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Petitioner: Haag-Streit AG
`Petitioner: Haag-Streit AG
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`Ex. 100(cid:23)
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`EX. 1004
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`

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`ISSUECLASSIFICATION
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`PATENT NUMBER I
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`112
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`115
`116
`117
`118
`128
`119
`120
`121
`138
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`‘ 141
`142
`143
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`123
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`220
`310
`221
`270
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`’
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`PATENT "
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`'
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of;
`Application No.:
`Filed:
`
`Victor J. Doherty
`09/175,796
`October 20, 1998
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`Group No.:
`Examiner:
`
`2872
`I. Treas
`
`For:
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`HAND HELD OPHTHALMIC ILLUMJNATOR
`
`Box Patent Application
`Commissioner for Patents
`Washington, DC. 20231
`
`EXPRESS MAIL CERTIFICATE
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`"Express Mail" label number EL656245460US
`Date of Deposit: January 24, 2000
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`Ihereby state that the following attached papers
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`1. Utility/CIP Patent Application Transmittal (1 page)
`2. Fee Transmittal (1 page)
`3 Check No. 2061 in the amount of $445.00
`4
`Specification (6 pages)
`5. Claims (3 pages, claims numbered 1—20)
`6. Abstract (1 page)
`Drawings (6 pages, figures 1-7
`Declaration and Power of Attorney (4 pages)
`Petition for 3 Month Extension (1 page)
`0. Certificate of Mailing — 1 page
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`1
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`are being deposited with the United States Postal Service ‘Express Mail Post Office to Addressee‘ service
`under 37 CFR 1.10 on the date indicated above and1s addressed to: Box Patent Application Commissioner
`for Patents Washington, D.C. 20231.
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`
`
`Nancy Halas
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`a».
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`7 8 9
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`

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`
`Abstract
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`including a battery, an electrical
`The invention provides an ophthalmic illuminator,
`resistor, an electrical switch and an LED. The battery is in circuit with the battery; and
`the electricalswitch is in circuit with the resistor, where electrical energy flows through
`the circuit when the switch is in the closed position. The light emitting diode is in circuit
`with the switch and generates blue light energy which in turn causes fluorescence in a
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`fluorescien dye administered to the patient’s eye when the 'switch is in the closed
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`position. An optical element (eg, a lens or reflector) can be disposed between the diode
`and the eye to increase blue light energy reaching the eye. The energy can be “pulsed”
`such that the diode generates the blue light at‘a predetermined frequency. A user of the
`illurninator, e.g., a physician, can hold the system by hand to operate the switch (e.g.,
`through a button). A magnifier coupled to the system provides a magnified image of the
`patient’s eye,’ if desired. Preferably, an annular housing integrates the LED (or a plurality
`of LEDs) together suchthat a button activates and generates the blue light energy, and a
`user views through the center of the housing, through a magnifier therein, to View the
`patient’s eye.
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`
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`10‘
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`g-
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`

