DETAILED ACTION
Notice of 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/03/2026 has been entered.
Allowable Subject Matter
Claim 21 is allowed.
Claims 6 and 18-20 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.
Response to Arguments
Applicant's arguments filed 03/03/2026 have been fully considered but they are moot in view of the new grounds of rejection.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f), 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f), 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), 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) 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) 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.
Claim limitation(s):
acquired by means of the imaging unit
has/have been interpreted under 35 U.S.C. 112(f) because it uses/they use generic placeholder(s):
unit
coupled with functional language:
acquired
without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder(s) is/are not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) claim(s) %% has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f):
“image sensor”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f), 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 wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (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).
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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim(s) 1, 8, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedrazzini (US 2024/0180481, PCT Filed Apr. 6, 2022, of record) in view of Lim (US 2016/0128445, of record) in view of Wood (US 11553981).
Regarding claim 1, Pedrazzini discloses a digital dermatoscope for skin examination, the digital dermatoscope being formed as a hand-held device, wherein the digital dermatoscope comprises a handle part which can be grasped by a hand (Fig. 3A, 3B: “gripping portion 12”) and a head part (Fig. 3A: “upper portion 13”) adjoining the handle part and having an imaging unit (Fig. 3A: “camera”) wherein the imaging unit has an imaging unit housing arranged on a lower side of the head part, an image sensor accommodated inside the imaging unit housing (Fig. 3B: a housing section houses “camera 4”), and a lens ([0058]: “front lens”), wherein a spacer attachment configured to contact the skin to be examined during a skin examination is arranged at an end of the imaging unit housing (Figs. 3A, 3B, [0058]: “spacer element 7”), the digital dermatoscope further comprising a control unit ([0075]: “control unit E configured for controlling the vision module 2”) and a first display arranged on an upper side of the head part (Figs. 3A, 3B: “screen 23”), wherein the control unit is formed to drive the first display to display images of a skin section to be examined acquired by means of the imaging unit ([0075]: “control unit E”, Fig. 3B shows circuitry that would drive the display), wherein a portion of the first display configured to display a view of the images has a circular shape corresponding to the shape of the head part (Fig. 3B shows that the first display has a circular portion that corresponds to the circular shape of the head part). Pedrazzini does not explicitly disclose that the spacer is an exchangeable spacer attachment. However, Lim teaches interchangeable end components that are magnetically held in place ([0048]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the interchangeability of Lim’s magnetically held end units to the end spacer of Pedrazzini, as to provide a robust and conventional manner of securing an interchangeable component. Neither Pedrazzini nor Lim explicitly disclose that the first display is circular and corresponds in shape and axially positioned to the lens; and that a housing frame enclosing the handle part and the head part, the housing frame comprising the imaging unit housing. However, MPEP 2144.04(IV)(B) states that changes in shape, absent persuasive evidence that a shape is significant, is a matter of choice which a person of ordinary skill in the art would have found to be obvious (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). The Applicant’s disclosure does not appear to explain how a circular display is significant compared to a non-circular display. Additionally, Wood teaches a housing that encloses a handle part and a head part, the housing frame comprising an imaging unit and a corresponding display (Figs. 10 and 12). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the housing structure of Wood’s handheld imaging device to the handheld imaging device of Pedrazzini, as to provide a robust and structurally sound housing configuration.
Regarding claim 8, Pedrazzini discloses that the imaging unit comprises a polarization filter ([0056]: “polarization filter 6”).
Regarding claim 15, Pedrazzini does not explicitly disclose that the spacer attachment is magnetically held to the imaging unit housing. However, Lim teaches interchangeable end components that are magnetically held in place ([0048]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the interchangeability of Lim’s magnetically held end units to the end spacer of Pedrazzini, as to provide a robust and conventional manner of securing an interchangeable component.
Claim(s) 3 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedrazzini (US 2024/0180481, PCT Filed Apr. 6, 2022, of record) in view of Lim (US 2016/0128445, of record) in view of Wood (US 11553981), as applied to claim 1 above, in view of Cox (US 2022/0005601, of record).
Regarding claim 3, neither Pedrazzini nor Lim explicitly disclose that the control unit is formed to display a live view of the skin section to be examined on the first display. However, Cox teaches a live camera view for a diagnostic imaging device ([0066]: “live video feed”, “live stream”). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the live capture of Cox to the imaging of Pedrazzini and Lim, as to provide real-time feedback of an imaged subject.
