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 amendments to the claims, in the submission dated 12/04/2025, are acknowledged and accepted. Claim 36 is amended. Claims 1 and 20-37 are pending. The objection to claim 36 is withdrawn in light of the amendment to claim 36.
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.
Claim 1 is 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.
Claim 1 recites the limitation “a transparent, deformable, non-fluid body”. Deformable means capable of being deformed, as in capable of being changed in shape. All materials are capable of being deformed under appropriate temperature, pressure, and stress conditions, as evidenced by the existence of the field of rheology, the study of how materials deform when forces are applied to them. As such, any material can satisfy the limitation “deformable”, as any material will deform some amount when forces are applied. Furthermore, the limitation “non-fluid” indicates the body may be solid but is not limited thereto, because a material that can resist deformation for any length of time would satisfy the limitation of “non-fluid”, since fluids are notable for deforming continuously under stress, therefore are unable to resist deformation under stress for any length of time. For purposes of examination, any material recited in the prior art will be assumed as satisfying the limitation of a “deformable, non-fluid” body. Claims 20-37 depend on claim 1, either directly or indirectly, and inherit at least the same deficiencies. Appropriate clarification and correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 21-24, 29-31, and 35-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abele et al. US PGPub 2016/0195713 A1 (of record, see Office action dated 08/08/2025, hereinafter, “Abele”).
Regarding independent claim 1, Abele discloses an opto-mechanical scanning device configured to deflect at least one incident light beam (Fig. 1, device 1 scans light 4 along vertical and horizontal axes, refer to at least par. [0086], and Fig. 7, MEMS micro-mirror device 103 is capable of scanning light, pars. [0103-106], therefore Abele discloses the equivalent of an opto-mechanical scanning device, see also Figs. 2, 3, and 8-10 depicting other embodiments of the scanning device), comprising
- a first reflective surface (Fig. 1, device 1 includes first micro-mirror 3, par. [0081], see also Fig. 2 showing device 10 with micro-mirror 3, par. [0088], Fig. 3 showing device 100 with micro-mirror 3, par. [0091], and Fig. 7 showing device 103 with first micro-mirror 3, par. [0104]),
- a second reflective surface (Fig. 1, device 1 includes second micro-mirror 5, par. [0081], Fig. 2, device 10 includes micro-mirror 5, par. [0088], Fig. 3, device 100 includes micro-mirror 5, par. [0091], and Fig. 7, device 103 includes micro-mirror 5, par. [0104]),
- a transparent, deformable, non-fluid body comprising a first body surface arranged in contact with the first reflective surface or arranged with an intermediate layer between the first body surface and the first reflective surface (Fig. 1, cap member 13 is equivalent to a first body surface and is arranged with an intermediate layer between cap member 13 and first micro-mirror 3, par. [0083], and Fig. 7, device 103 has transparent window 105 which is equivalent to a first body surface arranged with an intermediate layer between window 105 and micro-mirror 3, par. [0103]), and an opposite second body surface arranged in contact with the second reflective surface or arranged with an intermediate layer between the second body surface and the second reflective surface (Fig. 1, base member 15 is equivalent to a second body surface and is arranged with an intermediate layer between base member 15 and second micro-mirror 5, par. [0083], and Fig. 7, device 103 has outer surface 109, equivalent to a second body surface, arranged with an intermediate layer between outer surface 109 and micro-mirror 5, par. [0105]), wherein the refractive index of the non-fluid body is greater than the refractive index of air surrounding the opto-mechanical scanning device (Fig. 1, device 1 has transparent glass sheet 19 comprising cap member 13, and transparent glass sheet 21 comprises base member 15, and glass in general is known to have a refractive index greater than the refractive index of air, and Fig. 7, device 103 has ceramic package 70 with area 115 that may be filled with argon, par. [0103], though the refractive index of argon gas at standard temperature and pressure is not always greater than the refractive index of air at standard temperature and pressure),
