DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/14/2025 has been entered.
Claims Status
In the amendment filed 10/17/2025, which has been entered with the filing of the request for continued examination on 11/14/2025, claims 16-31 are pending.
Claims 28-29 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11-09-2021.
In the amendment filed 10/17/2025, claims 1 and 31 were amended. No claims were canceled or newly added.
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 .
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
elastic blocking means in claim 1 because sufficient structure of “fixed to the sheet carrier associated with each hole and comprising at least three elastic contact portions distributed on a circumference of said each hole” is recited within the claim.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16-27 and 30-31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 16 was amended to recite “the elastic blocking means is configured to grasp and hold the frustoconical shape of the clamping portion.” This limitation represents new matter because this gripping arrangement was not recited in the specification as originally filed or shown in the drawings as originally filed. Fig 4 is a schematic drawing of the apparatus during the inserting process as noted by arrow 27 showing the pushing direction (see p14 ln 7-12) in which it is clarified that at the fully inserted position, the O-ring 25 (one embodiment of elastic blocking means) grasps the cylindrical portion (CY) of the clamping portion (see p14, ln 13-31 and in particular line 29-31 of p14). Fig 11 of the instant specification also shows the fully inserted position in which the O-ring (25) is grasping the cylindrical portion of the block piece (B) as described in line 29-31 of p14 of the specification. Fig 15 demonstrates the alternative embodiment of elastic inwardly bent cutouts tongues (53) also grasping the cylindrical portion of the block piece (B). The specification also clearly supports the alternative embodiment of structure 53 as grasping the cylindrical portion (CY) of the block piece (B) in lines 19-27 of p18. Therefore the instant specification and drawings do not support the amended limitation of “the elastic blocking means is configured to grasp and hold the frustoconical shape of the clamping portion” because the drawings and specification support grasping and holding the cylindrical portion and Fig 4 is a schematic drawing demonstrating the insertion direction. For purpose of examination on the merits, the claims will be examined as if the limitation does not represent new matter in the event applicant can demonstrate that the limitation does have support in the specification and drawings as originally filed. This is not an indication that support is present. For examination on the merits, the claims will be examined inclusive of the “to grasp and hold” is inclusive of mid-insertion of the block piece.
The remaining claims are included for their dependence from a claim addressed above.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 16, 17, 25, 27, and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adachi (EP2460907) in view of CN204918749 (previously relied upon as ‘749 with the original copy of the document filed /05/05/2020 and the machine translation provided 2/24/2022) of Li et al., hereinafter Li, and US Patent Application Publication 2013/0228961 of Schneider et al., hereinafter Schneider.
Regarding claim 16, Adachi teaches an optical elements holder device for a coating station comprising, as shown in figure 1: a sheet carrier 10 having holes 24 (abstract) and are shown to be presenting a shape of a dome or a part of a dome as they are aligned in figure 1 [0020]; and elastic blocking means 26 fixed to the sheet carrier associated with each hole and configured to block a block piece carrying a lens blank to hold the lens blank in a predetermined position for coating [0022], Figs. 2-4. Adachi only shows one such elastic blocking means per hole.
Regarding more than one elastic blocking means per hole, Li also teaches a substrate holder for a coating station [0002], where the substrates are similarly positioned in holes of a dome shaped carrier and is held in the correct alignment by elastic blocking parts 8 [0009] which it shows in figure 5 are regularly distributed around the circumference of the hole. It further teaches that by using multiple fixing parts, specifically 3-8 such fixing parts it increases the reliability of properly fixing the substrate to the holder [0019]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to use at least 3 elastic fixing parts around the circumference of the hole, as taught by Li in the apparatus of Adachi in order to increase the reliability of fixing the lens blank to the holder.
Adachi in view of Li does not teach that the holder device comprises at least one block piece held and clamped by the sheet carrier, wherein the block piece has a basic body made of plastic and has a workpiece mounting face on one side and a clamping portion on the other side. Schneider is directed to processing (abstract) and coating lenses [0042] and teaches holding the lenses with a block piece made from a plastic material [0026-0027] with a workpiece mounting face (holding surface 1.4 Fig 1 [0053]) for attachment of the lens blank with the aid of a blocking material (adhesive) on one side [0029-0030] and a clamping portion (coupling part 1.1 Fig 1 [0053]) on the other side to be grasped by a chuck or other suitable coupler [0030], [0046]. Schneider also teaches the clamping portion (coupling part 1.1 Fig 1) has a cylindrical portion and a frustoconical shape of a truncated cone (Fig 1 and 12-14) [0054]. Schneider also teaches the block piece inserted into a carrier having the shape of a dome (Fig 10, see openings for lenses as 1.2 and the coupling part 1.1 having the frustoconical portion emerging from the upper side of the dome (Fig 10). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Adachi and Adachi in view of Li to have incorporate mounting lens blanks that are mounted on a block piece rather than mounting the lens directly as taught by Schneider because Schneider teaches this enables the lens to be held by the same support throughout the processing of the one side of the lens [0040-0041] and avoids the expense of reblocking [0043]. Note that in the combination as applied, the frustoconical and cylindrical portions of the clamping portion (coupling part) enter the hole of the dome sheet carrier and therefore are subject to the grasping and holding by the elastic blocking means within the hole of the dome sheet carrier of Adachi and Adachi in view of Li. Further, Schneider discusses clamping forces being applied transversely to the coupling part (clamping portion) [0048]. Note that when the frustoconical portion enters the hole, it is subject to the grasping and holding at least for the portion closest to the cylindrical portion.
