first stereoscopic partial beam path 18 and a second stereoscopic partial beam path 20); and processing circuitry configured as a mode switching unit capable of selectively switching among a first mode for acquiring a first image obtained by stereoscopically imaging the observation lights from both the observation optical paths using the imaging system, a second mode for acquiring only a second image obtained by imaging the observation light from one of the observation optical paths using the imaging system, and a third mode for acquiring only a third image obtained by imaging the observation light from the other of the observation optical paths using the imaging system (¶0054-55: a rotatably mounted shutter 92 in a setting in which the first and the second stereoscopic partial beam paths 18 , 20 are simultaneously released by the shutter 92…in the setting shown in Fig. 10, the first partial beam path 18 is interrupted and the second stereoscopic partial beam path 20 is enabled…Fig. 11 shows the shutter 92 in a setting in which the first and the second stereoscopic partial beam paths 18 , 20 are simultaneously released by the shutter 92…in the setting of Fig. 12, the first stereoscopic partial beam path 18 is released and the second stereoscopic partial beam path 20 is interrupted by means of the shutter 92); wherein the imaging system stereoscopically images the observation lights from both the observation optical paths and outputs the first image (¶0044-45: microscope 10 includes a computer system 65 which calculates image data from stereoscopic partial images of the object area 16 acquired with the image acquisition unit 53 and transmits them to the image generation unit 50…image data can in particular contain orientation information which is determined from stereoscopic partial images of the left and/or right stereoscopic partial beam path 18 , 20 by means of digital image evaluation).
Müller does not appear to explicitly disclose: the processing circuitry is further configured as a trimming unit configured to trim the first image output from the imaging system, and the trimming unit trims the second image from the first image in the second mode, trims the third image from the first image in the third mode, and is in a standby state in the first mode.
McWilliams is related to Müller with respect to an ophthalmic microscope (FIGS. 1-5; ¶0084) comprising: an observation system and an imaging system capable of stereoscopically imaging respective observation lights of the eye to be examined from the observation optical paths (¶0117); processing circuitry configured as a mode switching unit (¶0143, 0145, 0147), and McWilliams teaches: the processing circuitry is further configured as a trimming unit configured to trim the first image output from the imaging system, and the trimming unit trims the second image from the first image in the second mode, trims the third image from the first image in the third mode, and is in a standby state in the first mode (¶0126: , processor 240 is in the form of a high powered single board computer; and storage component 250 is in the form of solid state storage; ¶0150: Initially, the image is pre-processed for feature enhancement and processing performance optimization [standby mode]; see FIG. 14 showing trimming unit of processor configured to trim the first image output from the imaging system, trim the second image from the first image, and trims the third image from the first image, and standby mode; ¶0147: reference image requires rotating, cropping, scaling and filtering (as shown in Figure 14 and explained below)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ophthalmic microscope of Müller in view of McWilliams to satisfy the claimed condition, because such a trimming unit is known and would be utilized in identifying suitable position of the retina for retinal rejuvenation therapy, as taught in ¶0151 of McWilliams.
Regarding Claim 4, Müller discloses the ophthalmic microscope according to Claim 3, as above. Müller further discloses: wherein the observation system includes binocular eyepieces, the one of the observation optical paths is provided between one of the eyepieces and the objective lens, and the other of the observation optical paths is provided between the other of the eyepieces and the objective lens (¶0035: microscope 10 has a binocular tube 14 and enables an observer to view a magnified object area 16 at a left and right eyepiece view 22, 24 using a first and a second beam path 18, 20), the ophthalmic microscope comprises a deflection element including a mirror or a prism and capable of deflecting parts of the observation lights passing through the one and the other of the observation optical paths out of optical paths of the observation optical paths (¶0041: beam splitters 36, 38 on the one hand and the beam splitters 40, 42 are designed here as a single piece of a connected prism cuboid; ¶0050: coupling module 34 which includes a beam splitter 61 in the form of a splitter cube and contains a mirror element 62), and the imaging system is capable of imaging the observation light of the one of the observation optical paths that has been deflected by the deflection element, and the observation light of the other of the observation optical paths that has been deflected by the deflection element (¶0037, 0043-44, 0054: coupling module 34 serves for the selective coupling of a beam path (see Fig. 4) supplied by an image generation unit 50 and provided at a first optical interface 44…coupling module 32 has the task of coupling out a beam path (see Fig. 4) from the first and the second stereoscopic partial beam paths 18 , 20 to an image acquisition unit 53 (see Fig. 3); see FIGS. 1-4 showing deflection element 36+38+40+42+61 deflecting parts of the observation lights out of optical paths).
