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 Arguments
Applicant's arguments filed 28 April 2026 have been fully considered but they are not persuasive. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Please see response to arguments below in the present Office action.
Examiner notes that the applicant should specifically point out the support for any and all amendments and show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4, 83 USPQ2d 1373, 1376, n.4 (Fed. Cir. 2007). See also MPEP § 714.02 and 2163.06 (“Applicant should ... specifically point out the support for any amendments made to the disclosure.”); and MPEP § 2163.04.
In response to the applicant's argument that "Objection the drawings has been made as set forth in the Office Action. The Applicant disagrees that the drawings are deficient. First of all, the drawings are schematic in nature. There is no obligation to illustrate every nuance of features that will be understood from the schematic representation by the person of ordinary skill in the art (hereinafter, the "skilled person")," the Examiner traverses. Examiner submits that the issues with the drawings are not the omission of mere nuances, for the inventive elements themselves (e.g., the controller) and their structural relationships used to determine the slit blade states are not adequately disclosed in the drawings or as-filed specification. Pursuant 37 CFR 1.83(a) and MPEP § 608.02, “the drawings must show every feature of the invention specified in the claims.” The applicant relying on what those skilled in the art would understand does not remedy the deficiency, for “it is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function”), quoting Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1380, 53 USPQ2d 1225, 1229 (Fed. Cir. 1999)”. See MPEP § 2163. The burden of proof is on the specification and drawings themselves to enable and describe the claimed features, not on the person having ordinary skill in the art to infer undisclosed structures capable of achieving the claimed result(s). Examiner reminds the applicant that “a patent claim is invalid if it is not supported by an enabling disclosure.” See MPEP § 2164. Examiner also reminds the applicant that enabling the public to understand the invention and its scope is just as important as enabling a person skilled in the art to understand, for “the requirement for an adequate disclosure ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent.” See MPEP § 608.
In response to the applicant's argument that "Regarding the slit distance detector 42, this may be, for example, a position sensor or a light intensity sensor as described at paragraph 47. These are well understood sensors and their schematic representation in figure 6 at reference numeral 42 is adequate illustration under all MPEP, CFR, and statutory requirements. Accordingly, withdrawal of the drawing objections is respectfully requested," the Examiner traverses. Examiner further submits that there is not sufficient structure shown in the drawings of the apparatus claimed (e.g., slit light detector 45 and slit distance detector 42 are shown as rectangles within a method illustration of the instant application, despite the claims explicitly being directed towards an apparatus). Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
In response to the applicant's argument that "Claims 1-7 have been rejected under 35 U.S.C. § 112(b) as set forth in the Office Action. The claims have been amended from the Japanese practice style of the priority application to U.S. practice. It is submitted that the claims fully conform to all requirements of 35 U.S.C. § 112. Accordingly, withdrawal of the rejections under 35 U.S.C. § 112 is respectfully requested," the Examiner traverses. See § 112(f) invoke section and § 112(b) rejection(s) below in the present Office action for further details and guidance.
In response to the applicant's argument that "As indicated, the claims have been amended to more clearly recite that which the Applicant regards as patentable. In so doing, the distinctions of the claimed invention from the teaching of Nakamura are readily apparent," the Examiner traverses. Examiner reminds the applicant that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). See § 112(a) rejection(s), § 112(b) rejection(s), and § 103 rejections below in the present Office action for further details and guidance.