Regarding claim 10, neither Pedrazzini nor Lim explicitly disclose a non-volatile memory unit for electronically storing images and/or videos acquired by the imaging unit. However, Cox teaches conventional memory devices for a hand-held diagnostic device ([0045]…[0049]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the memory devices of Cox to the device of Pedrazzini and Lim, as to provide a robust and conventional memory component.
Regarding claim 11, neither Pedrazzini nor Lim explicitly disclose a port preferably arranged at one end of the handle part for charging a battery of the digital dermatoscope and/or for establishing a data connection between the digital dermatoscope and an electronic device, in particular a tablet. However, Cox teaches a USB for charging an onboard battery ([0048], [0066], [0071]: “USB”) and that a connected electronic device may be a tablet ([0031]: “tablet computer”). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the interface of Cox to the device of Pedrazzini and Lim, as to provide a robust and conventional interface component.
Regarding claim 12, neither Pedrazzini nor Lim explicitly disclose a communication unit for wireless communication with an electronic device, in particular a tablet. However, Cox teaches wireless connections ([0021]) between devices which may include a tablet ([0031]: “tablet computer”). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the wireless connectivity of Cox to the device of Pedrazzini and Lim, as to provide a robust and conventional wireless component.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedrazzini (US 2024/0180481, PCT Filed Apr. 6, 2022, of record) in view of Lim (US 2016/0128445, of record) in view of Wood (US 11553981), as applied to claim 1 above, in view of Wolfe (US 2023/0293119, of record).
Regarding claim 4, neither Pedrazzini nor Lim explicitly disclose that the control unit is formed to enlarge an image of the skin section to be examined on the first circular display screen. However, Wolfe teaches a handheld imaging device that can perform digital zoom (Fig. 8, [0066]: “digital zoom”). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the digital zoom of Wolfe to the image data of Pedrazzini, as to provide robust and conventional enlargement of a digital image.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedrazzini (US 2024/0180481, PCT Filed Apr. 6, 2022, of record) in view of Lim (US 2016/0128445, of record) in view of Wood (US 11553981), as applied to claim 1 above, in view of Toyoda (US 8764563, of record).
Regarding claim 5, neither Pedrazzini nor Lim explicitly disclose a second display arranged on an upper side of the handle part and formed as a touch display for displaying operating elements for operating the digital dermatoscope. However, Toyoda teaches a second touch display for displaying operating a device, adjacent a first display with real-time imaging capabilities (5:22-27; 6:42-51). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the display arrangement of Toyoda to the device of Pedrazzini and Lim, as to provide robust viewing and operability of the device.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedrazzini (US 2024/0180481, PCT Filed Apr. 6, 2022, of record) in view of Lim (US 2016/0128445, of record) in view of Wood (US 11553981), as applied to claim 1 above, in view of Mullani (US 2015/0036311, of record).
Regarding claim 13, neither Pedrazzini nor Lim explicitly disclose that the imaging unit has an illumination unit with a plurality of annularly arranged illumination elements, in particular LEDs, for illuminating the skin section to be examined. However, Mullani teaches the use of a circular array of LEDs for a dermatoscope (Figs. 4 and 5: “lighting array 44”; [0043]: ‘circular array of LEDs”). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the circular array of LEDs as taught by Mullani to the device of Pedrazzini and Lim, as to provide a conventional and robust lighting for an imaging device.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedrazzini (US 2024/0180481, PCT Filed Apr. 6, 2022, of record) in view of Lim (US 2016/0128445, of record) in view of Wood (US 11553981) in view of Mullani (US 2015/0036311, of record), as applied to claim 13 above, in view of Yoshida (US 2022/0167852, of record).
Regarding claim 14, Mullani does not explicitly disclose that the plurality of illumination elements are arranged at an angle to an optical axis. However, Yoshida teaches illumination elements which are arranged at an angle to an optical viewing axis (Fig. 5 and 10: “second LED board 112”, “fourth LED board 114”, “OA”). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the angle taught by Yoshida to the LED array of Mullani in conjunction with Pedrazzini and Lim, as to provide a robust directing of light rays with respect to an offset receiving axis.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedrazzini (US 2024/0180481, PCT Filed Apr. 6, 2022, of record) in view of Lim (US 2016/0128445, of record) in view of Wood (US 11553981), as applied to claim 1 above, in view of Pavis (US 2017/0102606, of record).
