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 .
Response to Amendment
Receipt is acknowledged of the amendment filed 9/2/2025. Claims 1, 4-7, 10-11, 14-16, 19, 21-22, 25, 26, 30-31 are amended and claims 1-34 are currently pending.
Response to Arguments
Applicant's arguments filed 9/2/2025 have been fully considered but they are not persuasive.
On pages 9-10 of the Remarks, Applicant argues “[b]ecause the Applicant specifically avoided using the phrases "a means for" or "a step for," Applicant respectfully submits that any uncertainty should be resolved in favor of upholding the presumption, and respectfully requests that the Office withdraw its assertion that claims 1-31 should be interpreted as means-plus-function”. This is not a persuasive argument and the claims continue to be interpreted according to 35 U.S.C. 112(f). As noted in the previous action, the claims do not recite sufficient structure for performing the claimed function and, as it seems Applicant intends to not invoke 35 U.S.C. 112(f), the claims or written description must be amended to overcome the presumption. Application of 35 U.S.C. 112(f) is driven by the claim language, not by applicant’s intent or mere statements to the contrary included in the specification or made during prosecution. See In re Donaldson Co., 16 F.3d at 1194, 29 USPQ2d at 1850 (stating that 35 U.S.C. 112, sixth paragraph "merely sets a limit on how broadly the PTO may construe means-plus-function language under the rubric of reasonable interpretation’").
On page 10 of the Response, Applicant argues that the claimed invention is “fully enabled by the written description” in light of Paragraph [0031] of the original filed Specifications. Examiner respectfully disagrees. Applicant states a grating period of 8µm-300µm in Paragraph [0025] of the originally filed disclosure, and a grating period of 8µm in paragraph [0031]. As shown in the attached NPL references and argued in the 35 U.S.C. 112(a) rejection below, there are no known gratings that operate with such long grating periods for the disclosed operational wavelengths in the laser system. It is understood that Applicant has the number “8µm” though there is no disclosure of 300mm specifically in the original filing. Examiner notes that “300mm” is not the same as “300µm”, though neither grating periodicity is supported in the context of the laser system.
On page 11 of the Remarks, Applicant argues the Specifications “provides a number of examples for the beam steering element that provides its functional operation”. Examiner respectfully disagrees. Taking a first example mentioned by Applicant (i.e. SLM and lens set), Examiner notes that the combination of a generic SLM and lens does not inherently perform the claimed function of beam steering. An SLM merely modifying a phase profile or polarization subsequently impinging on a biconvex glass lens does not provide a function of beam steering. Subsequently passing a modulated beam to an optical wedge or grating would not necessarily provide a beam steering function. In another hypothetical example, an SLM changing the beam axis and/or amplitude impinging on a lens, wedge, or grating would perform the function of beam steering. It is acknowledged that Applicant discloses “an optical element capable of modulating amplitudes and phases of the incident light, and is configured to generate a diffractive pattern to steer the laser beam L and control a phase pattern of the spatial light modulator 21, in which the size and period of the phase pattern are controllable”, but such a structure with such capabilities is not specified. It is unclear, at least, whether an optical wedge or grating is (or are) required to be integrated with a standalone SLM or if the wedge/grating are the SLM. The structure corresponding to the beam steering function is not clearly disclosed and thus the metes and bounds of the claim, invoking 35 U.S.C. 112(f), cannot be determined.
On page 12 of the Remarks, Applicant argues the scanning-angle expanding lens set “is clearly described and has clear operational and functional metes and bounds”. Examiner contends that clear operational metes and bounds do not meet the requirements of clearly defining the scope of an apparatus claim in which the structural correspondence to said operational and functional metes and bounds must be understood. Examiner maintains that Applicant has provided a single specie for a “lens set” in the Specifications that performs the function of expanding a scanning-angle, but Applicant has not provided clear metes and bounds to the claimed genus. As stated in the rejection below, a person having ordinary skill in the art would at least understand the term “lens” to conventional extend to transmissive optical elements though the claim neither clearly includes nor excludes these structures.
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 is: “beam steering element” in claims 1 and 16.
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 § 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 11 and 26 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.