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`‘y. Docket No. 389841
`
`Hand-Held Qphthalmic Illuminator
`
`Related Applications
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`This applicationis a continuation--1n--part of, and claims priority to, commonly owne and
`TUUC I)“
`co--pending US. Application No. 09/175H796 filed on October 20,1998kand hereby
`incorporated by reference.
`
`Background of the Invention
`
`Ophthalmologists, optometrists and other medical doctors and health care professionals
`frequently are required to examine the cornea of the human eye for scrapes abiasions, .
`dirt or f01eign bodies The current technology utilizes a battery operated hand-held
`pcnlight illuminatorin conjunction with a solution of Sodium Fluorescein. Anexample of 4“
`an existing prior art device is the Solan Blu-Slit® manufactured by Xomed Surgical
`Products, Inc. of Jacksonville, FL. The penlight illuminator typically uses conventional
`batteries as a power source and an incandescent or halogen light bulb, A cobalt blue filter
`attached over the lamp filters the white light emitted bythe bulb to produce a blue beam.
`This blue beam is used to illuminate the patients eye after application of the Sodium
`Fluorescein dye.
`
`
`
`The fluorescein dye, which is typically impregnated in sterile paper, is administered by
`the physician in the following manner. The patients upper eyelid is retracted and the
`sodium fluorescein impregnated paper applicator
`is made to contact
`the bulbar
`conjunctiva of the eye at the temporal side. The applicator is removed and the eyelid is
`opened and closed several times to allow diffusion of the dye over the entire conjunctival
`area and cornea.
`
`The fluorescein dye tends to accumulate in epithelial defects of the cornea and
`illumination of the eye will cause the defect to fluoresce vividly. By using blue filtered
`light to illuminate the eye of the patient, which. has been dyed with fluorescein,
`this
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`fluorescence is most observable. The amount of fluorescence observable is proportional
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`to the accumulation of the fluorescein or the magnitude of the defect. However,
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`the
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`magnitude of the fluorescence is also proportional to both the intensity and spectral purity
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`of the light illuminating the patient’s eye. In other words, a'brighter and more spectrally
`pure beam will show more detail and thus is more desirable to the physician.
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`Summary of the Invention
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`The subject of this invention is a device which is used to illuminate a patient’s eye that
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`has been administered with a fluorescent dye for the purpose of examining the eye for
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`epithelial defects. The invention in its simplest form utilizes four components: a battery,
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`an electrical resistor, an electrical switch and a blue light emitting diode.
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`Brief Description of the Invention
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`Figure 1 depicts an electrical schematic of an ophthalmic’illuminator utilizing a' blueLED
`source according to the invention
`Figure 2 shows an alternative ophthalmic flluminator of the invention.
`Figure 3 shows a perspective View of a hand held eye illuminator constructed according
`to the invention.
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`Figure 4 shows a perspective View of another hand held eye illuminator constructed
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`according to the invention.
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`Figure 5 shows a perspective interior view of the illuminator of Figure 4.
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`Figure 6 shows a perspective View of another hand held eye illuminator constructed
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`according to the invention.
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`Figure 7 shows a perspective interior view of the illuminator of Figure 6.
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`Detailed Description of the Invention
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`In schematic 10 of Figure 1, when the switch 12 is closed electrical energy from the
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`battery 14 flows through the circuit 10 and causes the blue LED 16 to produce blue light
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`
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`is
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`18. The resistor 20 is used to limit the current that is applied to the LED 16 as per the
`manufacturer specification: which is typically 20 to 30 milli-ampsi Certain LED’s have any
`internal resistor 20 built into the LED package, as known in the art. Battery 14 voltage is
`typically four to twelve volts DC. The blue LED’s are for example manufactured by both
`CREE and NICHIA and typically produce illumination on theporder of 0.50 candle or
`more at a wavelength of 450 nano—meters with a typical bandpass of 50nm. These LED ’s
`typically are comprised of Gallium Nitride on a Silicon Carbide substrate (NICHIA) or
`just Silicon Carbide (CREE). In one embodiment of the invention, resistor 20 is not
`required; rather, battery 14 serves as the resistor for circuit 10.
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`The ophthalmic illuminator as depicted in Figure 1 is superior to the current incandescent
`technology for the following reasons: first, the blue LED 16 emits more illumination in
`the desired blue spectrum (425 to 475 NM) than the filtered incandescent lamp, which
`results in more fluorescence of the fluorescein dyed eye 22 andthus has better sensitivity;
`second, the blue LED 18 uses less power than a blue optically filtered incandescent or
`halogen bulb so that the battery power source 14 should last significantly longer; third,
`the invention is simpler to the prior art technology in that there is no need for a blue
`bandpass Optical filter.
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`There are a number of enhancements that can be made to the basic invention as shown in
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`Figure 1. First, a lens 24 may be added close to the LED 18. between the LED 18 and the
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`patient’s eye 22 to maximize the light collection efficiency of the system. A reflector
`could be added separately or used in conjunction with a lens for the same purpose.
`Second, the electrical circuit l0 could be modified with a pulse means 13 to cause the
`blue LED 16 to operate in a pulsed mode instead of continuous mode. This would enable
`higher peak current to be applied to the blue LED l6 to produce the appearance of an
`even brighter beam and hence more fluorescence sensitivity to the physician. Third, a
`simple magnifier tens could be added to the device 10 to provide a magnified View of the
`patient’s eye 22 to the physician or user (see Figure 2). The fixed magnification of this
`lens would typically be chosen to between 1.5x and 15x. Typically the magnifications are
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`between 2x and 10x. A variable focal length zoom lens could also be substituted as the
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`simple magnifier to provide a range of magnification for the physician user.
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`The invention described here can be manufactured as a stand-alone hand held device or
`incorporated into other ophthalmic diagnostic instruments such as a tabletop or hand
`held slit lamp.
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`Figure 2 shows an alternative system 100 of an ophthalmic illuminator constructed
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`according to the invention. Figure 2 also shows the patient’s eye 102 illuminated by blue
`light 104 generated by the diode 106. The light 104 is preferably coupled to the eye 102
`through an optical lens (or reflector, known in the art) 108 to increase the blue light
`energy at the eye 102.
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`
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`System 100 preferably integrates to a common housing 110 such: that a user can hold the
`y
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`system 100 during treatment of the eye 102. Although It
`hown, the circuit of Figure l
`can reside within the housing 110; and a button 112 can be used to operate the switch 12
`(Figure 1) which in turn causes the generation of light 104. The button 112 is for example
`operated by a physician’s finger.
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`System 100 can also include a magnifier 114 coupled to the housing 110 such that the
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`physician’s eye 116 can view the patient’seye 102 with increased magnifier. A zoom
`lens (known in the art can replace the magnifier 114 such that selective control of that
`magnification is achieved.
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`
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`Figure 3 shows a hand held illuminator 200 constructed according to the invention.
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`Illuminator 200 has an annular housing 202 that contains circuitry such as schematic 10
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`of Figure 1. A button 204 is arranged with housing 202 such that a user may press to
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`generate light energy 206 to illuminate a patient’s eye 208. Button 204 for example
`functions as switch 12, Figure l. A user of illuminator 200 may then peer through
`aperture 210, along path 212, to conveniently view patient eye 208. Aperture 210 may
`optionally include a magnifying lens, or zoom lens, according to preferred embodiments
`
`if)
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`in.
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`