Regarding Claim 5, Müller discloses the ophthalmic microscope according to Claim 4, as above. Müller further discloses: wherein the imaging system is capable of imaging, by using a common imaging element, both the observation lights each deflected by the deflection element for each of the observation optical paths (¶0043-44, 0086: operating microscope 10 further comprises an output coupling module 32 for coupling out the first stereoscopic partial beam path 18 and the second stereoscopic partial beam path 20 to the image acquisition unit 53 [common imaging element]).
Regarding Claim 6, Müller discloses the ophthalmic microscope according to Claim 4, as above. Müller further discloses: wherein the deflection element is provided so as to straddle both the observation optical paths (see FIG. 2 showing deflection element 36-42 so as to straddle both the observation optical paths).
Regarding Claim 8, Müller discloses the ophthalmic microscope according to Claim 3, as above. Müller further discloses: comprising a display unit configured to display the second image in the second mode, display the third image in the third mode, and display the first image in a stereoscopically viewable manner in the first mode (¶0006, 0022: An image generation unit containing only a single display can be used as the image generation unit for generating images coupled into the first or second stereoscopic partial beam path; ¶0036: an image acquisition unit 53 designed as a display module; ¶0048: control unit 67 to select on the operating microscope 10 in which of the two stereoscopic partial beam paths 18, 20 images generated by the image generation unit 50 are superimposed; see FIGS. 1-3 showing control unit 67 with display module 53 for selection of modes).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Müller et al. (DE 102015214082 A1) in view of McWilliams et al. (WO 2019/056042 A1), and further in view of Suzuki et al. (CN 101511260 A).
Regarding Claim 7, Müller-McWilliams discloses the ophthalmic microscope according to Claim 4, as above. Müller further discloses: and an aperture provided between the deflection element and the magnification optical system for each of the observation optical paths (¶0050: coupling module 34 which includes a beam splitter 61 in the form of a splitter cube and contains a mirror element 62; ¶0050: pinhole aperture 64; ¶0036: a magnification system 28 received in the base body 12. The magnification system 28 has a zoom system; see FIGS. 1-5 showing aperture 64 between the deflection element 61 and the variable magnification optical system 28 for each of the observation optical paths).
Müller does not appear to explicitly disclose: a variable magnification optical system provided between the objective lens and the deflection element for each of the observation optical paths.
Suzuki is related to Müller with respect to an ophthalmic microscope (¶0005) comprising: an observation system and an imaging system capable of stereoscopically imaging respective observation lights of the eye to be examined from the observation optical paths (¶0005: fundus camera capable of capturing images with parallax and two-aperture is provided at a position conjugate with the objective lens; ¶0139: two optical paths of stereo apertures 32d and 32d'; FIG. 1: objective lens 24; ¶0101: stereoscopic shooting mode); and a mode switching unit (¶0084; ¶0123: aperture switching mechanism, which consists of an aperture switching switch 101 that can manually switch the aperture plate 32, the light shield 33 and 33'; ¶0154; ¶0157; ¶0158; ¶0161-62: if stereoscopic shooting is not performed, the left and right stereoscopic apertures 32d and 32d' can be closed, and the central aperture 31a can be opened (step S58), and then proceed to step S19 of Figure 8a to perform monocular shooting; see FIGS. 1 & 21 showing mode switching unit 101+66), and Suzuki teaches: comprising: a variable magnification optical system provided between the objective lens and the deflection element for each of the observation optical paths (¶0093, 0120, 0138: illumination light passing through the objective lens 24, then the variable magnification lens 38a [variable magnification optical system], and is incident on the repositioning mirror 39…zoom lenses 38a and 38b; see FIG. 1 showing variable magnification optical system 38a-b provided between the objective lens 24 and the deflection element 39 for each of the observation optical paths).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the microscope of Müller in view of Suzuki to satisfy the claimed condition because such a variable magnification system is known and would be selected to achieve small through large parallax accompanied by either high magnification and narrow angle shooting with small pupils or wide angle zooming , as taught in paragraphs ¶0211, 0223 of Suzuki.
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 extension fee 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 SAMANVITHA SRIDHAR whose telephone number is (571)270-0082. The examiner can normally be reached M-F 0730-1700 (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BUMSUK WON can be reached on 571-272-2713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMANVITHA SRIDHAR/Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
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