DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to the amendment filed 4/14/2026.
Notice of Pre-AIA or AIA Status
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-3 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tsai et al. (US20130250236) in view of Parel et al. (US20220071485) and Tanaka et al. (US20080123050).
Regarding claim 1, Tsai teaches an auxiliary staring and imaging focusing device (figs. 1-8, abstract, gaze-fixation aiding and image focusing device), comprising:
an illumination system (fig. 3, the illuminating system 30) having an illumination optical-path (paragraph [0035] illuminating optical path 39) to project a detection light (paragraph [0035] examination light) to illuminate a fundus (fig. 3, the fundus 22) of a subject's eye (fig. 3, the eye 20);
an imaging system (fig. 3, paragraph [0036] imaging system 40) having an imaging optical-path (fig. 3, optical-path 44) for receiving a reflected light (paragraph [0036], the reflected light pass) and a fundus image of the subject and imaging the reflected light and the fundus image (paragraph [0036], the fundus image) on an image display (the image display 43);
a staring device (paragraph [0037], gaze fixation device), located in the illumination optical-path (39), forming a staring surface provided with staring points (the fixation points 53) contrast with a detection light for the subject to watch (paragraph [0012] a gaze fixation surface formed in the illuminating optical path for the examinee to gaze on and a plurality of fixation points provided on the gaze fixation surface with a contrast being created between the examination light and the fixation points 53); and
a focusing device (paragraph [0012], the focusing device) provided with a split-image screen (fig. 3, the split-image screen 52) in the illumination optical-path (fig. 3, the 39), the split-image screen (fig. 3, the 52) having a shutter (paragraph [0038], light blocking plate 521) with a default size (paragraph [0012] light blocking plate 521 of a predetermined size), and two facing prisms (paragraph [0038],two prisms 523) being disposed on the shutter (paragraph [0038], the 521) and a light-transmitting space (paragraph [0038], the light-transmissible slit 522) being formed between the two prisms (two prisms 523) for a center staring point (paragraph [0039], center of fixation points 53) to pass through (paragraph [0038], the examination light passes through the slit 522).
Tsai does not explicitly teach wherein. the two prisms are made of plastic material.
However, Parel teaches the analogous prisms (fig. 2A, prisms 42), and further teaches wherein the two prisms are made of plastic material (paragraph [0143], fig. 2A, the prism(s) 42 may comprise plastics).
However, it has been held that where the selection of a known material based on its suitability for its intended use is disclosed in the prior art, a prima facie case of obviousness exists. See MPEP § 2144.07, citing In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). See also Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), as cited in MPEP § 2144.07; thus, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the two prisms material of Tsai to have the two prisms are made of plastic material as taught by Parel for the purpose of reducing the bulk and weight of the prism (Parel, paragraph [0147]).
Tsai does not explicitly teach wherein the light-transmitting space is formed by digging a hole in the middle of the two prisms.
However, Tanaka teaches the analogous imaging focusing device (Tanaka, paragraph [0010] The present invention provides a focusing unit, and an ophthalmic photographing apparatus capable of inserting and removing a focusing unit into and from an illumination light path and easily projecting an index onto a fundus), and further teaches wherein the light-transmitting space (Tanaka, fig. 8, opening 14b) is formed by digging a hole (see Tanaka, fig. 8, the opening 14b is a hole) in the middle of the two prisms (see Tanaka, fig. 8, two prisms 14c and 14d; as shown in fig. 8, when viewed from the front, the opening 14b is in the middle of the two prisms 14c and 14d; paragraph [0040], the split prisms 14c and 14d are a pair of prisms that divide the opening 14b in two; further, the limitations of “is formed by digging” in the claim is product by process limitations, and don’t impart any requirement on the product itself other than what is already structurally claimed, See MPEP 2173.05(p) sec. II)).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the two prisms of Tsai to dig a hole in the middle of the two prisms as taught by Tanaka for the purpose of easily projecting an index onto a fundus (Tanaka, paragraph [0010]).
