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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/07/2025 and 08/28/2025 have been considered by the examiner.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-11 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-11 of copending Application No. 18/677, 608 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 12-14, 16 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-13 and 15-16 of copending Application No. 18/677, 608 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the addition of the term “or optometric viewing device” renders claims 12-14, 16 and 19-20 as obvious variants of claims 12-13 and 15-16 of copending Application No. 18/677, 608 (reference application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 15 and 17-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-13 and 15-16 of copending Application No. 18/677, 596 in view of Ramirez Luna et al. (US 2019/0327394).
This is a provisional nonstatutory double patenting rejection.
Claim 12 of copending Application No. 18/677, 596 discloses a system that includes an ophthalmic viewing device; a gonioscopy device configured to relay images of an interior periphery of a patient’s eye to the ophthalmic viewing device; and an adjustable arm configured to hold the gonioscopy device in a position in relation to the ophthalmic or optometric viewing device and the patient’s eye to relay the images of the interior periphery of the patient’s eye to the ophthalmic viewing device for viewing by a user.
Copending Application No. 18/677, 596 does not disclose the optometric examination device comprises a phoropter, the adjustable arm is mounted to a movable cart for holding the gonioscopy device in the position, and the adjustable arm is manually adjustable.
In a related endeavor, Ramirez Luna discloses a system comprising an ophthalmic viewing device in which the optometric examination device comprises a phoropter (Para. 0128), the adjustable arm is mounted to a movable cart (Para. 0432 and 510 of Fig. 5) for holding the gonioscopy device in the position (Para. 0020 and 0425), and the adjustable arm is manually adjustable (Para. 0020 and 0425).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the optometric examination device comprises a phoropter, the adjustable arm is mounted to a movable cart for holding the gonioscopy device in the position, and the adjustable arm is manually adjustable as taught by Ramirez Luna, with the system, as claimed by copending Application No. 18/677, 596 for the purpose of providing a low cost system with improved speed and accuracy.
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 1-2, 4 ,6-8, 10-14, 16 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bach et al. (US 2017/0360604).
Regarding claim 1, Bach discloses, an ophthalmic viewing system (Figs. 1-13) comprising:
an ophthalmic microscope (25);
a gonioscopy device (31) configured to relay images of an interior periphery of a patient’s eye to the ophthalmic microscope (Para. 0029); and
a robotic arm (22) configured to hold the gonioscopy device in a position in relation to the ophthalmic microscope (Para. 0030-0031) and the patient’s eye to relay the images of the interior periphery of the patient’s eye to the ophthalmic microscope for viewing by a user (Para. 0030-0031).
Regarding claim 2, Bach discloses, the robotic arm comprises a gripper configured to receive, to hold, and to release the gonioscopy device (Para. 0030-0031).
Regarding claim 4, Bach discloses, the robotic arm comprises a proximal end mounted to a structure configured to support the ophthalmic microscope (Para. 0030-0031).
Regarding claim 6, Bach discloses, the ophthalmic microscope comprises an electronic visualization apparatus (102) configured to capture and transmit images (Para. 0026 and 111, 116) from the ophthalmic microscope for external display on visual display apparatus (Para. 0028 and see 101).
Regarding claim 7, Bach discloses, the visual display apparatus comprises a video monitor (Para. 0028 and see 102).
Regarding claim 8, Bach discloses, an electronic image processing apparatus (103, 112) configured to process the images from the ophthalmic microscope before the images are displayed on the visual display apparatus (Para. 0028, 0055-0057 and see 102, 103, 112).
Regarding claim 10, Bach discloses, a motion control input apparatus (Para. 0048 and see 24 ,29) operable to receive from the user commands corresponding to desired movements of the robotic arm and then to operate the robotic arm in accordance with those commands to provide the desired movements (Para. 0031, 0041 and 0048).
Regarding claim 11, Bach discloses, the motion control apparatus (24, 29) comprises at least one of force and torque sensors responsive to forces and torques that the user applies to the robotic arm, a joystick, and a foot pedal system (Para. 0031, 0041 and 0048).
Regarding claim 12, Bach discloses, a system (Figs. 1-13) comprising:
an ophthalmic or optometric viewing device (25);
a gonioscopy device (31) configured to relay images of an interior periphery of a patient’s eye to the ophthalmic microscope (Para. 0029); and
an adjustable arm (22) configured to hold the gonioscopy device in a position in relation to the ophthalmic or optometric viewing device(Para. 0030-0031) and the patient’s eye to relay the images of the interior periphery of the patient’s eye to the ophthalmic or optometric viewing device for viewing by a user (Para. 0030-0031).
Regarding claim 13, Bach discloses, the ophthalmic or optometric viewing device comprises an ophthalmic microscope (25).
Regarding claim 14, Bach discloses, the ophthalmic or optometric viewing device comprises an optometric examination device (Para. 0028 and see 30, 110).
Regarding claim 16, Bach discloses, the adjustable arm is mounted to the ophthalmic or optometric viewing device for holding the gonioscopy device in the position (Para. 0030-0031).
Regarding claim 18, Bach discloses, the adjustable arm is manually adjustable (Para. 0039-0042 and 0062).