In response to the applicant's argument that "Nakamura does not disclose that the brightness is adjusted according to the characteristics of the slit, as claimed. It may be observed that Nakamura does not describe a state in which the slit is closed or have any solution to light leakage in the closed state as addressed by the claimed subject matter," the Examiner traverses. Examiner notes that the features upon which applicant relies (i.e., "Nakamura does not disclose that the brightness is adjusted according to the characteristics of the slit, as claimed...have any solution to light leakage in the closed state as addressed by the claimed subject matter") are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Nakamura explicitly discloses a closed slit blade state (the two slit blades 33R and 33L are opened and closed; [0016]). In response to applicant's argument that "Nakamura does not...have any solution to light leakage in the closed state as addressed by the claimed subject matter," a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In response to applicant's argument that "Nakamura does not...have any solution to light leakage in the closed state as addressed by the claimed subject matter," the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant’s arguments with respect to Claim(s) 1-7 have been considered but are moot because the new ground of rejection does not rely on the same reference(s) applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. See § 103 rejections below in the present Office action for further details and guidance.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which they think the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
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, “a controller that is programmed to determine that the pair of slit blades are in a closed state,” “including, upon detection that that the pair of slit blades are in the closed state, change the light source from the on state to the off state” and “controller receives sensor data indicative of the slit light and the determination that the pair of slit blades are in the closed state is made by the controller in accordance with the sensor data” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. This is not an exhaustive list.
The drawings are objected to under 37 CFR 1.83(b) because they are incomplete. The drawings do not show every feature of the invention specified in the claims. Examiner further submits that there is not sufficient structure shown in the drawings of the apparatus claimed (e.g., slit light detector 45 and slit distance detector 42 are shown as rectangles within a method illustration of the instant application, despite the claims explicitly being directed towards an apparatus). Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
37 CFR 1.83(b) reads as follows:
When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
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 Objections
Claims 1-7 are objected to because of the following informalities:
With respect to Claim 1, the recitation “control the light source including, upon detection that that the pair of slit blades are in the closed state” appears to contain a repeated word, and thus, is grammatically incorrect.
Appropriate correction is required.
Claim Interpretation - 35 USC § 112(f)
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) are: “a controller that is programmed to determine that the pair of slit blades are in a closed state,” “including, upon detection that that the pair of slit blades are in the closed state, change the light source from the on state to the off state” and “controller receives sensor data indicative of the slit light and the determination that the pair of slit blades are in the closed state is made by the controller in accordance with the sensor data” in Claim 1, “the controller is further programmed to determine, from an output of the slit distance detector,” and “in response, change the light source from the on state to the off state” in Claim 2, “a slit opening/closing knob that is configured to adjust the distance between the pair of slit blades by a rotational operation of the slit opening/closing knob” in Claim 3, “a slit light detector that generates the sensor data indicative of the slit light” in Claim 4, “wherein the controller is further programmed to control the background illumination unit to irradiate” in Claim 5, and “wherein the controller is further programmed to detect…in an opened state and, in response, change the light source to the on state and stop the background illumination unit” in Claim 6. This is not an exhaustive list.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 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 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 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-7 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.
With respect to Claims 1 and 4, although the as-filed specification recites image signals generated from an image sensor and processing based on said image signals (e.g., see para. [0032] in as-filed specification dated 23 March 2024), the as-filed specification does not appear to describe a sensor device that “generates the sensor data indicative of the slit light,” nor does it expressly disclose a controller that “receives sensor data indicative of the slit light” or make determinations “in accordance with the sensor data.” Thus, the as-filed specification fails to provide written descriptive support for this newly claimed subject matter recited in the claims. “Wherein the controller receives sensor data indicative of the slit light and the determination that the pair of slit blades are in the closed state is made by the controller in accordance with the sensor data” in Claim 1 and “a slit light detector that generates the sensor data indicative of the slit light” in Claim 4 introduces a different type of input and control scheme not reasonably conveyed by the original disclosure. These limitations introduce a new functional relationship among the detection, the controller, and the blade-state determination algorithm that was not originally described with reference to the newly recited sensor data. There is no express disclosure or clear indication that the specification-only recited image signals inherently constitute the claimed sensor data for the specific purposes mentioned above. Therefore, a person having ordinary skill in the art would not recognize that the inventor was in possession of the presently claimed invention as of the filing date of the instant application.
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 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.