Regarding claim 17, as discussed above, Li shows that the elastic blocking parts 8 [0009] which it shows in figure 5 are regularly distributed around the circumference of the hole. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to regularly distribute the elastic blocking parts around the hole, because that is what the prior art shows doing and doing so would produce no more than predictable results.
Regarding claim 25, Adachi, teaches that the elastic blocking means includes, as shown in figures 4-5, elastic inwardly bent cutouts tongues configured to cooperate with a backside of the block piece and to fix the latter in a centered position with respect to the associated hole [0022] and further teaches that the elastic fixing parts can include as shown in figure 2, shows the perimeter of the holes include a cylindrical component aligned with the hole, that is an integral part of the sheet carrier. However, it does not specifically teach making it from metal or show that it is a cylinder that is attached to form the required shape. However, Li teaches, as shown in figure 3, the holding device including a “ring” 7, which is cylindrical, centered on the hole, and is removably attached via pivot shafts [0044]. Li further teaches making the holder from metal components [0005]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to use a metallic cylindrical component centered on the hole as the holder, since the prior art teaches making the structure from such a metal cylinder and doing so would produce no more than predictable results and furthermore to make it integral to the sheet carrier, as shown by Adachi, which is structurally indistinguishable from it having been welded to the sheet carrier and from which additionally, it is readily apparent for the parts to have been welded together.
Regarding claim 27, Adachi in view of Li further teaches that the optical elements holder device according to claim 16 is integrated into a coating station for optical elements [0015].
Regarding claim 30, Adachi teaches that the elastic contacts can be made from an elastically deformable material, so the material is elastic [0022].
Claims 18-23 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adachi in view of Li and Schneider as applied to claim 16 and 25 above, and further in view of US Patent Application Publication 2010/0136227 of Kirchoff et al., hereinafter Kirchoff, and US Patent Application Publication 2019/0258084 of Stevens et al., hereinafter Stevens
Regarding claim 18, the combination remains as applied to claim 16 above. Adachi does not particularly teach including an elastic O-ring in the elastic blocking means. In the same field of endeavor of lens handling and coating (abstract), Kirchoff teaches a lens block (120 Fig 4C) is gripped in a recess of a holder (45 Fig 4C, note that 45 is a cup of spindle 130 shown in Fig 4B that is attached to the arms of spider assembly 156 shown in Fig 4A [0038]) and held by an O-ring seal (43 Fig 4C) [0038] gripping the outer edge of the lens block (Fig 4C, note the frustoconical portion is shown already inserted in Fig 4C and would have contacted the O-ring first during insertion). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Adachi and the combination as applied to claim 16 to use an O-ring instead of the elastic blocking means of Adachi because Kirchoff demonstrates this as a functional alternative for gripping and holding the lens block when the block is inserted so that the lens surface to be treated is facing downward (Fig 4B,C). Regarding the O-ring being elastic, while it is noted that in the context of sealing as indicated by Kirchoff [0038] it would have been obvious to a person having ordinary skill in the art to use an elastic material for the O-ring to achieve the disclosed sealing function, Kirchoff does not explicitly teach the O-ring is elastic and does not teach the material of the O-ring. In the same field of endeavor of lens fabrication (abstract) and addressing the same problem of gripping a carrier structure (102 Fig 5D), Stevens teaches an outer carrier structure (105 Fig 5D) includes an O-ring (108 Fig 5D) for gripping by pressing the inner surface of 102 and teaches the O-ring is made of an elastic material [0095]. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the combination and Adachi to include the O-ring is made of elastic material because Stevens teaches this is a suitable material for an O-ring [0095] which is perform a gripping and sealing function.
Regarding claim 19, the combination remains as applied to claim 18 above. Stevens as applied in the combination teaches the O-ring is made of fluoroelastomer [0095].