Regarding claim 2, combination Tsai-Parel-Tanaka discloses the invention as described in Claim 1, and Tsai further teaches wherein the light-transmitting space (paragraph [0038], the 522) is formed by separating the two prisms from the middle of the two prisms (the light-transmitting space 522 is formed by separating the two prisms 523 from the middle of the two prisms 523; further, the limitations of “formed by separating” in the claim is product by process limitations, and don’t impart any requirement on the product itself other than what is already structurally claimed, See MPEP 2173.05(p) sec. II)
Regarding claim 3, combination Tsai-Parel-Tanaka discloses the invention as described in Claim 1 and Tsai further teaches wherein the light-transmitting space (the 522) is formed by replacing the middle of the two prisms (523) with a plane (light-transmissible slit 522 having a plane; further, the limitations of “is formed by replacing” in the claim is product by process limitations, and don’t impart any requirement on the product itself other than what is already structurally claimed, See MPEP 2173.05(p) sec. II).
Regarding claim 5, combination Tsai-Parel-Tanaka discloses the invention as described in Claim 1 and Tsai further teaches wherein the illumination system (fig. 3, 30) is provided with an additional light-emitting unit (paragraph [0015]-[0016] light-emitting unit) set as a light-emitting diode, a lamp, a light bulb or an optical fiber (as light-emitting diodes, lamp tubes, light bulbs or optical fibers).
Regarding claim 6, combination Tsai-Parel-Tanaka discloses the invention as described in Claim 1 and Tsai further teaches wherein the staring point (53) and the split-image screen (52) are located on the same staring surface (see Tsai fig. 3, the 53 and 52 are located on the same 53 surface), and the staring surface is set as a vertical plane (paragraph [0049], flat vertical plane 57), and the staring point (53) is located at set positions in four directions of up, down, left and right (paragraph [0039], the four fixation points 53 are spaced from the split image screen 52 to locate on an upper, a lower, a left and a right side thereof, respectively) outside the split-image screen (52).
Regarding claim 7, combination Tsai-Parel-Tanaka discloses the invention as described in Claim 1 and Tsai further teaches wherein the staring point (53) and the split-image screen (52) are located on the same staring surface (see Tsai fig. 3, the 53 and 52 are located on the same 53 surface), and the staring surface (paragraph [0050]) is set as a concave surface (concave surface 58) corresponding to the curvature of the human eye (paragraph [0050], the curved surface 58 is corresponding to the human eye curvature), and the staring point (53) is located on the concave surface (58) in four directions of up, down, left and right in front of the split-image screen (paragraph [0050], in four directions of up, down, left and right in front of the split-image screen 52).
Regarding claim 8, combination Tsai-Parel-Tanaka discloses the invention as described in Claim 9 and Tsai further teaches wherein the detection light is a visible light (paragraph [0039] visible light), and the staring point (53) is provided with at least one opaque-type light-shielding unit (paragraph [0039], the light-impenetrable zone 54 that blocks).
Regarding claim 9, combination Tsai-Parel-Tanaka discloses the invention as described in Claim 8 and Tsai further teaches wherein the split-image screen (52) and the staring point (53) jointly form an opaque area (zone 54) blocking the illumination optical-path (39), and a light-transmitting area (the zone 55, paragraph [0039], light-penetrable zone 55 is made of a transparent material 55) is formed by blocks outside the opaque area (zone 54).
Regarding claim 10, combination Tsai-Parel-Tanaka discloses the invention as described in Claim 9 and Tsai further teaches wherein (paragraph [0039]) the light-transmitting area (zone 55) is provided with a transparent substrate (paragraph [0039], transparent substrate 551), and the split-image screen (52) is disposed in the center of the transparent substrate (551), and the light-shielding unit (531) is disposed at a set position on the transparent substrate (551) outside the split-image screen (52).
Regarding claim 11, combination Tsai-Parel-Tanaka discloses the invention as described in Claim 1 and Tsai further teaches wherein (paragraph [0041]) the detection light is an invisible light (the infrared light), and the staring point (53) is provided with at least one light-emitting unit (532) that can selectively control lighting or dimming, the light-emitting unit is set as a light-emitting diode, a lamp, a light bulb or an optical fiber (the light-emitting unit 532 can be configured as a light-emitting diode).
