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 .
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 controller that is configured to control the light source; wherein the controller is configured to turn the light source off when the pair of slit blades is closed, slit distance detector that is configured to detect a distance between the pair of slit blades, distance between the pair of slit blades is equal to or smaller than a set distance based on a detection result from the slit distance detector, 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, slit opening/closing knob is configured such that a rotation resistance against the rotational operation of the slit opening/closing knob partially changes when the slit opening/closing knob is in a rotational position at which the pair of slit blades are closed, a slit light detector that is configured to detect a condition of the slit light, condition of the slit light is not in a proper condition based on a detection result from the slit light detector, an observation system that is configured to observe or photograph a reflection light reflected by the subject eye, a background illumination unit that is configured to irradiate the subject eye with an infrared light, controller is configured to start irradiating the subject eye with the infrared light by the background illumination unit when the pair of slit blades are closed and the light source is turned off, controller is configured such that, when the pair of slit blades are opened, the light source is turned on and the infrared light irradiation by the background illumination unit is stopped, and observation system comprises a status indicator that is configured to indicate a condition that the light source is turned on or off must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 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) is/are: "a controller that is configured to control the light source," and "the controller is configured to turn the light source off when the pair of slit blades is closed" in Claim 1, "a slit distance detector that is configured to detect a distance between the pair of slit blades," "the controller determines that the distance between the pair of slit blades is equal to or smaller than a set distance based on a detection result from the slit distance detector," and "the controller determines that the pair of slit blades is closed and turns off the light source" in Claim 2, "the slit opening/closing knob is configured such that a rotation resistance against the rotational operation of the slit opening/closing knob partially changes when the slit opening/closing knob is in a rotational position at which the pair of slit blades are closed" in Claim 3, "a slit light detector that is configured to detect a condition of the slit light" and "the controller is configured to turn off the light source when the controller determines that the condition of the slit light is not in a proper condition based on a detection result from the slit light detector" in Claim 4, "an observation system that is configured to observe or photograph a reflection light reflected by the subject eye" and "the controller is configured to start irradiating the subject eye with the infrared light by the background illumination unit when the pair of slit blades are closed and the light source is turned off" in Claim 5, "the controller is configured such that, when the pair of slit blades are opened, the light source is turned on and the infrared light irradiation by the background illumination unit is stopped" in Claim 6, and "observation system that is configured to observe or photograph a reflection light reflected by the subject eye" and "the observation system comprises a status indicator that is configured to indicate a condition that the light source is turned on or off" in Claim 7.
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(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, and notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. 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).
In the current instance, “a controller that is configured to control the light source; wherein the controller is configured to turn the light source off when the pair of slit blades is closed” in Claim 1, “when the controller determines that the distance between the pair of slit blades is equal to or smaller than a set distance based on a detection result from the slit distance detector, the controller determines that the pair of slit blades is closed and turns off the light source” in Claim 2, and “to detect a condition of the slit light, wherein the controller is configured to turn off the light source when the controller determines that the condition of the slit light is not in a proper condition based on a detection result from the slit light detector” in Claim 4 recites functional language, for the claim limitations merely recite a description of a problem to be solved or a function or result achieved by the invention. This is not an exhaustive list, for the claims are replete with purely functional language without reciting sufficient structure of the apparatus claimed.
These limitations are purely functional and result-oriented. For example, “to detect a condition of the slit light, wherein the controller is configured to turn off the light source when the controller determines that the condition of the slit light is not in a proper condition based on a detection result from the slit light detector” in Claim 4 recites a chain of abstract actions (e.g., “determining,” “based on a detection result,” “turn off,” etc.) but no physical structure is identified that enables these actions. The controller is a generic component and the claims do not specify any circuitry, processing elements, algorithms, control logic, signal paths, etc. that perform the determination nor the shutoff mechanism. Thus, these limitations claim any apparatus capable of producing the stated results, regardless of how it is implemented, since the claims fail to provide clear structural boundaries for the claimed apparatus.
Furthermore, the broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. See MPEP § 2111.04 (II). In the current instance, “a proper condition” implies a hypothetical or conditional scenario without clarifying the structure or whether the claimed limitation is a necessary or optional aspect of the product(s). This creates uncertainty about whether the claimed elements and limitations are required or merely illustrative. See 35 USC § 112(f) rejection for further details.
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 Claims 1-7, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. 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).