With respect to Claims 1-7, the claims primarily recite functional determinations and control operations performed by a controller that is “programmed” to detect a condition and change the state of a light source, rather than reciting the required structure for performing the functions should the claimed condition(s) occur. See MPEP § 2111.04 (II). Examiner submits that the claims do not adequately recite the structural characteristics of the controller that distinguishes the apparatus from other slit lamp microscopes, for the claims merely recite desired operational results. See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942) See MPEP §2173.05(g). The claim recitation of a controller “programmed to determine” and “control” based on sensor data merely recites an intended use to be employed by the claimed apparatus and does not differentiate the claimed apparatus from a prior art apparatus. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is unclear whether infringement occurs upon manufacture of a slit lamp microscope, or only when the controller actually performs the recited detection and control operations. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011), Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005). See Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) & MPEP § 2173(p). Examiner reminds the applicant that any slit lamp microscope having a generic programmable controller, sensor arrangement, and illumination system could be configured to carry out the claimed functions, and thus, the metes and bounds of the claims cannot be ascertained. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). It is also unclear what structural characteristics are required of the slit lamp microscope beyond conventional components capable of performing the stated functions, for functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See In re Translogic Technology, Inc., 504 F.3d 1249, 1258, 84 USPQ2d 1929, 1935-1936 (Fed. Cir. 2007). A person having ordinary skill in the art cannot determine with reasonable certainty the scope of the claims. See Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).
For the prosecution on merits, examiner interprets the claimed subject matter described above as introducing optional elements, optional structural limitations, optional expressions, and optional functionality within a slit-lamp microscope.
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed.
If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura JP 2009178459 A (see machine translation) in view of Liu CN 101558990 A (see machine translation).
With respect to Claim 1, Nakamura discloses a slit-lamp microscope (slit lamp microscope 1; [0008]) comprising:
an illumination system (illumination unit 5 comprising illumination optical system; [0008-9]) that includes a light source (light source 31; [0009]) the illumination system (illumination unit 5 comprising illumination optical system; [0008-9]) projects a slit light (illumination light for the slit; [0009]) onto a subject eye (projection lens 34 of illumination unit 5 projects the passed illumination light onto patient’s eye; [0009]);
a slit portion (the slit, slit blade 33; [0009]) having a pair of slit blades (two slit blades 33R, 33L; [0009]) in the illumination system (illumination unit 5 comprising illumination optical system; [0008-9]), wherein a distance between (as seen in figs. 1, 4, 6) the slit blades (two slit blades 33R, 33L; [0009]) from one another defines a width of the slit light (width of the slit; [0013]); and
a controller (operator; [0010] and [0018]) that is programmed to determine (via operation lever 93 that is operated by operator; [0018]) that the pair of slit blades (two slit blades 33R, 33L; [0009]) are in a closed state (slit blades 33R and 33L are closed; [0017]) and control (light source 31 is driven and illumination light is applied; [0033]) the light source (light source 31; [0009]) including, upon detection (via operation lever 93 that is operated by operator; [0018]) that that the pair of slit blades (two slit blades 33R, 33L; [0009]) are in the closed state (slit blades 33R and 33L are closed; [0017]), and
wherein the controller (operator; [0010] and [0018]) receives sensor data (via operation lever 93 that is operated by operator; [0018]) indicative of the slit light (illumination light for the slit; [0009]) and the determination that the pair of slit blades (two slit blades 33R, 33L; [0009]) are in the closed state (slit blades 33R and 33L are closed; [0017]) is made by the controller in accordance with the sensor data (via operation lever 93 that is operated by operator; [0018]).
Nakamura does not appear to explicitly teach the following limitation(s): a light source having an on state and an off state and changing the light source from the on state to the off state.
However, in the same field of endeavor, Liu teaches a light source switch for slit lamp microscope (figs. 1-2), wherein a light source switch device is designed that automatically turns on the light source when using a slit-lamp microscope for inspection and automatically turns off the light source after the inspection is completed ([0007]). Liu further teaches that when the examination is completed and the subject's head leaves or is not placed in the correct position, the switches will be turned off, the circuit will be disconnected, and the light source will automatically turn off ([0008]). Also, inspectors can control the light source's illumination via the main switch when needed ([0008]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the slit-lamp microscope of Nakamura to include the technical feature of the light source comprising an automatic on and off state that can detect inspection and competition of an examination, for the purpose of reducing electricity waste and equipment damage, simplifying the process for inspectors, and helping determine if an examinee’s head is in the correct position, as taught by Liu ([0009]).