Claims 11 and 26 recite “a grating periodical range of the prismatic lens is between 8 µm and 300 mm”. In the Specifications, Applicant discloses “(λ=1.55 µm, the grating period Λ is 8 µm …” ([0031]) and “a grating having a period of 8 µm-300 µm”. Given the disclosed wavelength range from 900nm-1550nm, this range of grating pitch exceeds the Littrow condition and cannot exist as a solution to the diffraction condition. The theoretical limit on grating pitch is approximately twice the operational wavelength, though a person having ordinary skill in the art would understand various factors to limit the diffraction efficiency in a proximal range. At the lowest end of the spectrum for the disclosed grating pitch (8µm), an operational wavelength for laser light to be diffracted would be > 8µm. As the grating pitch increase to approximately 1mm, the operational wavelength would no longer be considered “light” to a person having ordinary skill in the art as the electromagnetic spectrum enters the microwave/radio designation. For these operational wavelengths, amplification by stimulated emission radiation is considered a “maser” and not a “laser”. Further, the longest wavelength masers known operate in the range of 20cm wavelengths and functional gratings would be required to be have corresponding wavelengths of approximately 20cm – though no known grating could be found as a working example. Applicant has not evidenced possession of the claim as a whole as there is no combination of laser light source and functional diffractive grating tuned for the disclosed light sources.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claim limitation “beam steering element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is a clear correspondence to a first embodiment of the “beam steering element” in the Specifications: “a spatial light modulator (SLM) 21 and a lens set 22 of Fourier transform, as shown in FIG. 2”. The disclosed structure includes an SLM and a lens set, shown as embodied by a singlet lens. However, there is no clear correspondence to additional embodiment(s) of “the beam steering element” in the Specifications: “the spatial light modulator 21 is used to modulate the phase 222 of a wedge lens or a grating having a period of 8 um-300 um” and “the spatial light modulator is configured to modulate phases of a prismatic lens or a grating, and a grating periodical range of the prismatic lens is between 8 um and 1000 mm”. Another additional embodiment is implied by the phase diagrams associated with Figs. 3A-3B, in which the spatial light modulator is further specified as providing a specific phase effect without there being a structure clearly corresponding to the beam steering function performed by the spatial light modulator. The various additional embodiments detailed above explicitly corresponding to the beam steering function do not clearly define the metes and bounds of the claimed invention.
In the Specifications [0024], Applicant recites “spatial light modulator 21, as a light adjuster of a liquid crystal on silicon (LCoS), is an optical element capable of modulating amplitudes and phases of the incident light, and is configured to generate a diffractive pattern to steer the laser beam L and control a phase pattern of the spatial light modulator 21, in which the size and period of the phase pattern are controllable”. This does not amount to a structure so much as a block box capable of performing various controls on light to achieve the overarching function of steering a beam. Further, this portion of the disclosure muddles the metes and bounds of the structure as it pertains to embodiments of the Fourier transform element embodied, in part, as a diffractive structure that is neither clearly independent of the SLM nor integrated with the SLM.
In the Specifications [0025], Applicant recites (1) “the spatial light modulator 21 is used to modulate the phase 222 of a wedge lens or a grating”, (2) “as shown in FIG. 3A, the phase A is transformed into a phase A1 by the lens set 22 of Fourier transform (FIG. 2)”, and (3) “FIG. 3B, the phase A2 is divided into a plurality of sections, and each of the sections of the phase A is deflected by the lens set 22 so as to produce corresponding phase A2”. The disclosure relates to lens set 22, depicted in Fig. 2, and described as performing a Fourier transform on laser beams so as to focus beams. In the disclosure (1), Applicant discloses that a phase 222 of a lens or grating is modulated (by an SLM). It is unclear what structure this describes. It is unclear if the SLM is itself a lens or grating, or vice versa, or merely functionally integrated with a lens or grating. There are examples in the art of wedge lenses and grating comprised of liquid crystal elements that are modulated, i.e. a same structure changed in time. Perhaps the use of “modulated” is inappropriately used in disclosure (1) and the intent is to limit the SLM as providing an input phase to be modulated by the lens or grating. In the disclosure (2), Fig. 2 is described as showing a lens set 22 (not shown in Fig. 2) resulting a Fourier transform of the phase of incoming light. Such a phase transformation is a static operation and while resulting in a redirected beam, does not actively steer a beam in a scanning operation. In the disclosure (3), Fig. 3B is disclosed to show Fourier transformation by a lens resulting in beam splitting and redirection. In summary, the disclosure related to Figs. 3A-3B do not clearly establish a corresponding structure to “beam steering element”.
