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 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.
Information Disclosure Statement
The information disclosure statement filed 09/26/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the lined-through information referred to therein has not been considered. Specifically, a machine translation of Item 10 has not been provided.
Claim Objections
Claim 5 is objected to because of the following informalities: the recitation of “the and/or” should instead recite –and/or--.
Appropriate correction is required.
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: “imaging optical system” in claims 1 and 3, “irradiation unit” in claims 1 and 6, “ultrasonic elements” in claims 1, 2, 4, and 5, “support member” in claims 1, 3, and 5, “second optical system” in claim 3, “light receiving system” in claim 3, “light projecting system” in claim 3, “deformation detection unit” in claim 6, and “calculation unit” in claim 6.
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
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, 2, 5, and 6 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US Patent 5,636,635 (“Massie”).
Regarding claim 1, Massie discloses [a]n ultrasonic ophthalmic tonometer that measures an intraocular pressure of a subject eye by using an ultrasonic wave (col. 1, lines 8-14), the ultrasonic ophthalmic tonometer (Figs. 1A-1D) comprising: an imaging optical system (20) configured to image the subject eye (col. 6, lines 4-20); and an irradiation unit including a plurality of ultrasonic elements (14a, 14b, 15a, 15b, etc.) and a support member (9) configured to support the ultrasonic elements, and irradiating the subject eye with an ultrasonic wave (col. 6, lines 4-52), wherein an opening portion (at lens 19) is provided with the support member (9), the opening portion configured to allow an optical axis of the imaging optical system to pass therethrough (Figs. 1A, 1B, 1D, 1E, 1F).
Regarding claim 2, Massie discloses all the features with respect to claim 1, as outlined above. Massie further discloses wherein a diameter of each of the ultrasonic elements is smaller than a diameter of the opening portion (as shown in Fig. 1D).
Regarding claim 5, Massie discloses all the features with respect to claim 1, as outlined above. Massie further discloses wherein the plurality of ultrasonic elements are arranged in a manner that sound source areas are symmetrical in left and right regions on the support member the and/or in upper and lower regions on the support member, the left and right regions provided in a case where the support member is divided by a vertical plane including the optical axis, the upper and lower regions provided in a case where the support member is divided by a horizontal plane including the optical axis (as shown in Fig. 1D).
Regarding claim 6, Massie discloses all the features with respect to claim 1, as outlined above. Massie further discloses a deformation detection unit configured to detect that a cornea of the subject eye is deformed into a predetermined state by an ultrasonic wave from the irradiation unit; and a calculation unit configured to calculate the intraocular pressure of the subject eye based on an ultrasonic wave output of the irradiation unit when the cornea is deformed into the predetermined state (col. 8, line 10 – col. 9, line 15, applanation/flattening/deformation leading to IOP calculation).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent 5,636,635 (“Massie”) in view of US Patent Application Publication 2009/0275820 (“Miwa”) and US Patent 6,082,860 (“Takagi”).
Regarding claim 3, Massie teaches all the features with respect to claim 1, as outlined above. Massie does not appear to explicitly teach a second optical system different from the imaging optical system, wherein a light projecting system and a light receiving system of the second optical system are disposed obliquely with respect to the optical axis of the imaging optical system, and a first hole and a second hole different from the opening portion are provided with the support member, the first hole configured to allow a light projecting optical axis of the second optical system to pass therethrough, the second hole configured to allow a light receiving optical axis of the second optical system to pass therethrough (although Massie does teach using additional transducers 14a and 14b to measure alignment and distance (col. 6, lines 13-18, col. 15, lines 55-63), and that the transducers are arranged in alignment with the support (Fig. 1D-1F)).
Miwa teaches using a separate optical system comprising light projecting and receiving components to perform Z-alignment (Figs. 2 and 8, ¶¶s 0025, 0039-0043, etc.). Miwa teaches using an aperture to allow outward and inward signals to pass through a lens unmodified by the lens (¶¶s 0033, 0039).
Takagi teaches using an aperture stop 63 and pinhole plate 64 in a Z-alignment optical system (Fig. 1 and related description).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the Z-alignment optical system of Miwa into Massie, using holes/apertures to control the light, as in Miwa and Takagi, for the purpose of achieving a proper alignment state to thereby improve measurement accuracy (Miwa: Abstract, ¶¶s 0004, 0005, etc.), including in a manner that does not unduly interfere with the optical system (Miwa: ¶¶s 0033, 0039; Takagi: Fig. 1).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent 5,636,635 (“Massie”) in view of US Patent Application Publication 2023/0122713 (“Macia”).
Regarding claim 4, Massie teaches all the features with respect to claim 1, as outlined above. Massie does not appear to explicitly teach wherein a distance between centers of the plurality of ultrasonic elements is equal to or less than a wavelength of an ultrasonic wave to be emitted to the subject eye.
Macia teaches using an ultrasound transducer that can transmit and receive pulses (¶ 0025), the transducer including an array of sensors whose distance center-to-center is less than approximately half the wavelength of the signal (¶¶s 0027, 0071).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the spacing of Macia in Massie, as the simple substitution of one known ultrasound transducer arrangement for another with predictable results (using ultrasound for detection), and for the purpose of implementing phased array operation (Macia: ¶ 0071).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREY SHOSTAK whose telephone number is (408) 918-7617. The examiner can normally be reached Monday-Friday, 7am-3pm PT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Robertson, can be reached at telephone number (571) 272-5001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREY SHOSTAK/Primary Examiner, Art Unit 3791
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