Regarding claim 19, Bach discloses, the adjustable arm is a robotic arm (Para. 0030-0031 and see 22).
Regarding claim 20, Bach discloses, a motion control input apparatus (Para. 0048 and see 24, 29) operable to receive from the user commands corresponding to desired movements of the robotic arm and then to operate the robotic arm in accordance with those commands to provide the desired movements (Para. 0031, 0041 and 0048).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Bach et al. (US 2017/0360604) as applied to claim 1 above, in view of Dudee (US 2021/0022916).
Bach remains as applied to claim 1 above.
Bach does not explicitly disclose the gripper is powered and operable to open and close to receive, hold, and release the gonioscopy device.
Dudee teaches, from the same field of endeavor that in an ophthalmic viewing system that it would have been desirable to make the gripper is powered and operable to open and close to receive, hold, and release the gonioscopy device (Para. 0029).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the gripper is powered and operable to open and close to receive, hold, and release the gonioscopy device as taught by the ophthalmic viewing system of Dudee in the ophthalmic viewing system of Bach since Dudee teaches it is known to include this feature in an ophthalmic viewing system for the purpose of providing a robotic arm that effectively and securely holds and positions a gonioscopy device.
Claims 5, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Bach et al. (US 2017/0360604) as applied to claims 1, 12 and 14 above, in view of Ramirez Luna et al. (US 2019/0327394; herein referred to as “Ramirez”).
Bach remains as applied to claims 1, 12 and 14 above.
Bach does not disclose the robotic arm comprises a proximal end mounted on a wheeled cart.
Ramirez teaches, from the same field of endeavor that in an ophthalmic viewing system that it would have been desirable to make the robotic arm comprises a proximal end mounted on a wheeled cart (Para. 0432 and see 510 of Fig. 5).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the robotic arm comprises a proximal end mounted on a wheeled cart as taught by the ophthalmic viewing system of Ramirez in the ophthalmic viewing system of Bach since Ramirez teaches it is known to include this feature in an ophthalmic viewing system for the purpose of providing a low cost ophthalmic viewing system with improved speed and accuracy.
Regarding claim 15, Bach does not disclose the optometric examination device comprises a phoropter.
Ramirez teaches, from the same field of endeavor that in an ophthalmic viewing system that it would have been desirable to make the optometric examination device comprises a phoropter (Para. 0128).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the ophthalmic viewing system of Ramirez in the ophthalmic viewing system of Bach since Ramirez teaches it is known to include this feature in an ophthalmic viewing system for the purpose of providing a low cost ophthalmic viewing system with improved speed and accuracy.
Regarding claim 17, Bach does not disclose the adjustable arm is mounted to a movable cart for holding the gonioscopy device in the position.
Ramirez teaches, from the same field of endeavor that in an ophthalmic viewing system that it would have been desirable to make the adjustable arm is mounted to a movable cart for holding the gonioscopy device in the position (Para. 0432 and see 510 of Fig. 5).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the ophthalmic viewing system of Ramirez in the ophthalmic viewing system of Bach since Ramirez teaches it is known to include this feature in an ophthalmic viewing system for the purpose of providing a low cost ophthalmic viewing system with improved speed and accuracy.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bach et al. (US 2017/0360604) as applied to claim 8 above, in view of Berlin (US 2012/0283557) and further in view of Ramirez Luna et al. (US 2019/0327394; herein referred to as “Ramirez”).
Bach remains as applied to claim 8 above.
Bach does not disclose the gonioscopy device comprises a mirror that inverts at least a portion of the image of the interior periphery of the patient’s eye.
Berlin teaches, from the same field of endeavor that in an ophthalmic viewing system (Figs. 4-7) that it would have been desirable to make the gonioscopy device comprises a mirror (52) that inverts at least a portion of the image of the interior periphery of the patient’s eye (Para. 0052).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the gonioscopy device comprises a mirror that inverts at least a portion of the image of the interior periphery of the patient’s eye as taught by the ophthalmic viewing system of Berlin in the ophthalmic viewing system of Bach since Berlin teaches it is known to include this feature in an ophthalmic viewing system for the purpose of providing an ophthalmic viewing system that allows accurate images with enhanced quality.
Bach in view of Berlin does not disclose the electronic image processing apparatus is configured to de-invert the inverted portion of the image.
Ramirez teaches, from the same field of endeavor that in an ophthalmic viewing system that it would have been desirable to make the electronic image processing apparatus is configured to de-invert the inverted portion of the image (Para. 0425).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to the electronic image processing apparatus is configured to de-invert the inverted portion of the image as taught by the ophthalmic viewing system of Ramirez in the combination of Bach in view of Berlin since Ramirez teaches it is known to include this feature in an ophthalmic viewing system for the purpose of providing a low cost ophthalmic viewing system with improved speed and accuracy.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wardle et al. (US 2013/0182223) discloses an ophthalmic viewing system that comprises an ophthalmic microscope, a gonioscopy device and a robotic arm.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAWAYNE A PINKNEY whose telephone number is (571)270-1305. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached at 571-270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAWAYNE PINKNEY/Primary Examiner, Art Unit 2872 06/01/2026
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