Regarding claim 20, see the previous discussion for claim 25 above, the optical elements holder has a ring housing (which is annular) and is disposed in a hole of the sheet carrier. Since it does not specifically teach including an O-ring, it does not specifically teach where to place one. However, Kirchoff shows that the O-ring (43 Fig 4C) is housed in an annular ring housing of a holder device in order grip the lens block (Fig 4C).
Regarding claim 21, see the previous discussion for claim 25.
Regarding claim 22, see the previous discussion for claim 25. Li shows the ring as detachably fixed, specifically exemplified as using a screw connector to do so [0011]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to have the annular ring housing detachably fixed to the sheet carrier because the prior art teaches using such a configuration and doing so would produce no more than predictable results.
Regarding claim 23, Li only exemplifies using a screw connector as the fastening means of the ring housing into the sheet carrier [0011], but it also teaches using metal spring wires (clips) as known fastening means [0015]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention for the annular ring housing presents clipping fastening means for clipping the annular ring housing into a hole of the sheet carrier, since clipping fastening means were also known fastening means to the prior art and doing so would produce no more than predictable results.
Regarding claim 31, the combination remains as applied to claim 18 above. Kirchoff is silent as to the O-ring having a smaller inner diameter than the outer diameter of the cylindrical portion of the clamping portion (i.e. the diameter of the cylindrical portion being larger than the inner diameter of the O-ring), however is it noted that this is obvious in view of the indication that the O-ring of Kirchoff is performing sealing because sealing requires the O-ring to contact and press against the block. Further, Stevens as applied in the combination to teach details of the O-ring explicitly teaches the O-ring has a smaller inner diameter than the outer diameter of the structure (103) being gripped [0095]. Therefore It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the O-ring of the combination as applied to claim 18 to have a smaller diameter than the outer diameter of the cylindrical portion of the block because Stevens teaches that this enables the gripping arrangement [0095].
Claim 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adachi in view of Li, Schneider, Kirchoff, and Stevens as applied to claim 20 and further in view of Zaiser (prev. presented US 2005/0168691).
Regarding claim 24, Adachi does not specifically teach using an alignment bar with the lenses to hold them for processing. However, Zaiser is also directed towards ways to hold lenses for processing (abstract), but it further teaches, as shown in figure 6, the cylindrical cavity of a holding device with an alignment bar (transverse web) 3 configured to cooperate with a transverse central groove on a backside of a block piece [0030], and it teaches that using such structures allows the lens to be correctly aligned in the holder without an additional step of alignment since that function is provided by the cooperation of the groove and bar [0018]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to the annular ring housing presents an alignment bar configured to cooperate with a transverse central groove on a backside of the block piece as taught by Zaiser in order to be able to desirably align the lens in the optical elements holder device without additional alignment steps.
Claims 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adachi in view of Li and Schneider as applied to claim 25 above, and further in view of Zaiser.
Regarding claim 26, Adachi does not specifically teach using an alignment bar with the lenses to hold them for processing. However, Zaiser is also directed towards ways to hold lenses for processing (abstract), but it further teaches, as shown in figure 6, the cylindrical cavity of a holding device with an alignment bar (transverse web) 3 configured to cooperate with a transverse central groove on a backside of a block piece [0030], and it teaches that using such structures allows the lens to be correctly aligned in the holder without an additional step of alignment since that function is provided by the cooperation of the groove and bar [0018]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to the annular ring housing presents an alignment bar configured to cooperate with a transverse central groove on a backside of the block piece as taught by Zaiser in order to be able to desirably align the lens in the optical elements holder device without additional alignment steps.
Response to Arguments
Applicant's arguments filed 10/17/2025, hereinafter reply, have been fully considered but they are not persuasive as to the allowability of the instant claims.
Applicant argues (reply p7) that Adachi and Li (previously referred to as ‘749) do not teach the block piece. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues (reply p7-8) the teachings of previously applied Breme. This is moot in view of the new reference Schneider which shows the block piece inserted into a sheet carrier. The arguments regarding Jiang (reply p8) are moot because Jiang is no longer being used. The newly applied refences demonstrate the recited gripping arrangement of the O-ring.
The remaining argument (reply p8) that Etzkorn and Zaiser do not teach the block piece or the elastic blocking means are moot because the newly applied combination as applied to claim 16 teaches those limitations.
Therefore the arguments are not persuasive as to the allowability of the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2008/0007849 teaches two elastic gripping structures for gripping a lens in a dome structure (Fig 7). US 2004/0036989 teaches three structures for gripping a lens (Fig 7). US2017/0274490 demonstrates a lens block being held in a holding structure for processing (Fig 8B and Fig 13B).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET D KLUNK whose telephone number is (571)270-5513. The examiner can normally be reached Mon - Fri 9:30-5:30.
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/MARGARET KLUNK/Examiner, Art Unit 1716
/KEATH T CHEN/Primary Examiner, Art Unit 1716