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
The present office action is made in response the amendment filed by applicant on 11/16/2025. It is noted that in the amendment, applicant has made changes to the specification and the claims. There is not any change(s) being made to the abstract and the drawings.
2A) Regarding the specification, applicant has made changes to paragraph [0035]; and
2B) Regarding the claims, applicant has amended claim 1, canceled claims 10 and 16-20 and added a new set of claims, i.e., claims 21-26, into the application.
Response to Arguments
The amendments to the specification and the claims as provided in the amendment of 11/16/2025, and applicant's arguments provided in the mentioned amendment, pages 9-12, have been fully considered and resulted the following conclusions.
3A) Regarding the claims, the following conclusions are made:
3A1) because applicant has canceled claims 10 and 16-20 and added new claims 21-26 into the application, thus as amended and newly-added, the pending claims are claims 1-9, 11-15 and 21-26; and
3A2) A review of the newly-added claims has resulted that the new claims have same scope as that recited in the elected and examined claims, thus all pending claims 1-9, 11-15 and 21-26 are examined in the present office action.
B) Regarding the objection(s) to the specification set forth in the office action of 08/22/2025, the amendments to the specification as provided in the amendment of 11/16/2025, and applicant’s arguments provided in the mentioned amendment, page 9, have been fully considered and are sufficient to overcome the objection(s) to the specification set forth in the mentioned office action.
C) Regarding Claim Interpretation as set forth in the office action of 08/22/2205, it is noted that applicant has not amended the claim(s) and/or provided any argument to overcome the Claim Interpretation in the amendment of 11/16/2025, thus the Claim Interpretation of the generic placeholders of “a base unit:, “a display unit”, “a first transmission unit”, “an objective lens unit”, “an ocular lens unit” and “an erecting lens barrel” are repeated in the present office action.
D) Regarding the rejections of claims 1-9 and 11-15 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 08/22/2205, the amendments to the claims as provide din the amendment of 11/16/2025, and applicant’s arguments provide din the mentioned amendment, pages 9-10, have been fully considered and are sufficient to overcome the rejections of claims 1-9 and 11-15 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the mentioned office action.
E) Regarding the rejection of claims 1-2, 8-9 and 11-12 under 35 U.S.C. 102(a)(1) as being anticipated by White et al (US Patent No. 9,423,215), and the rejection of claim 3 under 35 U.S.C. 103 as being unpatentable over White et al in view of Kollegen (Germany reference No. DE 203 01 749 U1), the rejection of claims 13-14 under 35 U.S.C. 103 as being unpatentable over White et al with or without Ingenito (US Patent No. 9,958,666), and the rejection of claim 15 under 35 U.S.C. 103 as being unpatentable over White et al with or without Ingenito in view of Kollegen (Germany reference No. DE 203 01 749 U1) set forth in the office action of 08/22/2205, the amendments to the claims as provide din the amendment of 11/16/2025, and applicant’s arguments provided in the mentioned amendment, pages 11-12, have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Specification
The lengthy specification which was amended by the amendment of 11/16/2025 has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 limitations are:
a) ”a base unit”, “a display unit”, “a first transmission unit” as recited in each of claims 1, 21 and 24; and
b) “an objective lens unit” and “an ocular lens unit”, and “an erecting lens barrel” as recited in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 8-9 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al (CN 106288955 A, submitted by applicant on 04/29/2024).
Li et al discloses an apparatus for use in a sighting telescope.
a) Regarding present claim 1, the apparatus (300) as described in pagers 3-7 (see the attached English Machine Translation) and shown in figs. 1-4 comprises the following features:
a1) a base unit (2, 5-10, 13);
a2) a displaying unit (4) disposed on the base unit wherein the displaying unit comprises a plurality of marks, see pages 5-6 and figs. 3-4;
a3) an adjusting cap (1) disposed outside the displaying unit wherein the adjusting cap comprises a plurality of information displaying portions, see pages 5-6 and figs. 3-4, for showing the marks;
a4) a transmission unit having threads formed on the inner surfaces of the cap (1) and the display unit (4) and the threads formed on the outer surface of the adjusting screw (2) wherein the transmission unit is connected to the adjusting cap and the displaying unit;
a5) the adjusting cap (1) is not linearly movable but rotatably with respect to the base unit; and
a6) the adjusting cap is manually rotatable with respect to the base unit about a rotating axis wherein the information displaying portions are synchronously rotated with the adjusting cap and the first transmission unit drives the displaying unit (4) to linearly move along the rotating axis so as to change the marks shown by the information displaying portions, see pages 5-6 and figs. 1-2.
b) Regarding present claim 2, the displaying unit (4) comprises an annular body disposed around the base unit and the marks are disposed on an outer surface of the body, see pages 5-6 and figs. 1-4.
c) Regarding present claim 3, the annular body of the display unit (4) comprises inner threads formed it sinner surface for attaching to the outer threads formed on the outer surface of the adjusting screw (2) of the base unit.
c) Regarding present claims 8 and 9, adjusting cap (1) comprises a plurality of information displaying portions which are equally spaced around the rotating axis and the marks are numerals, see pages 5-6 and figs. 3-4.
d) Regarding present claims 11-12, the information displaying portions is a through bole which is understood as a transparent portion (Applicant should note that the air defined by the widow/opening or the displaying portion is considered as a transparent portion), see page 6 and figs. 3-4.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 13-15are rejected under 35 U.S.C. 103 as being unpatentable over Li et al with or without Ingenito (US Patent No. 9,958,666, of record).