Regarding claim 9, neither Pedrazzini nor Lim explicitly disclose a rechargeable battery in particular a lithium-polymer battery, arranged in the handle part for supplying power to electronic components of the digital dermatoscope, in particular to the control unit and the first display. However, Pavis teaches a lithium-ion polymer battery enclosed by a handle part of a sensing device ([0112]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the battery of Pavis to the device of Pedrazzini and Lim, as to provide a conventional battery to properly power components.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedrazzini (US 2024/0180481, PCT Filed Apr. 6, 2022, of record) in view of Lim (US 2016/0128445, of record) in view of Cox (US 2022/0005601, of record) in view of Wood (US 11553981).
Regarding claim 16, Pedrazzini discloses a digital dermatoscope for skin examination, the digital dermatoscope being formed as a hand-held device, wherein the digital dermatoscope comprises a handle part which can be grasped by a hand (Fig. 3A, 3B: “gripping portion 12”) and a head part (Fig. 3A: “upper portion 13”) adjoining the handle part and having an imaging unit (Fig. 3A: “camera”) wherein the imaging unit has an imaging unit housing arranged on a lower side of the head part, an image sensor accommodated inside the imaging unit housing (Fig. 3B: a housing section houses “camera 4”), and a lens ([0058]: “front lens”), wherein a spacer attachment contacting the skin to be examined during a skin examination is arranged at an end of the imaging unit housing (Figs. 3A, 3B, [0058]: “spacer element 7”), the digital dermatoscope further comprising a control unit ([0075]: “control unit E configured for controlling the vision module 2”) and a first display arranged on an upper side of the head part (Figs. 3A, 3B: “screen 23”), wherein the control unit is formed to drive the first display to display images of a skin section to be examined acquired by means of the imaging unit ([0075]: “control unit E”, Fig. 3B shows circuitry that would drive the display), wherein a portion of the first display configured to display a live view of images has a circular shape corresponding to the shape of the head part (Fig. 3B shows that the first display has a circular portion that corresponds to the circular shape of the head part). Pedrazzini does not explicitly disclose that the spacer is an exchangeable attachment. However, Lim teaches interchangeable end components that are magnetically held in place ([0048]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the interchangeability of Lim’s magnetically held end units to the end spacer of Pedrazzini, as to provide a robust and conventional manner of securing an interchangeable component. Neither Pedrazzini nor Lim explicitly disclose that the control unit displays a live view of the skin section to be examined on the first display. However, Cox teaches a live camera view for a diagnostic imaging device ([0066]: “live video feed”, “live stream”). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the live capture of Cox to the imaging of Pedrazzini and Lim, as to provide real-time feedback of an imaged subject. Neither Pedrazzini, Lim, nor Cox explicitly disclose that the first display is circular and corresponds in shape and axially positioned to the lens; and that a housing frame enclosing the handle part and the head part, the housing frame comprising the imaging unit housing. However, MPEP 2144.04(IV)(B) states that changes in shape, absent persuasive evidence that a shape is significant, is a matter of choice which a person of ordinary skill in the art would have found to be obvious (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). The Applicant’s disclosure does not appear to explain how a circular display is significant compared to a non-circular display. Additionally, Wood teaches a housing that encloses a handle part and a head part, the housing frame comprising an imaging unit and a corresponding display (Figs. 10 and 12). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the housing structure of Wood’s handheld imaging device to the handheld imaging device of Pedrazzini, as to provide a robust and structurally sound housing configuration.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedrazzini (US 2024/0180481, PCT Filed Apr. 6, 2022, of record) in view of Lim (US 2016/0128445, of record) in view of Cox (US 2022/0005601, of record) in view of Wood (US 11553981), as applied to claim 16 above, in view of Mullani (US 2015/0036311, of record).
Regarding claim 17, neither Pedrazzini, Lim, nor Cox explicitly disclose that the imaging unit has an illumination unit with a plurality of annularly arranged illumination elements, in particular LEDs, for illuminating the skin section to be examined. However, Mullani teaches the use of a circular array of LEDs for a dermatoscope (Figs. 4 and 5: “lighting array 44”; [0043]: ‘circular array of LEDs”). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to apply the circular array of LEDs as taught by Mullani to the device of Pedrazzini, Lim, and Cox, as to provide a conventional and robust lighting for an imaging device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Ip whose telephone number is (571) 270-5387. The examiner can normally be reached Monday - Friday 9a-5p PST.
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/JASON M IP/
Primary Examiner, Art Unit 3793