CTNF 17/964,444 CTNF 87946 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions Applicant's election with traverse of Group I in the reply filed on 4/15/26 is acknowledged. The traversal is on three grounds: 1) that the method is a method of using the apparatus of claim 1, and not a method of making the apparatus; 2) that the apparatus and the method are substantially similar, and the only difference is the vibrating step of using the structure. Moreso, the method cannot be practiced without the apparatus; 3) that both the method and the apparatus relate to a common technical field, and thus they would be searched together is fashion that would eliminate any undue search burden. This is not found persuasive. With respect to grounds 1) and 2), the inclusion of the vibrating step means that the method of claim 8 requires a feature that need not be practiced for making or using the apparatus of claim 1. Applicant’s assertion that the method of claim 8 is a method of using the apparatus of claim 1 and not a method of making the apparatus of claim 1 is irrelevant and misleading. It is irrelevant because whether the method is for making or using the apparatus of claim 1, the step of vibrating need not be practiced in making or using the apparatus, and thus the apparatus claims and the method claim are distinct. It is misleading because every other step of the method describes a step of assembly. The applicant’s argument appears to be based on a misunderstanding or inaccurate characterization of the word “coupling.” The word ‘coupling” is used in the method to describe how the pieces of the apparatus are assembled, not how the assembly is used. In the most generous interpretation of the claims, the method recited both the assembly and use of the apparatus, and, as noted above, the apparatus can be used without the addition of the claimed vibrating step. With respect to grounds 3), a serious and undue search burden arises in searching the method claims because these method claims require specific vibrations. Searching for these vibrations requires searches in fields beyond LIDAR, since the method claim does not limit itself thereto. The requirement is still deemed proper and is therefore made FINAL. Claims 8-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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. 07-30-06 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(s) is/are: “optical module, configured to transmit a light pulse and receive a reflection of the light pulse” in claim 1; “optical module configured for transmitting a light pulse and receiving a reflection of the light pulse” in claim 17; and “a vehicle controller, to receive the laser depth map, and generate a control command for the vehicle” in claim 17. 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 07-30-01 AIA 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. 07-30-02 AIA 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 17-20 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. Further. Claims 17-20 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. Claim limitation “a vehicle controller, to receive the laser depth map, and generate a control command for the vehicle” invoke 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the functions. Further, since the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the functions, the above noted subject matter 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. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b), and lacks written description support and is rejected under 35 U.S.C. 112(a). 07-34-23 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. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0141065 A1 [ Pei ] . Regarding Claim 1: Pei teaches an apparatus comprising: a spring fork mechanism including a first spring fork and a second spring fork (see annotated Fig. 9 below); the first spring fork having a first tine ((970)) and a second tine ((980)); the second spring fork having a first tine ((970)) and a second tine ((980)); wherein the first tine of the first spring fork and the first tine of the second spring fork include a mounted optical module (para 49), configured to transmit a light pulse and receive a reflection of the light pulse (the optical module is interpreted under 35 USC 112(f) to correspond to the LIDAR system disclosed in the instant specification. (900) of Pei is likewise a LIDAR system.), wherein the second tine of the first spring fork and the second tine of the second spring fork include a mounted counterweight (para 49), and wherein the first spring fork and the second spring fork are secured to a base (via (910), para 50) and wherein each tine includes a first section and a second section, the first section attached to the second section by a U-shaped section (see annotated Fig. 9 below). However, Pei does not explicitly disclose that the counterweight has a mass and center of gravity equal to a mass and center of gravity of the mounted optical module. Rather, Pei states, “If the weight of the outer frame 310 and the weight of the inner frame 320 are properly balanced, their opposing motions may cancel vibrations that would otherwise be transmitted to the external mounts. In addition to minimizing vibration, this may also increase the resonant quality factor Q of the system, thus reducing power requirements.” Para 36. In light of this teaching, it would have been obvious to one of ordinary skill in the art before the effective time of filing to further balance the weights of the optical module mounted to the inner frame (920) with the counterweight mounted to the outer frame (930) such that counterweight has a mass and center of gravity equal to a mass and center of gravity of the mounted optical module. One would have been motivated to do so in order to cancel vibrations that would otherwise be transmitted to the external mounts. PNG media_image1.png 711 918 media_image1.png Greyscale Regarding Claim 2: Pei teaches the apparatus of claim 1, wherein the second section has a length greater than the length of the first section. See annotated Fig. 9 above. Regarding Claim 3: Pei teaches the apparatus of claim 1, wherein a stiffness of the first tine of the first spring fork is equal to a stiffness of the first tine of the second spring fork and a stiffness of the second tine of the first spring fork is equal to a stiffness of the second tine of the second spring fork. Since the respective tines of the respective forks are performing the same function, it is implicit that they have the same stiffness. Regarding Claim 4: Pei teaches the apparatus of claim 1, wherein the first spring fork and the second spring fork forms part of a LiDAR resonator. See annotated Fig. 9 above. Regarding Claim 5: Pei teaches the apparatus of claim 1, wherein the first section of the first tine of the first and second spring forks and the first section of the second tine of the first and second spring forks are oriented in a first plane. See annotated Fig. 9 above. The first sections are oriented in a YZ plane. Regarding Claim 6: Pei teaches the apparatus of claim 5, wherein the second section of the first tine of the first and second spring forks and the second section of the second tine of the first and second spring forks are oriented in a second plane. See annotated Fig. 9 above. The second sections are oriented in a XZ plane. Regarding Claim 7: Pei teaches the apparatus of claim 6, wherein the first plane is orthogonal to the second plane. XZ is orthogonal to YZ. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT KIM can be reached at 571 272 2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. WYATT STOFFA Primary Examiner Art Unit 2881 /WYATT A STOFFA/Primary Examiner, Art Unit 2881 Application/Control Number: 17/964,444 Page 2 Art Unit: 2881 Application/Control Number: 17/964,444 Page 3 Art Unit: 2881 Application/Control Number: 17/964,444 Page 4 Art Unit: 2881 Application/Control Number: 17/964,444 Page 5 Art Unit: 2881 Application/Control Number: 17/964,444 Page 6 Art Unit: 2881 Application/Control Number: 17/964,444 Page 7 Art Unit: 2881 Application/Control Number: 17/964,444 Page 8 Art Unit: 2881 Application/Control Number: 17/964,444 Page 10 Art Unit: 2881 Application/Control Number: 17/964,444 Page 11 Art Unit: 2881
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