- an actuator system comprising one or more actuators configured to move the first reflective surface so that an angle of the first reflective surface is adjustable (Fig. 1, device 1, first micro-mirror 3 can be actuated by electrostatic, electromagnetic, piezo-electric, or thermal actuation means, par. [0082], and Fig. 7, device 103, first permanent magnet 111 actuates first micro-mirror 3, par. [0105]), wherein the adjustable angle provides an adjustable angle of incidence at the first reflective surface (Fig. 1, device 1, micro-mirror 3 can be oscillated along first oscillation axis 9, thereby changing the angle at which light 4 is incident upon micro-mirror 3, and Fig. 7, device 103, micro-mirror 3 can oscillate along oscillation axis 9, par. [0104], thereby changing the angle at which light 4 is incident upon micro-mirror 3),
- a first window configured to receive and transmit the at least one incident light beam into the non-fluid body (Fig. 1, light 4 passes through glass sheet 19, par. [0085], and Fig. 7, light 4 passes through transparent window 105, par. [0103]),
- a second window configured to receive and refract the at least one incident light beam out of the non-fluid body (Fig. 1, light 4 refracts out of device 1 through glass sheet 19 to display screen 14, par. [0085], and Fig. 7, light 4 refracts out of device 103 through outer surface 109 to display screen 14, par. [0105]), where the first window and the second window are arranged adjacent to one or more surfaces of the non-fluid body (Fig. 1, glass sheet 19 is adjacent to spacer wafer 17, par. [0083], and Fig. 7, transparent window 105 is adjacent to area 115 and outer surface 109 is adjacent to area 115 of device 103) with the second reflective surface (i.e., micro-mirror 5) arranged so that, during operation of the opto-mechanical scanning device, the incident light beam is refracted out of the non-fluid body after being reflected successively by the first reflective surface (i.e., micro-mirror 3) and afterwards by the second reflective surface (Fig. 1, device 1 receives light 4 through glass sheet 19 that is reflected by micro-mirror 3 to reflective metal element 23, par. [0084], then to micro-mirror 5 which reflects light 4 out of device 1 through glass sheet 19 to display screen 4).
Abele does not explicitly disclose the scanning device 1 and/or device 103 satisfy the limitation that an amplification ∂a_out/∂q of an output angle (a_out) of the incident light beam refracted out of the non-fluid body relative to the angle of first reflective surface is dependent on the refractive index of the non-fluid body and the angle of first reflective surface, wherein the output angle is given according to the law of refraction. However, because the structure of the claimed system, as identified above, is the same as that claimed, it must inherently perform the same function and provide amplification of an output angle of light relative to the angle of first reflection, and obey the law of refraction. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114. In this case, the structure disclosed by Abele for the scanning devices 1 and 103 are the same as that claimed, and therefore must perform the same functions claimed.
Regarding dependent claim 21, Abele discloses the opto-mechanical scanning device according to claim 1, wherein the first window, the second window and the second reflective surface are embodied by separate, non-contacting elements (Fig. 7, device 103 has transparent window 105, outer surface 109, and micro-mirror 5 as separate, non-contacting elements).
Regarding dependent claim 22, Abele discloses the opto-mechanical scanning device according to claim 1, wherein the second reflective surface and the first window extend side-by-side over at least a portion of the second body surface along a propagation direction of the incident light beam (Fig. 7, micro-mirror 5 and window 105 extend side-by-side over bottom surface of device 103, equivalent to the second body surface, along the direction of propagation of light 4).
Regarding dependent claim 23, Abele discloses the opto-mechanical scanning device according to claim 1, further comprising an embedded reflective surface being embedded in the transparent, deformable, non-fluid body and configured to direct the incident light beam towards the first reflective surface (Fig. 2 depicts a second embodiment of the device disclosed by Abele, with a second reflective metal element 25, par. [0089], equivalent to an embedded reflective surface in the equivalent of the transparent, deformable, non-fluid body, and reflective metal element 25 directs light 4 towards micromirror 3).
Regarding dependent claim 24, Abele discloses the opto-mechanical scanning device according to claim 1, wherein the opto-mechanical scanning device comprises a second actuator system comprising one or more actuators configured to move the second reflective surface so that an angle of the second reflective surface is adjustable (Fig. 1, device 1, second micro-mirror 5 can be actuated by electrostatic, electromagnetic, piezo-electric, or thermal actuation means, par. [0082], and Fig. 7, device 103, second permanent magnet 113 actuates second micro-mirror 5, par. [0105]).
