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 .
Claim Objections
The correction to claim 9 has been acknowledged and reviewed and therefore the objection made in the previous office action has been removed.
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 limitations are: configured to generate at least one second lighting beam in claim 1; configured to determine an intensity distribution in claim 3; configured to sequentially illuminate in claim 5; configured to generate the first lighting beam in claim 6; configured to reflect the first lighting beam in claim 7; configured to measure a first photoreaction of the eye in claim 10; configured to be fastened in claim 11.
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 § 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, 6, 8, 16, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Everett (20200085294).
Regarding claim 1, Everett discloses an optical device for capturing images of an eye of an individual (Fig 2a, [0037], ophthalmic imaging system), the optical device ([0037], slit-scanning ophthalmoscope) comprising: a first measurement channel (101); and a second measurement channel (103), wherein the first measurement channel (101) is implemented by a first device ([0037], Fig 2a, illumination light from source 110) configured to: generate at least one first lighting beam (102) directed toward the eye (106) and along a first axis (Fig 2a, [0037], imaged to the retina at the back of the eye), and capture at least one first image of the eye ([0037], signal from the light collected by the camera 113 as the beams are swept across the retina) when illuminated ([0037], measure the effect of the optical system on these two illumination paths) by the at least one first lighting beam (102), wherein the second measurement channel (103) being is implemented by a second device ([0037], Fig 2a, illumination light from source 111) configured to: generate at least one second lighting beam (104) directed toward the eye (106) and along a second axis (Fig 2a, [0037], imaged to the retina at the back of the eye) separated from the first axis by at least 5° (Fig 2a shows 102 and 104 separated by angle greater that 5° and within the claimed range), and capture at least one second image of the eye when illuminated by the at least one second lighting beam ([0037], signal from the light collected by the camera 113 as the beams are swept across the retina), and wherein the first measurement channel (101) and the second measurement channel (103) being are synchronized together (Fig 2a, [0038], illumination paths 101 and 103 will be displaced vertically relative to one another on the retina).
Regarding claim 6, Everett discloses wherein the first measurement channel (101) and the second measurement channel (103) are located on a same single module (Fig 2a, [0038], illumination paths 101 and 103 will be displaced vertically relative to one another on the retina), and wherein the optical device ([0037], slit-scanning ophthalmoscope) further comprises a mirror (108), the mirror (108) and the same single module being configured to generate (Fig 2a, [0037], light returning from the retina after illumination from the upper and lower illuminations follow paths 102 and 104) the first lighting beam (102) and the second lighting beam (104).
Regarding claim 8, Everett discloses wherein the first lighting beam having a first optical wavelength ([0070], place two illumination sources (e.g. LEDs or lasers)) and the second lighting beam having a second optical wavelength different from the first optical wavelength ([0070], place two illumination sources (e.g. LEDs or lasers)).
Regarding claim 16, Everett discloses wherein the second axis is separated from the first axis by at least 10° (Fig 2a shows 102 and 104 separated by angle greater that 10° and within the claimed range).
Regarding claim 17, Everett discloses wherein the second axis is separated from the first axis by at least 20° (Fig 2a shows 102 and 104 separated by angle greater that 20° and within the claimed range).
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Everett (20200085294) in view of Mrochen (20180125355).
Regarding claim 2, Everett discloses the invention as described within claim 1 but does not teach wherein the first device further includes a first camera and the second device includes a second camera. However, within a similar endeavor, Mrochen teaches wherein the first device further includes a first camera and the second device includes a second camera (Fig 1, [0084], cameras 103, 104, 105 collect simultaneously light emanating from the multiple point sources 101 and reflected from the anterior cornea 111). It would have been obvious to one of ordinary skill in the art to combine the ophthalmic device of Everett with the components of Mrochen for the purpose of providing a technique for that optimizes performing ophthalmic measurements on an eye (Mrochen, [0008]).