Furthermore, when the structure of a claimed system is the same as that claimed, it must inherently perform the same function. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). Examiner reminds the applicant that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).
With respect to Claim 2, Nakamura in view of Liu teaches the slit-lamp microscope (slit lamp microscope 1; [0008]) according to claim 1, further comprising:
a slit distance detector (first holding member 62R and the second holding member 62L; [0017-18]) that detects the distance (e.g., distance between first stopper 92R and second stopper 92L such that when center of both is at illumination optical axis L0, both first holding member 62R and second holding member 62L rotate, thus slit blades 33R and 33L are fully opened; [0018]) between the pair of slit blades (two slit blades 33R, 33L; [0009]), and
wherein, the controller (operator; [0010] and [0018]) is further programmed to determine (via operation lever 93 that is operated by operator; [0018]), from an output of the slit distance detector (first holding member 62R and the second holding member 62L; [0017-18]), that the distance (e.g., fig. 4) between the pair of slit blades (two slit blades 33R, 33L; [0009]) is equal to or smaller than a set distance (based on center of first stopper 92R and second stopper 92L at illumination optical axis L0, distance between two slit blades 33R, 33L being equal as seen in fig. 4; [0018], position where member 62R and second holding member 62L rotate around support shaft 63 becomes equal; [0022]) and, in response, change the light source from the on state to the off state (light source switch device automatically turns on the light source when using slit-lamp microscope for inspection and automatically turns off the light source after the inspection is completed ([0007]; Nakamura in view of Liu).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the slit-lamp microscope of Nakamura to include the technical feature of the light source comprising an automatic on and off state that can detect inspection and competition of an examination, for the purpose of reducing electricity waste and equipment damage, simplifying the process for inspectors, and helping determine if an examinee’s head is in the correct position, as taught by Liu ([0009]). Examiner reminds the applicant that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).
With respect to Claim 3, Nakamura in view of Liu teaches the slit-lamp microscope (slit lamp microscope 1; [0008]) according to claim 2, further comprising:
a slit opening/closing knob (rotation knob 83; [0016]) that is configured to adjust the distance (thereby, two slit blades 33R and 33L are opened and closed; [0016]) between the pair of slit blades (two slit blades 33R, 33L; [0009]) by a rotational operation (rotation knob 83 is rotated; [0016]) of the slit opening/closing knob (rotation knob 83; [0016]),
wherein rotation resistance (rotation knob 83 within slit blade restricting mechanism 90 that combines and restricts slit blades 33R and 33L opening and closing; [0018]) against the rotational operation (rotation knob 83 is rotated; [0016]) of the slit opening/closing knob (rotation knob 83; [0016]) changes (stopper support 91 slidably held in opening/closing direction of slit blades 33R and 33L; [0018], restriction mechanism includes restriction position variable mechanism that changes restriction position of movement of one slit blade; [0006] and [0019]; fig. 6) when the pair of slit blades (two slit blades 33R, 33L; [0009]) are closed (slit blades 33R and 33L are closed; [0017]; Nakamura).
With respect to Claim 4, Nakamura in view of Liu teaches the slit-lamp microscope (slit lamp microscope 1; [0008]) according to claim 1, further comprising:
a slit light detector (binocular microscope within ophthalmic laser treatment apparatus; [0008]) that generates the sensor data indicative of the slit light (illumination light for the slit; [0009]; Nakamura).
