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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/19/2025 has been considered by the Examiner and made of record in the application file.
Response to Amendment
The Amendment filed 12/19/2025 has been entered. Independent claims 1 and 4 have not been amended. Claim 17 has been added.
Response to Arguments
Applicant's arguments filed in have been fully considered but they are not persuasive.
Regarding the 112(b) rejection of claim 2, applicant’s arguments have been fully considered and are persuasive. Therefore, the 112(b) rejection of claim 2 has been withdrawn.
Regarding the 112(b) rejections of claims 3, 11, and 12, with respect to insufficient antecedent basis, applicant’s amendments are sufficient to overcome the rejections. Therefore, the 112(b) rejections of claims 3, 11, and 12 with respect to insufficient antecedent basis have been withdrawn.
Regarding the 112(d) rejections of claims 3 and 11, applicant’s arguments have been fully considered and are appreciated. However, the examiner respectfully disagrees.
Applicant argues a 112(d) rejection for claims 3 and 11 is not proper because “[a] dependent claim does not lack compliance with 35 U.S.C. 112(d) simply because there is a question as to the significance of the further limitation added by the dependent claim.” However, the examiner notes that the significance of a further limitation is not being questioned – rather, it is the existence of any further limitation in these claims that is being questioned. Applicant further argues that the limitations of claims 3 and 11 are not inherent.
In the case of claim 3, all lenses have a focal length. This is an intrinsic feature of a lens. Further, any two lenses can be considered in combination and an effective focal length determined for the combination. Any lens automatically would have an axial position, because all lenses have an axis and all lenses exist in space. Applicant states “…claim 3 does not merely recite, in the abstract, that the claimed lenses have an effective focal length and an axial position. Rather, claim 3 recites that the focal lengths and the axial position are part of the optical configuration of claim 2, which ‘position[s] a virtual object of the first steering lens and the second steering lens at a position between fm and 2fm.’” A combined first steering lens and second steering lens inherently has an effective focal length. A magnifying lens inherently has a focal length. A first steering lens, second steering lens, and magnifying lens all inherent have an axial position. None of these are specific to any particular optical configuration, they are all true regardless of any optical configuration. Pointing at the optical configuration of claim 2 does not mean that claim 3 further limits from claim 2. There are no ranges included or any metes and bounds to further limit the claimed invention. Every part of claim 3 is just defining terms and stating facts and do not constitute any further limitations.
In the case of claim 11, applicant argued in the remarks of 06/24/2025 that the “virtual object” is the “focal point” of the lenses in question, therefore the “virtual object of the first steering lens and the second steering lens” is already interpreted as the “focal point of the first steering lens and the second steering lens” in claim 2. Therefore the limitation of claim 11, dependent on claim 2, is equivalent to the statement “the focal point of the first steering lens and the second steering lens is a focal point of the first steering lens and the second steering lens.” There is no further limitation. If the virtual object of claim 2 is not to be interpreted as the focal point, then there would be a lack of clarity as to what the virtual object of claim 2 is.
Regarding the 103 rejections of independent claims 1 and 4, applicant’s arguments have been fully considered and are appreciated. However, the examiner respectfully disagrees. Applicant argues that Raksi and Lewis are disparate and non-analogous, that steering lenses and steering mirrors are not art-recognized equivalents, and that the lenses of Lewis would render the system of Raksi inoperable for its intended purpose.
Regarding applicant’s argument with respect to “the disparate and non-analogous nature of Lewis’s beam steerer for use in satellite systems in orbit around the earth and Raksi’s ‘laser system for ophthalmic surgery,” the examiner disagrees. Use in a satellite system and use for surgery are intended uses. Further, Raksi is directed towards beam steering. Lewis is directed towards beam steering. Applicant’s disclosure is also directed towards beam steering. All are in the field of endeavor of beam steering.
Regarding applicant’s argument that the art does not show that a first steering lens and a second steering lens is an equivalent structure in the art, the examiner disagrees. Lewis states “Conventionally, the light signal is finely steered by employing mirrors to reflect the light signal. A beam steerer, arranges to direct a light signal…includes a part 6, 7, of lenses (abstract),” which clearly indicates that steering mirrors and steering lenses are considered equivalents in the art. Although Lewis states “[t]he provision of lenses permits the angular deflection of the beam per unit distance translation to be selected, as this is dependent on the optical power of the lenses,” and “selection of this ratio is not possible with mirror-based beam steerers,” this does not mean that they are no longer considered equivalent. The ratio of angular deflection of the beam per unit distance translation is essentially the unit by which a user measures how much they want to deflect the light. The act of selecting how much to deflect the light beam by is an intended use of the system, and while one may not be able to use this specific unit for selection with mirror-based beam steerers, one can arrive at a decision of how much to deflect by using another unit of measurement. Further, the desirability of being able to select this ratio simply pertains to desiring an improvement in precision, which does not mean that they are not considered equivalents. A mirror-based beam steerer and a lens-based beam steerer are still just two systems with which a beam can be steered.
