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 [date] has been considered by the Examiner and made of record in the application file.
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 8-9 and 15 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.
Regarding claim 8, the limitation “the rotational axis” in the second line lacks sufficient antecedent basis. For the purposes of examination, examiner assumes “the one or more rotational [[axis]] axes are”. Claim 9 is dependent on claim 8 and therefore inherits the same issues.
Regarding claim 15, the limitation “wherein the second surface is configured such that the incident light on the second surface from an interface of the first surface and the eye does not undergo total internal reflection” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear at which point total internal reflection does not occur and what the structure that prevents it is. The language indicates that reflection between the first surface and the second surface is being discussed and that the second surface has some property to prevent this total internal reflection. However, this is not discussed anywhere in the specification. The specification only discusses minimizing total internal reflection that occurs at the interface of the eye and the lens by eliminating air gaps between the eye and the lens (instant application ¶0093).
For the purposes of examination, examiner assumes this limitation is met by any system wherein the lens is placed in contact with the eye.
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.
Claim(s) 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wardle et al. (US 20130182223 A1), hereinafter Wardle.
Regarding independent claim 1, Wardle discloses an apparatus for attaching a lens (2; Fig. 3; ¶0050) to a microscope (19; Fig. 6; ¶0059) with an optical attachment, said apparatus comprising at least one of:
the lens (3) with one or more translational degrees of freedom such that the lens (3) is configured to translate along one or more directions relative to the microscope (19) (Fig. 3; ¶0051); and
the lens (3) with one or more rotational degrees of freedom such that the lens (3) is configured to rotate about one or more rotational axes relative to the microscope (19) (Fig. 3; ¶0051).
Regarding claim 2, Wardle discloses the apparatus as recited in claim 1, as set forth above. Wardle further discloses said microscope (19) includes an objective lens (19; Fig. 6; ¶0059) that defines an objective optical axis (27; Fig. 6; ¶0059), and wherein the one or more directions include a first direction that is along the objective optical axis (27) (as shown in Fig. 3 and discussed in ¶0051 and ¶0068, the lens can move horizontally, vertically, and rotationally, therefore it can be moved along the objective optical axis).
Regarding claim 3, Wardle discloses the apparatus as recited in claim 1, as set forth above. Wardle further discloses said microscope (19) includes an objective lens (19; Fig. 6; ¶0059) that defines an objective optical axis (27; Fig. 6; ¶0059), and wherein the one or more directions include a first direction that is angled relative to the objective optical axis (27) (Fig. 3; ¶0051, ¶0068).
Regarding claim 4, Wardle discloses the apparatus as recited in claim 1, as set forth above. Wardle further discloses the lens (3) has multiple translational degrees of freedom (Fig. 3; ¶0051) defining multiple directions such that the lens (3) is configured to translate in any of the multiple directions relative to the microscope (19) (¶0051).
Regarding claim 5, Wardle discloses the apparatus as recited in claim 1, as set forth above. Wardle further discloses the optical attachment includes a lens arm (3; Fig. 3; ¶0050) and a positioning device (1; Fig. 3; ¶0050) to move the lens (3) and the lens arm (3) relative to the microscope (19) (Fig. 3; ¶0051); wherein the apparatus further includes the lens arm (3) with a first end (13B; Fig. 3; ¶0050) attached to the lens (3) and a second end (5; Fig. 3; ¶0050) attached to the positioning device (1) (Fig. 3; ¶0050), wherein the first end (13B) is configured to move relative to the second end (5) from a first position to a second position to accommodate the translation of the lens (3) in a first direction of the one or more directions (when the lens moves, the first end would necessarily end up at a different horizontal and/or vertical relative to the second end; Fig. 3; ¶0051).
Regarding claim 6, Wardle discloses the apparatus as recited in claim 5, as set forth above. Wardle further discloses an optical axis of the lens (3) is aligned with an optical axis of an objective lens (19; Fig. 6; ¶0059) of the microscope (19) when the first end (13B) is in the first position (¶0059) and wherein the optical axis of the lens (3) is aligned within an angular threshold of the optical axis of the objective lens (19) when the first end (13B) is in the second position (the second position can be chosen such that the optical axis is within an angular threshold; ¶0059).