Regarding claim 19, Everett in view of Mrochen discloses the invention as described within 2 and Mrochen further teaches wherein the first device further includes a first plurality of first light sources and wherein the second device further includes a second plurality of second light sources (Fig 2, [0077], 12 LEDs 101 in an outer circle and 9 LEDs 101 in an inner circle). It would have been obvious to one of ordinary skill in the art to combine the ophthalmic device of Everett with the components of Mrochen for the purpose of providing a technique for that optimizes performing ophthalmic measurements on an eye (Mrochen, [0008]).
Claim(s) 3 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Everett (20200085294) in view of Mrochen (20180125355) and in further view of Baranton (20120274902).
Regarding claim 3, Everett in view of Mrochen discloses the invention as described within 2 but does teach wherein the first camera and/or the second camera is further configured to determine an intensity distribution of reflection of an illuminating beam. However, Baranton teaches wherein the first camera and/or the second camera is further configured to determine an intensity distribution of reflection of an illuminating beam ([0183]], electronic and computer device uses the signal representative of at least one image and preferably the signals representative of each of the images; [0187], electronic and computer device analyzes each captured image to determine the spatial distribution of the intensity of the retinal reflection of the corresponding source). It would have been obvious to one of ordinary skill in the art to combine the ophthalmic device of Everett and Mrochen with the components of Baranton for the purpose of optimizing the images accurately captured that present retinal reflection of the eye (Baranton, [0195]).
Regarding claim 20, Everett in view of Mrochen and in further view of Baranton discloses the invention as described within claim 3 and Baranton further teaches wherein the first device further includes a first plurality of first light sources and wherein the second device further includes a second plurality of second light sources (Fig 2, [0112], lighting means 20 of the measuring device 100 comprise a plurality of light sources 20). It would have been obvious to one of ordinary skill in the art to combine the ophthalmic device of Everett and Mrochen with the components of Baranton for the purpose of optimizing the images accurately captured that present retinal reflection of the eye (Baranton, [0195]).
Claim(s) 4 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Everett (20200085294) in view of Copland (20210196113).
Regarding claim 4, Everett discloses the invention as described within claim 1 but does not teach wherein the first device further includes a first plurality of first light sources, and wherein the second device further includes a second plurality of second light sources. However, Copland teaches wherein the first device further includes a first plurality of first light sources ([0131], first light sources 120), and wherein the second device further includes a second plurality of second light sources ([0135], light source 130 comprises a second light source 132 which may comprise a plurality of lamps). It would have been obvious to one of ordinary skill in the art to combine the ophthalmic device of Everett with the components of Copland for the purpose of improving the images that are used for wavefront measurements within an ophthalmic system (Copland, [0140]).
Regarding claim 18, Everett in view of Copeland discloses the invention as described within claim 4 and Copeland further teaches wherein the first plurality of first light sources are first LEDs ([0131], first light sources 120), and wherein the second plurality of second light sources are second LEDs ([0135], light source 130 comprises a second light source 132 which may comprise a plurality of lamps). It would have been obvious to one of ordinary skill in the art to combine the ophthalmic device of Everett with the components of Copland for the purpose of improving the images that are used for wavefront measurements within an ophthalmic system (Copland, [0140]).
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Everett (20200085294) in view of Yates (20180242846).
Regarding claim 7, Everett discloses the invention as described within claim 6 but does not teach further comprising a hot mirror configured to reflect the first lighting beam and to allow the second lighting beam to pass. However, Yates teaches further comprising a hot mirror (Fig 5A, [0064], hot mirror filter 11) configured to reflect the first lighting beam and to allow the second lighting beam to pass (Fig 5A, [0030], hot mirror filter blocking infrared light being emitted from the photographing light source and redirecting light from the observation light source into the illumination optical path). It would have been obvious to one of ordinary skill in the art to combine the ophthalmic device of Everett with the components of Yates to allow for more efficient processing and diagnostics of recorded images (Yates, [0061]).
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Everett (20200085294) in view of Lefaudeux (20230172449).