Regarding applicant’s argument that “the proposed combination of Lewis’s embodiments with Raksi would have rendered Raksi’s embodiments inoperable for their intended purpose and would have been contrary to Raksi’s principles of operation”, the examiner disagrees. Both Lewis and Raksi deflect light in an xy-plane. Applicant states “Lewis’s provided example…is nowhere close to the angular requirement for transverse scanning (e.g., 90 degrees) of a pulsed laser beam in XY directions traverse to a Z axis, as is required of Raksi’s XY scanner 300.” Raksi does not have a requirement of being able to scan 90 degrees. Transverse scanning to the z direction just means that it can be scanned in an xy-plane. There is no range given for the angle of scanning required in Raksi, and due to the nature of the invention, the required angle of scanning would be dependent on how the user decides to use it (i.e. how close the system is located to the patient). As long as the beam steering lenses of Lewis deflect light within the xy-plane to any degree, which they do, they would not render the system of Raksi inoperable because both systems simply require deflection along the xy-plane.
Claim Rejections - 35 USC § 112
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 3 and 11-12 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.
Regarding claim 3, the limitation “the optical configuration of the first steering lens, the second steering lens, and the magnifying lens comprises: an effective focal length of the combined first steering lens and second steering lens; the magnifying lens focal length; and an axial position of each of the first steering lens, the second steering lens, and the magnifying lens” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear what the further limitation is. The claim appears to be defining terms, saying that there is an effective focal length of combined lenses, that the magnifying lens has a focal length, and that each lens has a position. However, there are no ranges included or any metes and bounds to further limit the claimed invention, therefore this claim is just stating a definition and/or fact, which is inherent.
For the purposes of examination, examiner assumes that since this is just stating a definition and/or fact, that this claim limitation is inherent.
Regarding claim 11, the limitation “the virtual object of the first steering lens and the second steering lens is a focal point of the first steering lens and the second steering lens” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear what the further limitation is. The claim appears to be defining terms, saying that the virtual object of a lens is the focal point of a lens. However, this is already the definition of the virtual object in claim 2, as per ¶0087, and more specifically, due to applicant’s arguments regarding the 112(b) rejection of claim 2 in the remarks of 06/24/2025. Further, since there are no ranges includes or any metes and bounds to further limit the claimed invention, this claim is just starting a definition and/or fact, which is inherent.
For the purposes of examination, examiner assumes that since this is just stating a definition and/or factor, that this claim limitation is inherent.
Claim 12 is dependent on claim 11 and therefore inherits the same issues.
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed.
If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3 and 11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 3, the claim just defines inherent properties of a first steering lens, a second steering lens, and a magnifying lens. All lenses have an effective focal length and an axial position, therefore this limitation is considered inherent, additionally see 112(b) rejection above.
Regarding claim 11, the claim just defines the virtual object of the first and second steering lenses as the focal point of the first and second steering lenses. However, this is already understood as the meaning of the term “virtual object”. Therefore, this claim limitation is considered inherent, additionally see 112(b) rejection above.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent 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.
Claim(s) 1-7, 9-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Raksi et al. (US 20110028948 A1), hereinafter Raksi, in view of Lewis (EP 0903608 A2).
Regarding independent claim 1, Raksi discloses a system, comprising:
a steering system (300; Fig. 1; ¶0062) interposed between an electromagnetic (EM) source (100; Fig. 1; ¶0062) and a magnifying lens (a lens from 400; Figs. 1, 13; ¶0062);
the magnifying lens (a lens from 400) interposed between the steering system (300) and a field lens (500; Figs. 1, 13; ¶0062); and
the field lens (500) interposed between the magnifying lens (a lens from 400) and an emission lens (700; Fig. 1; ¶0062).
Raksi does not disclose the steering system is a first steering lens and a second steering lens, and further does not disclose a first steering actuator coupled to the first steering lens, the first steering actuator configured to move the first steering lens along a first movement course; and a second steering actuator coupled to the second steering lens, the second steering actuator configured to move the second steering lens along a second movement course.