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`of the invention. Sources for generating energy 206 include a LED such as LED 16,
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`Figure 1. Sources may be integrated with housing 202 in various ways as illustrated
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`below.
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`In accord with the invention, energy 206 delivered from sources (e.g., LEDs)
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`may be considered a transmit channel while path 212 may be considered a receive
`channel. In one embodiment of the invention, the energy is blue light that creates green
`fluorescence from the eye; and thus a lens in aperture 210 is preferably coated with a
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`green filter thin film coating to filter light along the receive channel.
`
`Figure 4 shows a hand held i11uminator 214 constructed according to the invention.
`
`Illuminator 214 has an annular housing 216 that contains circuitry such as schematic 10
`
`of Figure 1. A button 218 is arranged with housing 216 such that a user may press to
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`generate light energy 221 to illuminate a patient’s eye 217, as above. Eutton 218 for
`example functions as switch 12, Figure 1. Illuminator 214 further has an optical
`magnifier in the form of a lens 219 for a user to peer through to conveniently View patient
`eye 217. A LED 220 integrates with housing 216 to generate light energy 218. LED 220
`may optionally include a focusing lens, though one is not required.
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`Figure 5 shows an interior portion 222 of illuminator 21.4. Specifically, interior portion
`222 shows further features of button 218 and LED 220, each. connected in circuit to
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`internal battery 224. Battery 224 for example operates as in battery 14, Figure 1, to power
`LED 220. Element 216a forms the back of housingi216.
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`required. Although
`e LEDs 238 are shown, more or fewer LEDs can be used without
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`departing from the scop
`Figure 7 shows an interior portion 240 of illuminator 230. Specifically, interior portion
`240 shows further features of button 234 and LEDs 238, Each connected in circuit to
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`e invention.
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`internal battery 242. Battery 242 for example operates as in battery 14, Figure l, to power
`LEDs 238. Element 232a forms the back of housing 232.
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`In addition to the advantages apparent in the foregoing description, the invention may
`
`have application in other fields outside of ophthalmology. For example, in the field of
`
`dermatology, an illuminator of the invention may be used to illuminate skin, along the
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`transmit channel, and to View the skin along the receive channel.
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`In View of the foregoing, what is claimed is:
`
`
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`
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`1.
`
`An ophthalmic illuminator, comprising:
`
`a battery;
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`an electrical resistor in circuit with the battery;
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`an electrical switch in circuit with the resistor;
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`at least one light emitting diode,
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`in circuit with the switch, for generating blue light
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`energy in response to activation of the switch; and
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`a fluorescein dye administered to a patent’s eye, the dye being responsive to the energy to
`fluoresce.
`
`
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`2.
`
`An illuminator of claim 1,
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`further comprising an optical element disposed
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`between the diode and the eye to increase blue light energy reaching the eye.
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`3.
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`An illuminator of claim 2, wherein the element is one of a lens or a poWered
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`reflector.
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`4.
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`An illuminator of claim 1, further comprising electronicstr cyclically energizing
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`the diode, wherein the diode generates the blue light at a predetermined frequency in
`
`order to increase the illumination appearance of the energy.
`
`5.
`
`An illuminator of claim 1, further, comprising a housing for integrating the
`
`battery, switch, resistor and diode into an integral package, the diode being positioned to
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`generate blue light energy away from the package, and further comprising a magnifier
`
`lens coupled to the housing for providing a magnified image of the patient’s eye to a user
`of the illuminator.
`
`An illurninator of claim 5, wherein the magnifier lens has a magnification
`6.
`between about 1.5X and 15X.
`
`7.
`
`An illuminator of claim 1, further comprising a housing for integrating the
`
`battery, switch, resistor and diode into an integral package, the diode being positioned to
`
`
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`79%
`
`an
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`