In the current instance, “the controller is configured to turn the light source off when the pair of slit blades is closed” in Claim 1, “slit distance detector that is configured to detect a distance between the pair of slit blades, wherein, when the controller determines that the distance between the pair of slit blades is equal to or smaller than a set distance based on a detection result from the slit distance detector, the controller determines that the pair of slit blades is closed and turns off the light source” in Claim 2, and “slit light detector that is configured to detect a condition of the slit light, wherein the controller is configured to turn off the light source when the controller determines that the condition of the slit light is not in a proper condition based on a detection result from the slit light detector” in Claim 4 recite methods of using the apparatus within apparatus claim limitations. This is not an exhaustive list, for the claims are replete with claims reciting both an apparatus and method steps of using the apparatus.
For example, “when the controller determines that the distance between the pair of slit blades is equal to or smaller than a set distance based on a detection result from the slit distance detector, the controller determines that the pair of slit blades is closed and turns off the light source” in Claim 2 creates infringement ambiguity, for infringement hinges on the controller performing active decision-making and control steps in response to detected conditions. These are use-based operations that occur only during operation of the device and are characteristics of a method claim, not an apparatus claim. Thus, it is unclear whether infringement occurs when one creates a system that allows the controller to determine the slit blade distance and shut off the light source, or whether infringement occurs when the controller actually performs the determination and turns off the light source during operation. See Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) & MPEP § 2173(p).
With respect to Claims 1-7, the sentences recite “configured to generate the slit light having a width by passing a light” in Claim 1, “the distance between the pair of slit blades is equal to or smaller than a set distance based on a detection result” in Claim 2, “a rotation resistance against the rotational operation of the slit opening/closing knob partially changes” in Claim 3, and “the slit light is not in a proper condition based on a detection result” in Claim 4, which seems to be ambiguous in definition. The terms “the slit light having a width,” “a set distance based on a detection result,” “a rotation resistance…partially changes,” and “a proper condition based on a detection result” are relative terms which render the claims indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This is not an exhaustive list, for the claims are replete with limitation reciting relative terminology.
For example, “the distance between the pair of slit blades is equal to or smaller than a set distance based on a detection result” in Claim 2 does not have a clear, objective meaning because the phrase “a set distance based on a detection result” does not define the distance by any objective, fixed, or structurally bounded value, and instead defines it in relation to an unspecified detection result. Thus, the claim fails to specify how the distance is set, what reference point or scale is utilized, or what range or threshold constitutes the set distance. Examiner further submits that the set distance would vary depending on the detection result and the manner of detection, for its scope would change with implementation and calibration. Therefore, a person having ordinary skill in the art cannot determine the scope of the limitation with reasonable certainty. Since the scope cannot be ascertained, the claim limitations are rendered indefinite under § 112(b). All other claim limitations have also been rendered indefinite by the use of any undefined, relative terminology within the claims.
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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura JP 2009178459 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 is configured to project 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]) that is configured to generate the slit light (illumination light for the slit; [0009]) having a width (width of the slit; [0013]) by passing a light from a light source (light source 31; [0009]) through a slit ([0009]) between a pair of slit blades (two slit blades 33R, 33L; [0009]) in the illumination system (illumination unit 5 comprising illumination optical system; [0008-9]); and
a controller (operator; [0010] and [0018]) that is configured to control (light source 31 is driven and illumination light is applied; [0033]) the light source (light source 31; [0009]);
wherein the controller (operator; [0010] and [0018]) is configured to turn the light source (light source 31; [0009]) off (light source 31 is set to a brightness that does not hinder the observation or treatment of the eye E, inclusive of being set to no brightness; [0033]) when the pair of slit blades (two slit blades 33R, 33L; [0009]) is closed (slit blades 33R and 33L are closed; [0017]).
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). See also MPEP § 2112.02. 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).
With respect to Claim 2, Nakamura discloses 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 is configured to detect a 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]),
wherein, when the controller (operator; [0010] and [0018]) determines (via operation lever 93 that operated by operator; [0018]) 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 a detection result (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]) from the slit distance detector (first holding member 62R and the second holding member 62L; [0017-18]), the controller (operator; [0010] and [0018]) determines that the pair of slit blades (two slit blades 33R, 33L; [0009]) is closed (slit blades 33R and 33L are closed; [0017]) and turns off the light source (light source 31 is set to a brightness that does not hinder the observation or treatment of the eye E, inclusive of being set to no brightness; [0033]).
With respect to Claim 3, Nakamura discloses 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 the slit opening/closing knob (rotation knob 83; [0016]) is configured such that a 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]) partially 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 slit opening/closing knob (rotation knob 83; [0016]) is in a rotational position (as seen in fig. 4) at which the pair of slit blades (two slit blades 33R, 33L; [0009]) are closed (slit blades 33R and 33L are closed; [0017]).
