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 Amendment
This Office action is in response to the communication filed 6/30/2026.
The Amendments to Claims 1 and 17, filed 6/30/2026, are acknowledged and accepted.
The Cancellation of Claim 9, filed 6/30/2026, are acknowledged and accepted.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim(s) 1-5, 8, 10, 14-17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by (JP 4118407), hereinafter ‘407.
Regarding claims 1 and 17, ‘407 discloses an intraocular illumination device (paragraph 0013; figure 1) comprising: a fiber (19, optical waveguide) that guides light from a light source (not shown) (paragraph 0016; figure 1); and a holder (see annotated figure 1 below) that is disposed between an objective lens (13; objective lens) of a microscope (1; surgical microscope) and an eye (3; observation object) during eye surgery or examination and supports a tip portion (figure 1) of the fiber (paragraphs 0013-0014 and 0016; figure 1), wherein a through-hole (between 13 and 25 in figure 1) is formed in the holder coaxially (9, optical axis) with the optical axis of the microscope (paragraph 0013 and figure 1), a groove or hole is formed to extend outward from a vicinity of the through-hole in plan view (see annotated figure 1), the tip portion of the fiber is inserted into the groove or hole formed in the holder and supported (see annotated figure 1; a portion of the fiber is inserted), and the tip portion of the fiber is provided with a reflecting portion (21, changing mirror) that reflects the light guided through the fiber toward an inside of the eye (paragraph 0016; figure 1).
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Regarding claim 2, ‘407 discloses wherein an illumination unit (5, illumination device) including a mirror (21, changing mirror) that reflects the light guided through the fiber (19, optical waveguide) toward the inside of the eye is attached to the tip portion of the fiber (paragraph 0016), and the reflecting portion is configured by the mirror (paragraph 0016).
Regarding claim 3, ‘407 discloses wherein an end surface of the tip portion of the fiber is obliquely polished SO as to reflect the light guided through the fiber toward the eye (paragraph 0016 discloses that light is guided from a light source to the optical element/eye via the optical waveguide/fiber; Examiner notes that obliquely polished describes a surface or style that is refined or smooth, but in a slanted, indirect, or non-straightforward manner; figure 1 shows the optical waveguide is inclined), and the reflecting portion is configured by the end surface of the fiber (paragraphs 0016 and 0017).
Regarding claim 4, ‘407 discloses the claimed invention except for satisfying wherein a thickness of the holder is 10 mm or less. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a holder within the intraocular illumination device in order to satisfy 10 mm or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). This being reasonably based upon the holder needs to small enough to fit within the microscope.
Regarding claim 5, ‘407 discloses wherein the holder supports a plurality of the tip portions of the fibers(paragraphs 0016 and 0017).
Regarding claim 8, ‘407 discloses wherein the holder is configured integrally with a lens unit of the microscope (paragraphs 016-0017 and figure 1).
Regarding claim 10, ‘407 discloses wherein the tip portion of the fiber is positionally adjustable along the groove or hole in a state of being supported by the holder (paragraph 0016).
Regarding claim 14, ‘407 does not specifically disclose NA of the fiber on an emitting side is 0.55 or less.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to disclose NA of the fiber on an emitting side is 0.55 or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), this being reasonably based upon the openings can be varying sizes depending on the entry of the instruments.
Regarding claim 15, ‘407 disclose wherein the fiber is branched between the light source and the illumination unit (see figure 1).
Regarding claim 16, ‘407 discloses wherein the light source is at least one of a xenon lamp, a halogen lamp (paragraphs 0011 and 0018 disclose fluorescence light), and an LED.
Regarding claim 20, ‘407 discloses a microscope for eye surgery or examination comprising the intraocular illumination device (paragraphs 0014-0016).
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 7 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over (JP 4118407), hereinafter ‘407 as applied to claim 1 above, and further in view of Singh et al. (2020/0163737), hereinafter Singh.
Regarding claim 7, ‘407 discloses all the limitations in common with claim 1, and such is hereby incorporated.
‘407 does not specifically disclose wherein the holder is provided with an attachment portion attachable to a lens unit of the microscope.
Singh discloses wherein the holder (32, receptacle) is provided with an attachment portion (16, anchor) attachable to a lens unit (68, lens) of the microscope (paragraphs 0052 and 0053).
Therefore it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the device of ‘407 with the attachment portion of Singh for the purpose of fastening the holder to the microscope.
Regarding claim 18, Singh discloses wherein the intraocular illumination attachment is disposable (paragraphs 0019 and 0078).
Regarding claim 19, Singh discloses an intraocular illumination device (10, ocular lighting assembly) (paragraph 0053) comprising: the intraocular illumination attachment and the fiber (paragraphs 0019 and 0078).
Allowable Subject Matter
Claims 6 and 11-13 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.
Regarding claim 6, ‘407 does not disclose wherein a plurality of the reflecting portions provided at each of the plurality of tip portions are disposed in the holder so as to be arranged at equal intervals along a circumferential direction about an optical axis of the microscope.
Regarding claim 11, ‘407 does not disclose wherein the tip portion of the fiber is positionally adjusted along the groove or hole, so that the reflecting portion can be brought close to a range within 5 mm from the optical axis of the microscope.
Regarding claim 12, ‘407 discloses wherein a number of the tip portions of the fibers is four, the holder is formed with four of the grooves or holes, and the four grooves or holes are formed to extend in directions of 0°, 90°, 180°, and 270°, respectively, in polar coordinates about the optical axis of the microscope.
Regarding claim 13, ‘407 wherein a number of the tip portions of the fibers is four, the holder is formed with four of the grooves or holes, a first groove or hole is formed to extend in a direction of 0° from a position of 0°, a second groove or hole is formed to extend in a direction of 180° from a position of 180°, a third groove or hole is formed to extend in a direction of 0° or 180° from a position of 90°, and a fourth groove or hole is formed to extend in a direction of 0° or 180° from a position of 270° in polar coordinates about the optical axis of the microscope.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDI N THOMAS whose telephone number is (571)272-2341. The examiner can normally be reached Monday - Friday 7:30 - 3:30.
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/BRANDI N THOMAS/ Primary Examiner, Art Unit 2872
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