However, Lewis teaches a steering system comprising a first steering lens (6; Fig. 3; ¶0018) and a second steering lens (7; Fig. 3; ¶0018), and further teaches a first steering actuator (8; Fig. 3; ¶0020) coupled to the first steering lens (6) (Fig. 3), the first steering actuator (8) configured to move the first steering lens (6) along a first movement course (x-axis; ¶0021); and a second steering actuator (9; Fig. 3; ¶0020) coupled to the second steering lens (7) (Fig. 3), the second steering actuator (9) configured to move the second steering lens (7) along a second movement course (y-axis; ¶0021).
Raksi discloses the claimed invention except that scanning mirrors (300) are used instead of a first steering lens and a second steering lens. Lewis shows that a first steering lens (6) and a second steering lens (7) is an equivalent structure in the art. Therefore, because these two beam steering structures were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute a first steering lens and a second steering lens for the scanning mirrors, and the results thereof would have been predictable. See MPEP §2144.06 and 2143 (I)(B). Further, one would have been motivated to substitute the beam steering lenses for the scanning mirrors for the purpose of allowing for more precision in how a user chooses to use the device.
Regarding claim 2, Raksi in view of Lewis discloses the system of claim 1, including the steering system being a first steering lens and a second steering lens, as set forth above. Raksi further discloses an optical configuration of the steering system (300) and the magnifying lens (a lens from 400) is configured to position a virtual object of the steering system at a position between fm and 2fm, wherein the position fm comprises a magnifying lens focal length displaced from the magnifying lens (a lens from 400), and wherein the position 2fm comprises twice the distance fm (Fig. 1).
Regarding claim 3, Raksi in view of Lewis discloses the system of claim 2, including the steering system being a first steering lens and a second steering lens, as set forth above. Raksi further discloses wherein the optical configuration of the steering system and the magnifying lens comprises: the magnifying lens focal length (inherent that a lens has a focal length); and an axial position of each of the steering system (300) and the magnifying lens (a lens from 400) (inherent that each element has a position). Raksi does not disclose an effective focal length of the combined first steering lens and the second steering lens and an axial position of each of the first steering lens and the second steering lens.
However, Lewis discloses an effective focal length of the combined first steering lens (6) and second steering lens (7) (inherent that the lenses have an effective focal length) and an axial position of each of the first steering lens (6) and the second steering lens (7) (inherent that each element has a position).
Raksi discloses the claimed invention except that scanning mirrors (300) are used instead of a first steering lens and a second steering lens. Lewis shows that a first steering lens (6) and a second steering lens (7) is an equivalent structure in the art. Therefore, because these two beam steering structures were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute a first steering lens and a second steering lens for the scanning mirrors, and the results thereof would have been predictable. See MPEP §2144.06 and 2143 (I)(B).
Regarding independent claim 4, Raksi discloses system, comprising:
a steering system (300; Fig. 1; ¶0062) interposed between an electromagnetic (EM) source (100; Fig. 1; ¶0062) and a magnifying lens (a lens from 400; Figs. 1, 13; ¶0062);
the magnifying lens (a lens from 400) interposed between the steering system (300) and a field lens (500; Figs. 1, 13; ¶0062);
the field lens (500) interposed between the magnifying lens (a lens from 400) and an emission lens (700; Fig. 1; ¶0062); and
a steering actuator coupled to the steering system 300 (inherent that there must be an actuator to move the steering system 300), the steering actuator configured to move the steering system along a movement course (Figs. 1, 11) (inherent that there must be an actuator to move the steering system 300).
Raksi does not disclose the steering system is a steering lens.
However, Lewis teaches a steering system comprising a steering lens (6, 7; Fig. 3; ¶0018).
Raksi discloses the claimed invention except that scanning mirrors (300) are used instead of a steering lens. Lewis shows that a steering lens (6, 7) is an equivalent structure in the art. Therefore, because these two beam steering structures were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute a steering lens for the scanning mirrors, and the results thereof would have been predictable. See MPEP §2144.06 and 2143 (I)(B). Further, one would have been motivated to substitute the beam steering lenses for the scanning mirrors for the purpose of allowing for more precision in how a user chooses to use the device.
Regarding claim 5, Raksi in view of Lewis discloses the system of claim 4, as set forth above. Raksi further discloses the movement course comprises selected movement along each of two axes (XY scanner 300; Figs. 1, 11; ¶0062).