`

`generate blue light energy away from the package, and further comprising a zoom lens
`coupled to the housing for providing a selective magnified image of the patient‘s eye to a
`user of the illuminator.
`
`8.
`
`9.
`
`An illuminator of claim 1, wherein the dye comprisest‘Sodium Fluorescein.
`
`An illuminator of claim 1, wherein the diode comprises Gallium nitride.
`
`10.
`
`An illuminator of claim 1, wherein the diode comprises Silicon Carbide.
`
`
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`An illuminator of claim 1, further comprising a substantially annular housing
`11.
`constructed and arranged with a button for operating the switch, a user of the illuminator
`
`viewing through an aperture in the housing to View the patient’s eye.
`
`An illuminator..of claim 11,.further comprising a magmvfying lens constructed
`12.
`and arranged with the aperture, for magnifying the patient’s eye for theius'er;
`\
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`‘3;
`
`An illuminator of claim 11, further, comprising a plurality of light emitting
`13.
`diodes, each diode responsive to activation by the button to generate the blue-light.
`
`An illuminator of claim 1, further comprising a focusing lens constructed and
`14.
`arranged with at least one of the diodes to focus the blue light energy onto the patient’s
`eye.
`
`15.
`
`A method for
`
`illuminating a patient’s eye for ophthalmic examination,
`
`comprising the steps of: administering a fluorescein dye to the patent’s eye, illuminating
`the eye with blue light energy generated from one or more light emitting diodes, the dye
`being responsive to the blue light energy to fluoresce, and viewing the patient’s eye, and
`viewing the eye while the dye fluoresces.
`
`,9.
`
`