Regarding claim 7, Wardle discloses the apparatus as recited in claim 5, as set forth above. Wardle further discloses the first end (13B) is configured to translate relative to the second end (5) in the first direction to accommodate the translation of the lens (3) in the first direction (when the lens moves, the first end would necessarily end up at a different horizontal and/or vertical position relative to the second end, i.e. having translated relative to the second end; Fig. 3; ¶0051); and wherein the first end (13B) is configured to rotate relative to the second end (5) (when the lens is rotated, the first end would necessarily rotate relative to the second end; Fig. 3; ¶0051) about one or more rotational axes (¶0051) such that an optical axis of the lens (3) remains aligned within an angular threshold of an optical axis of an objective lens (19; Fig. 6; ¶0059) of the microscope (19) as the first end (13B) moves from the first position to the second position (the second position can be chosen such that the optical axis is within an angular threshold; ¶0059).
Regarding claim 8, Wardle discloses the apparatus as recited in claim 7, as set forth above. Wardle further discloses the lens (3) and the lens arm (3) are arranged in a first plane when the first end (13B) is in the first position (Fig. 3; ¶0059) and wherein the rotational axis is angled with respect to the first plane (J-K; Fig. 3; ¶0051).
Regarding claim 9, Wardle discloses the apparatus as recited in claim 8, as set forth above. Wardle further discloses the one or more rotational axes comprise (¶0051): a first rotational axis that is orthogonal with respect to the first plane (J-K; Fig. 3; ¶0051); a second rotational axis that is orthogonal to the first rotational axis (L-M; Fig. 3; ¶0051); and a third rotational axis that is orthogonal to the first rotational axis and the second rotational axis (G-H; Fig. 3; ¶0051).
Regarding claim 10, Wardle discloses the apparatus as recited in claim 1, as set forth above. Wardle further discloses the lens (3) is configured to be in contact and concentric with an eye of a subject (this is directed to intended use of the device; it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d, 1647, 1987; see MPEP 2114; however also see ¶0054, ¶0063), such that: the one or more translational degrees of freedom are to accommodate movement of the eye in a first direction of the one or more directions such that the lens (3) remains in contact and concentric with the eye during said movement in the first direction; and the one or more rotational degrees of freedom are configured to accommodate lateral movement of the eye in a lateral direction different than the first direction such that the lens (3) remains in contact and concentric with the eye during said movement in the lateral direction (the degrees of freedom being to accommodate movement of the eye such that the lens remains in contact and concentric with the eye during the movement is directed to intended use of the device; it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d, 1647, 1987; see MPEP 2114; further ¶0073 states that the lens rotates to maintain contact with the patient’s eye, ¶0051 and Fig. 3 disclose multiple translational and rotational degrees of freedom, and ¶0064 discusses an additional degree of freedom for improving the lens engagement with the patient’s eye, therefore it is assumed that the device of Wardle is capable of accommodating movement of the eye such that the lens remains in contact and concentric with the eye during movement in any direction).
Regarding claim 11, Wardle discloses the apparatus as recited in claim 5, as set forth above. Wardle further discloses the lens arm (3) comprises an arcuate surface (Fig. 3) between the first end (13B) and the second end (5) (Fig. 3).
Regarding claim 12, Wardle discloses the apparatus as recited in claim 11, as set forth above. Wardle further discloses the arcuate surface (Fig. 3) defines one or more turns (bent portion of 3; Fig. 3) and wherein a radius of curvature of the one or more turns is selected to accommodate at least one of:
translation of the first end (13B) relative to the second end (5) in the first direction to accommodate the translation of the lens (3) in the first direction (the lens is able to translate in the first direction, therefore the radius of curvature must accommodate this function; ¶0059); and
rotation of the first end (13B) relative to the second end (5) about one or more rotational axes such that an optical axis of the lens (3) remains aligned within an angular threshold of an optical axis of an objective lens (19; Fig. 6; ¶0059) of the microscope (19) as the first end (13B) moves from the first position to the second position (the first end is able to rotate relative to the second end such that an optical axis remains aligned within an angular threshold, therefore the radius of curvature must accommodate this function; ¶0059).