Regarding dependent claim 29, Abele discloses the opto-mechanical scanning device according to claim 1, wherein an optical property is different at at least two locations of the non-fluid body and/or of any of the first and second windows (Abele discloses glass for sheet 19, sheet 21, and window 105, and the non-fluid body equivalent disclosed by Abele would have a different refractive index from glass the sheets 19 and 21 and transparent window 105).
Regarding dependent claim 30, Abele discloses a light beam scanner, comprising the opto-mechanical scanning device according to claim 1 and a light device (Fig. 1, device 1 includes beam combiner 20 that combines modulated red, green, and blue laser light sources, par. [0085], equivalent to a light device).
Regarding dependent claim 31, Abele discloses the light beam scanner according to claim 30, wherein the light device comprises two or more light sources configured to generate two or more incident light beams having different angles of incidence (al, a2) and/or different non-overlapping wavelength ranges (Fig. 1, device 1 includes beam combiner 20 that combines modulated red, green and blue laser light sources, par. [0085], where red, green, and blue light satisfy the limitation of different non-overlapping wavelength ranges).
Regarding dependent claim 35. Abele discloses a method for manufacturing an opto-mechanical scanning device according to claim 1, said method comprising:
- providing a first reflective surface (Fig. 1, device 1 provides first micro-mirror 3, par. [0081], see also Fig. 7 showing device 103 with first micro-mirror 3, par. [0104]),
- providing a second reflective surface (Fig. 1, device 1 provides second micro-mirror 5, par. [0081], and Fig. 7 showing device 103 with second micro-mirror 5, par. [0104] ),
- providing a transparent, deformable, non-fluid body comprising a first body surface arranged in contact with the first reflective surface or arranged with an intermediate layer between the first body surface and the first reflective surface (Fig. 1, cap member 13 is arranged with an intermediate layer between cap member 13 and first micro-mirror 3, par. [0083], and Fig. 7, device 103 has transparent window 105 arranged with an intermediate layer between window 105 and micro-mirror 3, par. [0103]), and an opposite second body surface arranged in contact with second reflective surface or arranged with an intermediate layer between the second body surface and the second reflective surface (Fig. 1, base member 15 is arranged with an intermediate layer between base member 15 and second micro-mirror 5, par. [0083], and Fig. 7, device 103 has outer surface 109 arranged with an intermediate layer between outer surface 109 and micro-mirror 5, par. [0105]), wherein the refractive index of the non-fluid body is greater than the refractive index of air surrounding the opto-mechanical scanning device (Fig. 1, device 1 has transparent glass sheet 19 comprised of cap member 13, and transparent glass sheet 21 comprises base member 15, and glass in general is known to have a refractive index greater than the refractive index of air, and Fig. 7, device 103 has ceramic package 70 with area 115 that may be filled with argon, par. [0103], though the refractive index of argon gas at standard temperature and pressure is not greater than the refractive index of air at standard temperature and pressure),
- providing an actuator system comprising one or more actuators configured to move the first reflective surface so that an angle of the first reflective surface is adjustable (Fig. 1, device 1, first micro-mirror 3 can be actuated by electrostatic, electromagnetic, piezo-electric, or thermal actuation means, par. [0082], and Fig. 7, device 103, first permanent magnet 111 actuates first micro-mirror 3, par. [0105]), wherein the adjustable angle provides an adjustable angle of incidence at the first reflective surface (Fig. 1, device 1, micro-mirror 3 can be oscillated along first oscillation axis 9, thereby changing the angle at which light 4 strikes micro-mirror 3, and Fig. 7, device 103, micro-mirror 3 can oscillate along oscillation axis 9, par. [0104], thereby changing the angle at which light 4 strikes micro-mirror 3),
- providing a first window configured to receive and transmit the at least one incident light beam into the non-fluid body (Fig. 1, light 4 passes through glass sheet 19, par. [0085], and Fig. 7, light 4 passes through transparent window 105, par. [0103]),
- providing a second window configured to receive and refract the at least one incident light beam out of the non-fluid body (Fig. 1, light 4 refracts out of device 1 through glass sheet 19 to display screen 14, par. [0085], and Fig. 7, light 4 refracts out of device 103 through outer surface 109 to display screen 14, par. [0105]), wherein the first window and the second window are arranged adjacent to one or more surfaces of the non-fluid body (Fig. 1, glass sheet 19 is adjacent to space wafer 17, par. [0083], and Fig. 7, transparent window 105 is adjacent to area 115 and outer surface 109 is adjacent to area 115 of device 103) with the second reflective surface configured so that, during operation of the opto-mechanical scanning device, the incident light beam is refracted out of the non-fluid body after being reflected successively by the first reflective surface and afterwards by the second reflective surface (Fig. 1, device 1 receives light 4 through glass sheet 19 that is reflected by micro-mirror 3 to reflective metal element 23, par. [0084], then to micro-mirror 5 which reflects light 4 out of device 1 through glass sheet 19 to display screen 4).