Regarding claim 6, Raksi in view of Lewis discloses the system of claim 5, as set forth above. Raksi further discloses a first one of the two axes comprises a first steering axis (inherent, Figs. 1, 11), and wherein a second one of the two axes comprises a second steering axis (inherent, Figs. 1, 11).
Regarding claim 7, Raksi in view of Lewis discloses the system of claim 5, as set forth above Raksi further discloses the two axes comprise perpendicular axes (abstract, Figs. 1, 11).
Regarding claim 9, Raksi in view of Lewis discloses the system of claim 4, including the steering system being a steering lens, as set forth above. Raksi further discloses the system a second field lens (another lens from 400; Figs. 1, 13; ¶0062) positioned between the steering system (300) and the magnifying lens (a lens from 400) (Figs. 1, 13). Raksi does not disclose the steering lens comprises a positive lens.
However, Lewis teaches the steering lens (6, 7) comprises a positive lens (6; Fig. 1; ¶0018).
Raksi discloses the claimed invention except that scanning mirrors (300) are used instead of a steering lens. Lewis shows that a steering lens (6, 7) is an equivalent structure in the art. Therefore, because these two beam steering structures were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute a steering lens for the scanning mirrors, and the results thereof would have been predictable. See MPEP §2144.06 and 2143 (I)(B). Further, one would have been motivated to substitute the beam steering lenses for the scanning mirrors for the purpose of allowing for more precision in how a user chooses to use the device.
Regarding claim 10, Raksi in view of Lewis discloses the system of claim 4, including the steering system being a steering lens, as set forth above. Raksi further discloses a source collimator lens (200; suggested by parallel beams coming out of 200 in Fig. 1) interposed between the EM source (100) and the steering system (300) (Fig. 1).
Regarding claim 11, Raksi in view of Lewis discloses the system of claim 2, including the steering system being a first steering lens and a second steering lens, as set forth above. Raksi does not disclose the virtual object of the first steering lens and the second steering lens is a focal point of the first steering lens and the second steering lens.
However, Lewis teaches the virtual object of the first steering lens (6) and the second steering lens (7) is a focal point of the first steering lens (6) and the second steering lens (7) (inherent, see 112(d) rejection).
Regarding claim 12, Raksi in view of Lewis discloses the system of claim 11, including the steering system being a first steering lens and a second steering lens, as set forth above. Raksi does not disclose the virtual object of the first steering lens and the second steering lens is a focal point of an equivalent lens of the first and second steering lenses.
However, Lewis teaches the virtual object of the first steering lens (6) and the second steering lens (7) is a focal point of an equivalent lens of the first (6) and second steering lenses (7) (inherent that the focal point of the first and second steering lenses would be the same as the focal point of a hypothetical equivalent lens of the first and second steering lenses).
Regarding claim 13, Raksi in view of Lewis discloses the system of claim 1, as set forth above. Raksi does not disclose at least one of a steering capability or a displacement capability of the first steering actuator is respectively different from at least one of a steering capability or a displacement capability of the second steering actuator.
However, Lewis teaches at least one of a steering capability or a displacement capability of the first steering actuator (8) is respectively different from at least one of a steering capability or a displacement capability of the second steering actuator (9) (different directions; ¶0021).
Raksi discloses the claimed invention except that scanning mirrors (300) are used instead of a first steering lens and a second steering lens. Lewis shows that a first steering lens (6) and a second steering lens (7) is an equivalent structure in the art. Therefore, because these two beam steering structures were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute a first steering lens and a second steering lens for the scanning mirrors, and the results thereof would have been predictable. See MPEP §2144.06 and 2143 (I)(B). Further, one would have been motivated to substitute the beam steering lenses for the scanning mirrors for the purpose of allowing for more precision in how a user chooses to use the device.
Regarding claim 15, Raksi in view of Lewis discloses the system of claim 1, including the steering system being a first steering lens and a second steering lens, as set forth above. Raksi does not disclose the first steering lens and the second steering lens have different optical powers.
However, Lewis teaches the first steering lens (6) and the second steering lens (7) have different optical powers (Fig. 3).
Raksi discloses the claimed invention except that scanning mirrors (300) are used instead of a first steering lens and a second steering lens. Lewis shows that a first steering lens (6) and a second steering lens (7) is an equivalent structure in the art. Therefore, because these two beam steering structures were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute a first steering lens and a second steering lens for the scanning mirrors, and the results thereof would have been predictable. See MPEP §2144.06 and 2143 (I)(B). Further, one would have been motivated to substitute the beam steering lenses for the scanning mirrors for the purpose of allowing for more precision in how a user chooses to use the device.