With respect to Claim 4, Nakamura discloses 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 is configured to detect a condition (slit lamp microscope secures wide illumination range while suppressing glare of patient's eye; [0004]) of the slit light (illumination light for the slit; [0009]),
wherein the controller (operator; [0018], operation of manipulator 27 by operator moving laser irradiation position on fundus of patient's eye; [0010]) is configured to turn off the light source (light source 31 is set to a brightness that does not hinder the observation or treatment of the eye E, inclusive of being set to no brightness; [0033]) when the controller (operator; [0010] and [0018]) determines that the condition ([0004]) of the slit light (illumination light for the slit; [0009]) is not in a proper condition based on a detection result (miosis in patient's eye E; [0033]) from the slit light detector (binocular microscope within ophthalmic laser treatment apparatus; [0008]).
With respect to Claim 5, Nakamura discloses 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 is configured to observe or photograph a reflection 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 is configured to irradiate 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 configured to start (via operator; [0010]) irradiating 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]) by the background illumination unit (irradiation unit 8; [0008]) when 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 turned off (light source 31 is set to a brightness that does not hinder the observation or treatment of the eye E, inclusive of being set to no brightness; [0033]).
With respect to Claim 6, Nakamura discloses the slit-lamp microscope (slit lamp microscope 1; [0008]) according to claim 5, wherein the controller (operator; [0010] and [0018]) is configured such that, when the pair of slit blades (two slit blades 33R, 33L; [0009]) are opened (slit blades 33R and 33L can be fully opened; [0022]), the light source (light source 31; [0009]) is turned on (light source 31 is driven and illumination light is applied to check fundus of eye to be examined; [0033]) and the infrared light (via broad-spectrum infrared light source 31, a halogen lamp; [0009]) irradiation (laser irradiation optical system comprising laser irradiation position on fundus of patient's eye being moved; [0010]) by the background illumination unit (irradiation unit 8; [0008]) is stopped (irradiation of illumination light to macular Y of patient is blocked by slit blades 33L, 33R; [0024]).
With respect to Claim 7, Nakamura discloses 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 is configured to observe or photograph (via fundus observation; [0033]) a reflection 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]),
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 is configured to indicate a condition (slit lamp microscope secures wide illumination range while suppressing glare of patient's eye; [0004]) that the light source (light source 31; [0009]) is turned on or off (light source 31 is set to a brightness that does not hinder the observation or treatment of the eye E, inclusive of being set to no brightness, light quantity of light source 31 is set low, and is dark enough to prevent miosis in patient's eye E; [0033]).
Claim 1 is also rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanegami et al. JP S60114233 A (see machine translation; herein after "Kanegami").
With respect to Claim 1, Kanegami discloses a slit-lamp microscope (slit lamp microscope; pg. 1; fig. 1) comprising:
an illumination system (slit lighting device 26; pg. 2) that is configured to project a slit light (slit lighting; pg. 2; fig. 1) onto a subject eye (eye E; pg. 2; fig. 1);
a slit portion (a slit of the slit mechanism 5; pg. 1; fig. 4) that is configured to generate the slit light (slit lighting; pg. 2; fig. 1) having a width (as seen in fig. 1) by passing a light from a light source (slit illumination lamp 1; pg. 2; fig. 1) through a slit (a slit of the slit mechanism 5; pg. 1; fig. 4) between a pair of slit blades (slit blades 5a, 5b; pg. 1; fig. 4) in the illumination system (slit lighting device 26; pg. 2); and
a controller (arithmetic circuit 25; pg. 2; fig. 5) that is configured to control the light source (arithmetic circuit 25 for driving slit lighting device 26 including slit illumination lamp 1 and strobe lamp 2 for slit lighting; pg. 2);
wherein the controller (arithmetic circuit 25; pg. 2; fig. 5) is configured to turn the light source (slit illumination lamp 1; pg. 2; fig. 1) off when the pair of slit blades (slit blades 5a, 5b; pg. 1; fig. 4) is closed (when width W of slit is zero, that is, when slit is completely closed, light emission of slit illumination bag R26 is performed, is automatically stopped in a trap, and light is emitted only by external lighting device 21, and thus, slit illumination lamp 1 is turned off; pg. 3).
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). See also MPEP § 2112.02. 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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Yoshimura et al. US 6283596 B1 discloses a slit-lamp biomicroscope substantially similar to that of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K MUHAMMAD whose telephone number is (571)272-4210. The examiner can normally be reached Monday - Thursday 1:00pm - 9:30pm EDT.
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/K MUHAMMAD/Examiner, Art Unit 2872 27 January 2026
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872