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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) filed on April 15, 2024; October 20, 2025 have/has been acknowledged and considered by the examiner. Initialed copies of supplied IDS(s) forms are included in this correspondence.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a) a condensing member (means for condensing)…in claim 1
b) a movement mechanism configured to move the slit…in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 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 1-13 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.
As to claim 1, the claim recites (multiple instances) “substantially conjugate optically” which is a relative/subjective term (MPEP 2173.05(b)). Applicant’s specification provides no guidance on how close, or far, the locations of the various elements are to/from conjugate locations to qualify as “substantially”. For purposes of compact prosecution, Examiner will understand that so long as the elements are positioned within the optical train, such elements can necessarily be considered to be “substantially conjugate optically”.
As to claim 1, the claim recites “configured to be capable of being positioned at a position substantially conjugate” which is unclear if this requires the positioning at substantially conjugate, or if this is an optional recitation “capable of being…” (MPEP 2173.05(g),(h)). For purposes of compact prosecution, Examiner will understand the claim such that all elements are necessarily “capable of” such function.
As to claim 1, the claim recites (line 9) “the apertures” which lacks antecedent basis (MPEP 2173.05(e)). While the claim recites “an iris aperture” and “a slit-shaped aperture” the language regarding the light passing through “the apertures” wouldn’t include the slit-shaped aperture as per the claim and disclosure. Examiner will understand the claim as “light having passed through the iris aperture…”
Claims 2-13 are rejected as dependent upon claim 1.
As to claim 12, the claim recites “substantially conjugate optically” which is a relative/subjective term (MPEP 2173.05(b)). Applicant’s specification provides no guidance on how close, or far, the location of the hole mirror is to/from conjugate locations to qualify as “substantially”. For purposes of compact prosecution, Examiner will understand that so long as the elements are positioned within the optical train, such mirror can necessarily be considered to be “substantially conjugate optically”.
As to claim 13, the claim limitation “a movement mechanism configured to move the slit…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Applicant’s specification depicts only a proverbial black box (22D) without any structure, material, or acts to achieve the claimed function.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 12 are rejected under 35 U.S.C. 102(a1) as being anticipated by Nunokawa (US 4,422,736).
As to claim 1 (as understood), Nunokawa teaches an ophthalmic apparatus (Nunokawa Fig. 3) comprising
a light source configured to be capable of being positioned substantially conjugate optically to an iris of an eye to be examined (Nunokawa Fig. 3 - 11, 28; Fig. 4 - 7, 8; col. 40-55 - as shown/discussed, the light sources (28, 11) are in conjugate focus with aperture/diaphragms/slits (15, 14) which are conjugate eye (23) iris);
an iris aperture in which an aperture (Nunokawa Fig. 3 - 14; col. 4:1-11), thorough which illumination light from the light source passes (Nunokawa Fig. 3 - 11, 14), is formed at an eccentric position from an optical axis (Nunokawa Fig. 3 - 14a, 14b; Fig. 6 - 14a, 14b), and that is positioned at a position substantially conjugate to the light source (Nunokawa Fig. 3 - rays focused at both (11, 28) and (14) via lenses (29, 11));
a condensing member positioned between the light source and the iris aperture (Nunokawa Fig. 3 - 12, 29);
a slit in which a slit shaped aperture (Nunokawa Fig. 3 - 15, 15a; col. 3:60-68; col. 4:1-2; Fig. 4 - 8, 8a), through which the illumination light having passed through the apertures passes, is formed, (Nunokawa Fig. 3 - 15a, 14a, 14b), and that is capable of being positioned at a position substantially conjugate optically to a fundus of the eye to be examined (Nunokawa Fig. 3 - 15, 15a; Fig. 4 - 8, 8a; col. 3:49-50 - conjugate to the iris which is “substantially” at the fundus/retina);
an image sensor configured to receive returning light from the fundus illuminated by the illumination light having passed through the slit (Nunokawa Fig. 3 - 26; col. 3:55-60).