Regarding claim 9, Everett discloses the invention as described within claim 8 but does not teach wherein the first optical wavelength is comprised between 800nm and 899nm and the second optical wavelength being comprised between 901nm and 1000nm. However, Lefaudeux teaches wherein the first optical wavelength is comprised between 800nm and 899nm ([0027], emission spectral band of the primary sources is between 800nm and 1000nm and within the claimed range) and the second optical wavelength being comprised between 901nm and 1000nm [0027], emission spectral band of the primary sources is between 800nm and 1000nm and within the claimed range). It would have been obvious to one of ordinary skill in the art to combine the ophthalmic device of Everett with the components of Lefaudeux for the purpose of optimizing controlling the position of the pupil of an eye in reference to a frame within an ophthalmic system (Lefaudeux, [0001]).
Response to Arguments
Applicant's arguments filed 8/11/2026 have been fully considered but they are not persuasive.
The previous 35 U.S.C. 112 rejection previously cited has been addressed and removed in the above office action.
The amended claim language of claims 1, 5, 8, 9, 11, 12, 14, and 15 have been addressed in the current office action.
Applicant’s remark as they pertain to claim 1, Examiner is not persuaded. Specifically, as set forth in the prior art Everett, paths 102 and 104 are disclosed to be returning from the retina after illumination from the upper and lower illuminations. No special definition of lighting beam is found in the present specification, and, absent a special definition, Examiner is obligated to take the broadest reasonable interpretation not in conflict with the specification. It is noted that the feature upon which applicant relies (i.e., “lighting beam”) has been given its broadest reasonable interpretation. 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). The examiner respectfully disagrees with applicant’s interpretation of, “lighting beam,” which states/seems to imply that lighting beam must be a specific source of light or energy. However, the specification is silent as to the exact energy that is being broadcasted or moved within the claimed system; the specification does not prohibit such an interpretation; therefore, Examiner's interpretation is both reasonable and not in conflict with the specification, and the limitation is met by the prior art. Applicant argues that the light disclosed within the prior art as being separated on different axes. However, it is noted that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968))." MPEP §2123. The recitation "light" 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. MPEP §2106. Par 37 of the prior art discloses upper and lower illumination beams, 101 and 103 which have been interpreted as light beams or rays.
Allowable Subject Matter
Claims 13-15 are allowed.
Claims 5 and 10-12 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: with respect to the allowable subject matter, none of the prior art either alone or in combination disclose or teach of the claimed combination of limitations to warrant a rejection under 35 USC 102 or 103.
Specifically, with respect to dependent claim 5, the prior art of Everett taken either singly or in combination with any other prior art fails to suggest such an optical device including the specific arrangement: “wherein the optical device is configured to sequentially illuminate one of the first light sources and then one of the second light sources or to sequentially illuminate at least two of the first light sources and then at least two of the second light sources”.
Specifically, with respect to dependent claim 10, the prior art of Everett taken either singly or in combination with any other prior art fails to suggest such an optical device including the specific arrangement: “a system for determining a relative peripheral refraction of an eye of an individual, the system comprising; and calculation circuitry comprising a memory and a processor configured to measure a first photorefraction of the eye based on at least the at least one first image measure a second photorefraction of the eye based on at least the at least one second image, and determine the relative peripheral refraction based on the first photorefraction and the second photorefraction”. Claims 11 and 12 are allowable due to pendency on dependent claim 10.
Specifically, with respect to independent claim 13, the prior art of Everett taken either singly or in combination with any other prior art fails to suggest such an optical device including the specific arrangement: “capturing, using a first measurement channel of an optical device for capturing images of the eye, at least one first image of the eye; capturing, using a second measurement channel of the optical device, at least one second image of the eye; measuring a first photorefraction of the eye based on the at least one first image; measuring a second photorefraction of the eye based on the at least one second image; and determining the relative peripheral refraction based on the first photorefraction and the second photorefraction, wherein the capturing the first image and the capturing of the second image are synchronized”. Claims 14 and 15 are allowable due to pendency on independent claim 13.
Conclusion
THIS ACTION IS MADE FINAL. 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 Sharrief I Broome whose telephone number is (571)272-3454. The examiner can normally be reached Monday-Friday 8am-5pm, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Sharrief I. Broome
Primary Examiner
Art Unit 2872
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872
Prosecution Insights