Response to Arguments
Applicant’s arguments with respect to claims have been considered, see Remarks Page. 5-8 with respect to the 35 U.S.C.&& 102 and 103 rejection have been fully considered and are not persuasive.
In the remarks, applicant argues that:
Please refer to FIG. 8 (see above) and paragraph 0040 of the specification of Tanaka. Paragraph 0040 of the specification of Tanaka recites "As shown in FIG. 8, the split prisms 14c and 14d are a pair of prisms that divide the opening 14b in two. These prisms are attached so that their deflection directions are opposite to each other. Therefore, deflected by the prisms 14c and 14d, the light beam from the index illuminating member 15 is split into two, right-half and left-half, directional beams and combined with the illumination optical system in the form of two slit images at the diaphragm opening 14b. According to FIG. 8 and paragraph 0040 of the specification of Tanaka, it can be found that "the split prisms 14c and 14d are a pair of prisms that divide the opening 14b in two" instead of "digging a hole in the middle of the split prisms 14c and 14d to form the opening 14b". That is to say, FIG. 8 and paragraph 0040 of the specification of Tanaka fail to disclose the distinguishable feature of "the light-transmitting space is formed by digging a hole in the middle of the two prisms" as recited in the amended independent Claim 1 of the application.
In response to applicant's argument(s) of 1
See claim 1 described, Tsai in view of Parel and Tanaka, and Tanaka further teaches wherein the light-transmitting space (Tanaka, fig. 8, opening 14b; also see fig. 1, paragraph [0034] “the control unit 23 is connected to a light source driving circuit 27 that drives the photographing illuminating member 21 and the observation illuminating member 22”; thus, see fig.1 and fig.8 have light from illuminating member pass through opening 14b) is formed by digging a hole (see Tanaka, fig. 8, the opening 14b is a hole) in the middle of the two prisms (see Tanaka, fig. 8, two prisms 14c and 14d; as shown in fig. 8, when viewed from the front, the opening 14b is in the middle of the two prisms 14c and 14d; paragraph [0040], the split prisms 14c and 14d are a pair of prisms that divide the opening 14b in two; further, the limitations of “is formed by digging” in the claim is product by process limitations, and don’t impart any requirement on the product itself other than what is already structurally claimed, See MPEP 2173.05(p) sec. II)). Thus, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the two prisms of Tsai to dig a hole in the middle of the two prisms as taught by Tanaka for the purpose of easily projecting an index onto a fundus (Tanaka, paragraph [0010]).
In the remarks, applicant argues that:
Moreover, since the two prisms 14c and 14d of Tanaka are made of glass material, the prisms are prone to cracking after processing.
In response to applicant's argument(s) of 2
See claim 1 described, Tsai in view of Parel and Tanaka, and Parel further teaches wherein the two prisms are made of plastic material (paragraph [0143], fig. 2A, the prism(s) 42 may comprise plastics).
However, it has been held that where the selection of a known material based on its suitability for its intended use is disclosed in the prior art, a prima facie case of obviousness exists. See MPEP § 2144.07, citing In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) and Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988). See also Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), as cited in MPEP § 2144.07; thus, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the two prisms material of Tsai to have the two prisms are made of plastic material as taught by Parel for the purpose of reducing the bulk and weight of the prism (Parel, paragraph [0147]).
Examiner's Note
Regarding the references, the Examiner cites particular figures, paragraphs, columns and line numbers in the reference(s), as applied to the claims above. Although the particular citations are representative teachings and are applied to specific limitations within the claims, other passages, internally cited references, and figures may also apply. In preparing a response, it is respectfully requested that the Applicant fully consider the references, in their entirety, as potentially disclosing or teaching all or part of the claimed invention, as well as fully consider the context of the passage as taught by the reference(s) or as disclosed by the Examiner.
Conclusion
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 KUEI-JEN LEE EDENFIELD whose telephone number is (571)272-3005. The examiner can normally be reached Mon. -Thurs 8:00 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached on (571) 270-1284.The fax phone number for the organization where this application or proceeding is assigned is 571-273- 8300.
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/KUEI-JEN L EDENFIELD/
Examiner, Art Unit 2872
/WILLIAM R ALEXANDER/Primary Examiner, Art Unit 2872
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