In original Claim 11, Applicant recites “the spatial light modulator is configured to modulate phase of a prismatic lens or grating”. In light of the disclosure discussed above from [0025], it appears that the claim may define a single element that is both an SLM and prismatic lens or grating as the SLM itself modulates phases of the lens or grating. This integration of SLM functioning and structure and lens/grating functioning and structure entirely obscures that which Applicant corresponds to performing the function of the beam steering element.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 1 and 16 recite “a scanning-angle expanding lens set, adjacent to the beam steering element, in a configuration to receive and integrate the at least two laser beams, and to control a spanning angle and a scanning angle between the at least two laser beams on a scanned object; wherein the spanning angle is an angle of a vertical scan direction of the scanned object, and the scanning angle is another angle of a horizontal scan direction of the scanned object”. The metes and bounds of “in a configuration to receive and integrate the at least two laser beams, and to control a spanning angle and a scanning angle between the at least two laser beams on a scanned object” cannot be determined in light of the Specifications. The Specifications [0029] states “the scanning-angle expanding lens set 3, as a compound spherical lens set, as shown in FIG. 2, includes a first lens 31 and a second lens 32, in which the combination of the first lens 31 and the second lens 32 can be a combination consisted of a spherical lens and at least a non-spherical reflector set”. The ovoid shapes of first lens 31 and second lens 32 would conventionally be understood to correspond to a transmissive optical element, though Applicant specifies that the combination is embodied as one reflective element, at least. Thus an artisan could not determine if the “spherical lens” 31 is embodied as a transmissive or a reflective optical element with a spherical shape. The Specifications [0031] describes the “lens set” as “consisted of two inclined first reflectors 33, a second reflector 34 and a curved lens 35” and “the first reflector 33 has a tilt rotation angle B1 of 18°, the second reflector 34 has a tilt rotation angle B2 of 9°”. The disclosure does not clearly re-define the art-recognized expression “lens” to include reflective optical elements or exclude reflective optical elements. From the original disclosure, it is unclear if the “lens set” is intended to limit the invention to only embodiments having transmissive optical elements performing expansion of the scanning angle or to also include embodiments having reflectors. The metes and bounds of the claimed “scanning-angle expanding lens set” cannot be determined. Dependent Claim 4 does not remedy the indefiniteness as there is no clarification as to the inclusion or exclusion of reflective elements.
Claims 10 and 25 recite the limitation "the at least one laser beam" in Line 2. There is insufficient antecedent basis for this limitation in the claim as there are a plurality of laser beams within the scope of the invention and antecedent basis does not particularly reference any one beam. Additionally, the claims recite that the lens set receives “the at least one laser beam” and performs a Fourier transform “upon the at least one laser beam so as to focus the at least two laser beams”. While the Fourier-transformed laser light converges, the beam that is focused is either the beam that enters the transformation or a description of the light as a whole (i.e. “laser light” that is both incident and exiting from the lens set). The lens set does not clearly establish whether the Fourier transform establishes a convergence angle between two laser beams or establishes respective convergence of two beam profiles with no change to the optical axis. The metes and bounds of the claim cannot be determined.
Claims 15 and 31 recite “a block mask for filtering out refractive laser beams not phase-modulated by the scanning-angle expanding lens set”. There would be no clear interpretation of “refractive laser beams not phase-modulated by the scanning-angle expanding lens set” to a person having ordinary skill in the art. Firstly, there is no clear meaning of “refractive laser beams”. A person having ordinary skill in the art would not understand the metes and bounds of the phrasing as refraction describes the behavior of light, such as a laser beam, transmitted through a material. It would be unclear if the intention is to limit a portion of a beam to one being within a material, one having passed through a material, one passing through a material subsequently, or some alternative meaning. Further, as the claim appears to exclude light phase-modulated by the scanning-angle expanding lens set, it is unclear whether a refractive element is intended to be required by the description “refractive laser beams”.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US PG Pub. 2021/0231781, US Pat. 11,467,327, and US Pat. 12,485,501 disclose various systems of splitting laser beams and steering laser beams for multi-beam projection systems.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J STANFORD whose telephone number is (571)270-3337. The examiner can normally be reached 8AM-4PM PST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER STANFORD/Primary Examiner, Art Unit 2872