With respect to Claim 5, Nakamura in view of Liu teaches the slit-lamp microscope (slit lamp microscope 1; [0008]) according to claim 1, further comprising:
an observation system (observation optical system arranged in the observation unit 6; [0010]) that observes or photographs light (via fundus observation; [0033]) reflected by the subject eye (illumination light is applied to check the fundus of the eye to be examined, confirmation of position of macular Y from position of blood vessel, optic nerve head n, pigment, and the like confirmed on fundus of eye E; [0033]); and
a background illumination unit (irradiation unit 8; [0008]) that irradiates the subject eye (laser irradiation optical system comprising laser irradiation position on fundus of patient's eye being moved; [0010]) with an infrared light (via broad-spectrum infrared light source 31, a halogen lamp; [0009]),
wherein the controller (operator; [0010] and [0018]) is further programmed to control (via operation lever 93 that is operated by operator; [0018]) the background illumination unit (irradiation unit 8; [0008]) to irradiate the subject eye (laser irradiation optical system comprising laser irradiation position on fundus of patient's eye being moved; [0010]) with the infrared light (via broad-spectrum infrared light source 31, a halogen lamp; [0009]) in response to the detection (via irradiation unit 8; [0008]) that the pair of slit blades (two slit blades 33R, 33L; [0009]) are closed (slit blades 33R and 33L are closed; [0017]; fig. 4) and the light source (light source 31; [0009]) is changed to the off state (light source switch device automatically turns off the light source after the inspection is completed ([0007]; Nakamura in view of Liu).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the slit-lamp microscope of Nakamura to include the technical feature of the light source comprising an automatic on and off state that can detect inspection and competition of an examination, for the purpose of reducing electricity waste and equipment damage, simplifying the process for inspectors, and helping determine if an examinee’s head is in the correct position, as taught by Liu ([0009]). Examiner reminds the applicant that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).
With respect to Claim 6, Nakamura in view of Liu teaches the slit-lamp microscope (slit lamp microscope 1; [0008]) according to claim 5, wherein the controller (operator; [0010] and [0018]) is further programmed to detect (via operation lever 93 that is operated by operator; [0018]) that the pair of slit blades (two slit blades 33R, 33L; [0009]) are in an opened state (slit blades 33R and 33L can be fully opened; [0022]) and, in response, change the light source (light source 31; [0009]) to the on state (light source switch device automatically turns off the light source after the inspection is completed ([0007]; Nakamura in view of Liu) and stop the background illumination unit (irradiation unit 8; [0008]) from irradiating the subject eye with infrared light (irradiation of illumination light to macular Y of patient is blocked by slit blades 33L, 33R; [0024]; Nakamura).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the slit-lamp microscope of Nakamura to include the technical feature of the light source comprising an automatic on and off state that can detect inspection and competition of an examination, for the purpose of reducing electricity waste and equipment damage, simplifying the process for inspectors, and helping determine if an examinee’s head is in the correct position, as taught by Liu ([0009]). Examiner reminds the applicant that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).
With respect to Claim 7, Nakamura in view of Liu teaches the slit-lamp microscope (slit lamp microscope 1; [0008]) according to claim 1, further comprising:
an observation system (observation optical system arranged in the observation unit 6; [0010]) that observes or photographs photograph (via fundus observation; [0033]) light reflected by the subject eye (illumination light is applied to check the fundus of the eye to be examined, confirmation of position of macular Y from position of blood vessel, optic nerve head n, pigment, and the like confirmed on fundus of eye E; [0033]), and
wherein the observation system (observation optical system arranged in the observation unit 6; [0010]) comprises a status indicator (insertion/removal mechanism of light shielding member within slit opening/closing mechanism corresponding to set brightness of light source 31; [0018] and [0033]) that indicates (slit lamp microscope secures wide illumination range while suppressing glare of patient's eye; [0004], via observation optical system arranged in the observation unit 6; [0010]) which one of the on state or the off state that the light source (light source 31; [0009]) is in (light source switch device automatically turns off the light source after the inspection is completed ([0007]; Nakamura in view of Liu).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the slit-lamp microscope of Nakamura to include the technical feature of the light source comprising an automatic on and off state that can detect inspection and competition of an examination, for the purpose of reducing electricity waste and equipment damage, simplifying the process for inspectors, and helping determine if an examinee’s head is in the correct position, as taught by Liu ([0009]). Examiner reminds the applicant that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).
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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/K MUHAMMAD/Examiner, Art Unit 2872 16 June 2026
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872
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