Claim(s) 8, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Raksi (US 20110028948 A1) in view of Lewis (EP 0903608 A2) and further in view of Gopinath et al. (US 20210333443 A1), hereinafter Gopinath.
Regarding claim 8, Raksi in view of Lewis discloses the system of claim 4, including the steering system being a steering lens and steering actuator, as set forth above. Neither Raksi nor Lewis disclose the steering actuator comprises a configurable lens element having an active lens portion, wherein the steering lens comprises the active lens portion, and wherein moving the steering lens along the movement course comprises changing a position of the active lens portion.
However, Gopinath teaches a steering system (Fig. 1) comprising a steering lens (108; Fig. 1; ¶0031) and a steering actuator (inherent for tunable lenses, abstract, ¶0031), wherein the steering actuator comprises a configurable lens element having an active lens portion (832; Table 1; Fig. 8; ¶0043), wherein the steering lens (108) comprises the active lens portion (832) (Fig. 8), and wherein moving the steering lens (108) along the movement course comprises changing a position of the active lens portion (832) (Fig. 8).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raksi in view of Lewis to incorporate the active lens portion of Gopinath for the purpose of having a compact, low-loss method of beam steering (¶0005 of Gopinath).
Regarding claim 14, Raksi in view of Lewis discloses the system of claim 1, including the steering system being a first steering lens and a second steering lens, as set forth above. Raksi does not disclose the first steering lens is a negative lens and the second steering lens is a negative lens.
However, Lewis discloses the second steering lens (6) is a negative lens (Fig. 1).
Additionally, Gopinath teaches a steering system (Fig. 2) comprising a first steering lens (108; Fig. 2; ¶0033) and a second steering lens (208; Fig. 2; ¶0033), wherein the first steering lens (108) and the second steering lens (208) are both liquid tunable lenses (abstract, ¶0033) and can both be negative lenses (implicit from ¶0033)1.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raksi in view of Lewis to incorporate the liquid tunable lenses of Gopinath for the purpose of having a compact, low-loss method of beam steering (¶0005 of Gopinath).
Regarding claim 17, Raksi in view of Lewis discloses the system of claim 1, including the steering system being a first steering lens and a second steering lens, as set forth above. Neither Raksi nor Lewis disclose the first steering lens is a negative lens and the second steering lens have different magnitudes of optical power.
However, Gopinath teaches a steering system (Fig. 2) comprising a first steering lens (108; Fig. 2; ¶0033) and a second steering lens (208; Fig. 2; ¶0033), wherein the first steering lens (108) and the second steering lens (208) are both liquid tunable lenses (abstract, ¶0033) and can have different magnitudes of optical power (Figs. 7-8; ¶0040-¶0044).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raksi in view of Lewis to incorporate the liquid tunable lenses of Gopinath for the purpose of having a compact, low-loss method of beam steering (¶0005 of Gopinath).
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Raksi (US 20110028948 A1) in view of Lewis (EP 0903608 A2) as evidenced by MIL-HDBK-141 "Military Standardization Handbook Optical Design, pages 8-15, October 1962.
Regarding claim 16, Raksi in view of Lewis discloses the system of claim 15, as set forth above. Neither Raksi nor Lewis disclose the magnifying lens is an aspherical lens.
However, one skilled in the art could choose to make the magnifying lens an aspherical lens with a reasonable expectation of success, as evidences by the Military Standardization Handbook Optical Design MIL-HNDK-141 page 8-152. There are a limited number of possibilities for the curvature of the magnifying lens – that it is spherical or aspherical. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the magnifying lens be an aspherical lens since there are only two possible solutions and since it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp for the purpose of correcting spherical aberration.
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 NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
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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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/NATASHA NIGAM/Examiner, Art Unit 2872 March 4th, 2026
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872
1 The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995), see MPEP 2112.
2 As evidenced by MIL-HDBK-141 “Military Standardization Handbook Optical Design” October 1962, page 8-15 section 8.7.4.2 points 1-3. Particularly stating: “One of the main reasons that aspheric surfaces are so valuable, is that they do allow the introduction of aberration at nearly any place in the optical system, without upsetting the distribution of focal lengths of the different elements needed to correct for color and Petzval field curvature.”