As to claim 2, Nunokawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Nunokawa further teaches the aperture of the iris aperture is positioned at a focal position of the condensing member (Nunokawa Fig. 3 - 29, 12, 14).
As to claim 3, Nunokawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Nunokawa further teaches two or more apertures are formed in the iris aperture (Nunokawa Fig. 6 - 14a, 14b).
As to claim 4, Nunokawa teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Nunokawa further teaches two or more condensing members arranged corresponding to each of the two or more apertures (Nunokawa Fig. 3 - 12, 29).
As to claim 5, Nunokawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Nunokawa further teaches a lens positioned at an eccentric position from an optical axis of the iris aperture (Nunokawa Fig. 3 - as shown, all lenses (12, 29, 18, 19, 21) extend off the optical axis and thus are “at an eccentric position”).
As to claim 12, Nunokawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Nunokawa further teaches a hole mirror (Nunokawa Fig. 3 - 20; col. 3:41-55) in which a hole is formed at a position substantially optically conjugate to the iris to be examined (Nunokawa Fig. 3 - 20; col. 3:41-55), and configured to couple an optical path of the illumination light having passed through the slit with an optical path of returning light from the fundus (Nunokawa Fig. 3 - 20, 20a).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 6, 13 are rejected under 35 U.S.C. 103 as being unpatentable over as applied to claim Nunokawa above, and further in view of Cornsweet et al. (US 3,614,214 - Cornsweet).
As to claim 6, Nunokawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, but doesn’t specify the lens is positioned so that an optical axis of the lens passes through the aperture of the iris aperture.
In the same field of endeavor Cornsweet teaches an ophthalmic apparatus having a light source (Cornsweet Fig. 1 - 18, 19), condensing lens (Cornsweet Fig. 1 - 24, 21) and an iris aperture having eccentric aperture(s) (Cornsweet Fig. 1 - 26, 22; Fig. 2 - 26, 22), an optical axis of the lens passes through the aperture of the iris aperture (Cornsweet Fig. 1 - 24, 26, 21, 22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide the lens optical axis through the aperture since, as taught by Cornsweet, such features allow for the light source to be focused at the aperture plane via the condensing member (Cornsweet col. 3:5-10).
As to claim 13, Nunokawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, but doesn’t specify a movement mechanism configured to move the slit in an optical axis direction according to a state of the eye to be examined.
In the same field of endeavor Cornsweet teaches an ophthalmic apparatus having a movement mechanism to move a slit in an optical axis direction according to a state of the eye to be examined (Cornsweet Fig. 3 - 29, 30, 50, 51, 42; col. 5:30-35; col. 5:54-75).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide a movement mechanism for the slit since, as taught by Cornsweet, such movement allows for maintaining the focus of the slit at/on the eye (Cornsweet Fig. 3 - 29, 30, 50, 51, 42; col. 5:30-35; col. 5:54-75).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nunokawa as applied to claim 1 above, and further in view of Cornsweet et al. (US 3,614,214) and Suga (US 2018/0295256).
As to claim 7, Nunokawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, and while Nunokawa teaches two or more apertures formed in the iris aperture (Nunokawa Fig. 6 - 14a, 14b), and two or more lenses as the condensing member (Nunokawa Fig. 3 - 29, 12) Nunokawa doesn’t specify two or more lenses corresponding to each of the two or more apertures, and the lenses having D-cut shape.