Regarding present claim 13, it is noted that while Li et al discloses a mechanism for use in a sighting telescope which is understood as an optical device having a housing for supporting an object lens and an ocular lens; however, Li et al does not positively disclose that the housing supporting an erecting lens barrel as recited in present claim 13.
However, the optical device in the form of a sighting scope wherein the housing of the scope is understood as the one supporting an image erecting system is inherently in the housing (304) of the optical device provided by Li et al. If it is not inherent then an optical device in the form of a sighting scope wherein the device comprises a housing for supporting an object, an ocular, and an image reversing system located between the objective and the ocular is known to one skill in the art as can be seen in the optical device provided by Ingenito. In particular, Ingenito discloses a sighting device (1) comprises a housing (2) supports an objective (3), an ocular (4) , an erecting lens barrel (5) located between the objective and the ocular, and an adjustment turret (2), see column 12 and figs. 1-2. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the optical device provided by White at al by using an erecting lens barrel between the objective and the ocular as suggested by Ingenito for the purpose of reversing the image of an object/screen to be seen by a user of the optical device.
Regarding present claim 14, the displaying unit (436) comprises an annular body disposed around the base unit and the marks (434) are disposed on an outer surface of the body, see Li et al in columns 4-5 and figs. 3-5.
Regarding present claim 15, it is noted that the apparatus as provided by Li et al comprises the base unit (2, 5-10, 13) which base unit comprises a mount (7) disposed on a main body (6) and a sleeve (2) disposed on the mount wherein the inner threads formed on the inner surface of annular body of the display unit (4) is attached to the outer threads formed on the outer surface of the sleeve (2), see pages 5-6 and figs. 1-2.
Allowable Subject Matter
Claims 21-26 are allowed.
Claims 4-7 are objected to as being dependent upon a rejected base claim, but would be allowable if each of claims 4-6 is rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
a) The dependent claim 4 with a compensating mechanism having a base unit, a displaying unit, an adjusting cap, and a transmission unit with structural relationship as recited in its base claim 1 by the features thereof “a base unit … displaying portion” (claim 1 on lines 2-11) is allowable with respect to the prior art, in particular, the US Patent No. 9,423,215; the Chinese reference No. CN 106288955 and the Germany reference No. DE 203 01 749 U1 by the structures of the marks as recited in the feature thereof “the mark … inner threads” (claim 4 on lines 1-3). It is noted that such a structure of the mark as recited in claim 4 which mark is used in the compensating mechanism having features recited in its base claim 1, lines 2-11 is not disclosed in the prior art.
b) The compensating mechanism as recited in independent claim 21 is allowable with resect to the prior art, in particular, the US Patent No. 9,423,215; the Chinese reference No. CN 106288955 and the Germany reference No. DE 203 01 749 U1 by the structures of the marks as recited in the feature thereof “the annular body … inner threads” (claim 21 on lines 13-15). It is noted that such a structure of the mark as recited in claim 4 which mark is used in the compensating mechanism having features recited in the claim is not disclosed in the prior art.
c) Each of the dependent claims 5-6 with a compensating mechanism having a base unit, a displaying unit, an adjusting cap, and a transmission unit with structural relationship as recited in its base claim 1 by the features thereof “a base unit … displaying portion” (claim 1 on lines 2-11) is allowable with respect to the prior art, in particular, the US Patent No. 9,423,215; the Chinese reference No. CN 106288955 and the Germany reference No. DE 203 01 749 U1 by the structures of the transmission unit, the adjusting cap and their structural relationships as recited in the feature thereof “the first transmission unit … the axis” (claims 5 and 6 on lines 1-5 of each claim). It is noted that such structures of the transmission unit, the adjusting cap and their structural relationships as recited in each claims 5 and 6 which such structures are used in the compensating mechanism having features recited in its base claim 1, lines 2-11 is not disclosed in the prior art.
D) The compensating mechanism as recited in independent claim 21 is allowable with respect to the prior art, in particular, the US Patent No. 9,423,215; the Chinese reference No. CN 106288955 and the Germany reference No. DE 203 01 749 U1 by the structures of the marks as recited in the feature thereof “wherein the first transmission unit … the axis” (claim 24 on lines 11-14) . It is noted that such structures of the transmission unit, the adjusting cap and their structural relationships as recited in the claim with the mentioned features is not disclosed in the prior art.
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.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached on M – Th (6:00 am to 17:00 pm)
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached on (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872