Regarding claim 13, Wardle discloses the apparatus as recited in claim 5, as set forth above. Wardle further discloses the lens arm (3) comprises: an arcuate surface (Fig. 3) positioned between the first end (13B) and the second end (5) and having a value of a radius of curvature in a first range (inherent that the arcuate surface of 3 shown in Fig. 3 has a radius of curvature);
a material with a value of an elasticity in a second range (inherent that the arcuate surface is made of a material with some value of elasticity); and
a dimension having a value in a third range (inherent that the arcuate surface has a dimension);
wherein the radius of curvature value in the first range, the elasticity value in the second range and the dimension value in the third range are selected to accommodate:
translation of the first end (13B) relative to the second end (5) in the first direction to accommodate the translation of the lens (3) in the first direction (the lens is able to translate in the first direction, therefore the radius of curvature, elasticity value, and dimension value must accommodate this function; ¶0059); and
rotation of the first end (13B) relative to the second end (5) about one or more rotational axes such that an optical axis of the lens (3) remains aligned within an angular threshold of an optical axis of an objective lens (19; Fig. 6; ¶0059) of the microscope (19) as the first end (13B) moves from the first position to the second position (the first end is able to rotate relative to the second end such that an optical axis remains aligned within an angular threshold, therefore the radius of curvature, elasticity, and dimension must accommodate this function; ¶0059).
Regarding claim 14, Wardle discloses the apparatus as recited in claim 1, as set forth above. Wardle further discloses the lens (3) has a first surface (8; Fig. 3; ¶0050) configured to be in contact with an eye of a patient (¶0063) and a second surface opposite to the first surface (8) (Fig. 3).
Regarding claim 15, Wardle discloses the apparatus as recited in claim 14, as set forth above. Wardle further discloses wherein the first surface (8) is a concave surface (8; Fig. 3; ¶0050) with a curvature that is based on a curvature of the eye (¶0050) such that the first surface (8) is configured to be in contact and concentric with the eye (this is directed to intended use of the device; it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d, 1647, 1987; see MPEP 2114; however also see ¶0054, ¶0063).
Regarding claim 16, Wardle discloses the apparatus as recited in claim 14, as set forth above. Wardle further discloses the first surface (8) is in contact and concentric with the eye (¶0054, ¶0063) and wherein the second surface is configured such that incident light on the second surface from an interface of the first surface (8) and the eye does not undergo total internal reflection (¶0005).
Regarding claim 17, Wardle discloses a system comprising: the lens (3) of claim 1; and the optical attachment of claim 1 comprising a lens arm (3; Fig. 3; ¶0050) and a positioning device (1; Fig. 3; ¶0050) configured to move the lens (3) and the lens arm (3) relative to the microscope (19) (Fig. 3; ¶0051).
Regarding claim 18, Wardle discloses the system of claim 17, as set forth above. Wardle further discloses wherein the positioning device (1) is configured to move the lens (3) in contact with an eye of a patient this is directed to intended use of the device; it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d, 1647, 1987; see MPEP 2114; however also see ¶0063).
Regarding claim 19, Wardle discloses the system of claim 17, as set forth above. Wardle further discloses wherein the positioning device (1) comprises an interface for adjustment of the position of the lens (3) relative to the microscope (19) (Fig. 3; ¶0051).
Regarding claim 20, Wardle discloses the system of claim 17, as set forth above. Wardle further discloses the microscope (19) includes an objective lens (19; Fig. 6; ¶0059) that defines an objective optical axis (27; Fig. 6; ¶0059) and wherein the positioning device (1) is configured to move the lens (3) along the objective optical axis (27) (as shown in Fig. 3 and discussed in ¶0051 and ¶0068, the lens can move horizontally, vertically, and rotationally, therefore it can be moved along the objective optical axis).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Smith et al. (US 20160353990 A1), of record, discloses a similar system comprising a lens arm and a lens with multiple degrees of freedom to accommodate the movement of the eye. Charles (US 20180333049 A1) discloses a similar lens system comprising a lens arm and a lens wherein the lens arm is configured to deform in order to position the lens.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
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.
/NATASHA NIGAM/Examiner, Art Unit 2872 July 17th, 2026
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872
Prosecution Insights