In the same field of endeavor Cornsweet teaches an ophthalmic apparatus with an iris aperture (Cornsweet Fig. 1 - 23) with two or more apertures (Cornsweet Fig. 2 - 26, 22) and two or more lenses at the condensing member arranged corresponding to each of the two or more apertures (Cornsweet Fig. 1 - 26, 22, 24, 21; col. 3:5-10) and Suga teaches providing D-cut lenses for apertures (Suga Fig. 1 - S, L4; para. [0033], [0034]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide lenses for the two or more apertures since as taught by Cornsweet, this allows for imaging the light source(s) at the aperture plane (Cornsweet Fig. 1 - 26, 22, 24, 21; col. 3:5-10) and providing D-cut shapes for the lenses since, as taught by Suga, such shapes allow for bring the lens axes close together (Suga Fig. 1 - S, L4; para. [0033], [0034]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nunokawa as applied to claim 1 above, and further in view of Matsumura et al. (US 3,925,793 - Matsumura).
As to claim 10, Nunokawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, but doesn’t specify the condensing member comprises a prism having deflecting surfaces for the number of apertures formed in the iris aperture, each of the deflecting surfaces deflecting the illumination light toward corresponding aperture, and a lens positioned between the prism and iris aperture.
In the same field of endeavor Matsumura teaches an ophthalmic apparatus having iris aperture (Matsumura Fig. 2 - 16; Fig. 3 - 16), a condensing member (Matsumura Fig. 2 - 12, 14, 15) comprising a prism (Matsumura Fig. 2 - 14; Fig. 4 - 14) having deflecting surfaces for the number of apertures formed in the iris aperture (Matsumura Fig. 4 - 14, 16), each of the deflecting surfaces deflecting the illumination light toward corresponding aperture (Matsumura Fig. 2 - 14, 16),, and a lens positioned between the prism and iris aperture (Matsumura Fig. 4 - 14, 15, 16).
It would have been obvious to one of ordinary skill in the art to provide such a condensing member since, as taught by Matsumura, such condensing members are well known in the art for the purpose of projecting the split iris apertures to the eye (Matsumura col. 2:31-50).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Nunokawa as applied to claim 1 above, and further in view of Kohayakawa et al. (US 5,847,805 - Kohayakawa).
As to claim 11, Nunokawa teaches all the limitations of the instant invention as detailed above with respect to claim 1, but doesn’t specify an optical scanner configured to deflect the illumination light having passed through the slit to guide the deflected illumination light to the fundus, the ophthalmic apparatus is configured to capture light receiving result of the returning light acquired by the image sensor in synchronization with a deflection control for the optical scanner.
In the same field of endeavor Kohayakawa teaches an ophthalmic apparatus having an optical scanner (Kohayakawa Fig. 1 - 12) configured to deflect the illumination light having passed through the slit to guide the deflected illumination light to the fundus (Koyahakawa Fig. 1 - 12; col. 2:39-60), the ophthalmic apparatus is configured to capture light receiving result of the returning light acquired by the image sensor in synchronization with a deflection control for the optical scanner (Koyahakawa Fig. 1 - 12; col. 2:39-68).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide a scanner since, as taught by Koyahakawa, such scanner are well known in the art for providing 2D scans of the retina and providing stereoscopic retinal images (Kohayakawa col. 2:60-67; col. 3:1-5).
Allowable Subject Matter
Claims 8, 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 8, although the prior art teaches an ophthalmic apparatus as detailed above in claim 5, the prior art taken either singularly or in combination fails to anticipate or fairly suggest the limitations of claim(s) 8, in such a manner that a rejection under 35 U.S.C. §102 or §103 would be proper, including all the numerical and structural limitations recited together in combination with the totality of particular features/limitations recited therein.
As to claim 9, although the prior art teaches an ophthalmic apparatus as detailed above in claim 7, the prior art taken either singularly or in combination fails to anticipate or fairly suggest the limitations of claim(s) 8, in such a manner that a rejection under 35 U.S.C. §102 or §103 would be proper, including all the numerical and structural limitations recited together in combination with the totality of particular features/limitations recited therein.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Kohayakawa (US 5,713,047); Kokayakawa et al. (US 4,820,037); Takahashi et al. (US 4,436,388); Sakane et al. (US 4,412,728); Matsumura (US 4,238,124) are cited as additional examples of ophthalmic devices with various slits and apertures.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 March 16, 2026