`

`16.
`
`A method of claim 15, wherein the step of administering a fluorescein dye
`
`comprises administering Sodium Fluorescein to the eye.
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`17.
`
`A method of claim 15, wherein the step of illuminating the eye comprises
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`pressing a button on an annular-shaped housing, and whei’éin the step of Viewing the
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`patient’s eye comprises viewing through a center of the housing.
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`18.
`
`A method of claim 15, wherein the step of illuminating comprises generating
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`light from a plurality of light emitting diodes.
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`19.
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`A method of claim 15, wherein the step of viewing comprises viewing through a
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`magnifying lens coupled with a housing that supports the diodes.
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`20.
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`A method of claim 15, further comprising-the step of focusing the blue light
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`3’
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`energy onto the patient’ seye.
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`,.
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`‘
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`”’
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`—
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`a.»
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`

`

`PATENT
`
`Atty Docket No. 389841
`Express Mail Label No. EL656245460US
`
`COMBINED DECLARATION AND POWER OF ATTORNEY
`
`(ORIGINAL, DESIGN, NATIONAL STAGE OF PCT,
`SUPPLEMENTAL, DIVISIONAL, CONTINUATION OR CIP)
`
`As a below named inventor, I hereby declare that:
`
`TYPE OF DECLARATION
`
`This declaration is of the following type:
`
`X
`
`Continuation—impart
`
`INVENTORSHIP IDENTIFICATION
`
`
`
`I
`My residence post office address and citizenship are as stated below next to my name.
`believe I am the original, first and sole inventor (if only one name is listed below) or an original'7‘
`first and joint inventor (if plural names are listed below) of the subject matter whichis claimed
`and for which a patent is sought on the invention entitled:

`,
`,
`>
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`?
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`HAND HELD OPHTHALMIC ILUMINATOR I
`
`’
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`SPECIFICATION IDENTIFICATION
`
`The specification
`
`X
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`is attached hereto.
`
`ACKNOWLEDGMENT OF REVIEW_ OF PAPERS AND DUTY OF CANDOR
`
`I hereby state that I have reviewed and understand the contents of the above-mentioned
`specification, including the claims, as amended by any amendment referred to above (if any).
`
`I acknowledge the duty to disclose all information knoan to me to be material to
`patentability of this application in accordance with Title 37, Code of Federal Regulations, § 1.56
`(a).
`
`and which is material to the examination of this application, namely, information where
`there is a substantial likelihood that a reasonable examiner would consider it important in
`deciding whether to allow the application to issue as a patent, and
`
`"a
`
`

`

`
`
`
`
`PATENT
`
`Atty Docket No. 389841
`Express Mail Label No. EL656245460US
`
`CLAIM FOR BENEFIT OF EARLIER U.S./PCT APPLICATION(S)
`UNDER 35 U.S.C. 120
`
`I hereby claim the benefit under Title 35, United States Code,§ 120 of any United States
`application(s) or PCT international application(s) designating the United States of America that
`is/are listed below and, insofar as the subject matter of each of the Claims of the application is not
`disclosed in that/those prior application(s) in the manner provided by the first paragraph of Title
`35, United States Code, § 112, I acknowledge the duty to disclose material information as
`defined in Title 37, Code of Federal Regulations, § 1.56(a) which occurred between the filing
`date of the prior application(s) and the national or PCT international filing date of this
`application.
`
`PRIOR U.S. APPLICATIONS OR PCT lNTERNATIONAL APPLICATION(S)
`DESIGNATING THE U.S. FOR BENEFIT UNDER 35 USC 120
`
`U.S. APPLICATION(S)
`
`STATUS (Check One)M
`
`
`PATENTE1%PENDING ABANDONED
`US FILING DATE
`US APPLICATION(S)
`
`x 09/175 796 10/20/98 ' ‘
`
`
`
`
`
`
`PRIORITY CLAIM
`
`I hereby claim foreign priciity benefits under Title 35 United States Code, § 119 of any
`fOieign application(s) for patent or inventor‘s certificate or of any PCT intemational application(s)
`designating at least one country other than the United States of America listed below and have also
`identified below any foreign ap

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