Abele does not explicitly disclose the scanning device 1 and/or device 103 satisfy the limitation that an amplification ∂a_out/∂q of an output angle (a_out) of the incident light beam refracted out of the non-fluid body relative to the angle of first reflective surface is dependent on the refractive index of the non-fluid body and the angle of first reflective surface, wherein the output angle is given according to the law of refraction. However, because the structure of the claimed system, as identified above, is the same as that claimed, it must inherently perform the same function and provide amplification of an output angle of light relative to the angle of first reflection, and obey the law of refraction. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114. In this case, the structure disclosed by Abele for the scanning devices 1 and 103 are the same as that claimed, and therefore must perform the same functions claimed.
Regarding amended dependent claim 36, Abele discloses an electronic device comprising a light beam scanner according to claim 30, wherein the electronic device is any one of:
- a camera module,
- a portable computer device such as a smartphone, a watch, a tablet,
- a camera,
- a pair of spectacles,
- a measurement device arranged for scanning distances,
- an image projector arranged for creating an image by scanning light beams (Fig. 1, device 1 is a projection system, par. [0085]), or
- another electronic device.
Regarding dependent claim 37, Abele discloses a method for scanning and projecting the scanning beam comprising providing the light beam scanner of claim 30 and scanning and projecting the scanning beam from said light beam scanner (Fig. 1, device 1 is a projection system, par. [0085], thus comprises the light beam scanner equivalent device disclosed by Abele).
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 25 is rejected under 35 U.S.C. 103 as being unpatentable over Abele.
Regarding dependent claim 25, Abele discloses the opto-mechanical scanning device according to claim 1, but does not disclose wherein the second reflective surface is supported by a further transparent, deformable, non-fluid body, located between the second reflective surface and the transparent, deformable, non-fluid body.
Abele discloses the claimed invention except for a further transparent, deformable, non-fluid body, located between the second reflective surface and the transparent, deformable, non-fluid body. It would have been obvious to one of ordinary skill in the art at the time the invention was made to include a further transparent, deformable, non-fluid body, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (1977).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Abele in view of Miller et al. US PGPub 2019/0081703 A1 (of record, see Office action dated 08/08/2025, hereinafter, “Miller”).
Regarding dependent claim 32, Abele discloses the light beam scanner according to claim 31, but does not explicitly disclose wherein the light beam scanner further comprises a controller configured to sequentially power the two or more light sources dependent on an obtained tilt parameter relating to the angle of the first reflective surface.
In the same field of invention, Miller discloses a laser communication system including laser terminal 200, shown in at least Fig. 2A thereof, with controller 245 capable of activation of illumination source 205 and thereby control emission of light, and controller 245 may provide instructions to mirrors to adjust positions (par. [0033] thereof). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Miller to the disclosure of Abele and included a controller in the devices to control activation of beam combiner 20 and adjust positions of micro-mirrors 3 and 5, to control the projection system and have it function as intended (Miller, par. [0033]).
Allowable Subject Matter
Claims 20, 26-28, and 33-34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding dependent claim 20, Abele discloses the opto-mechanical scanning device according to claim 1, comprising:
- a third reflective surface (Fig. 1, device 1 includes reflective metal element 23, par. [0084]), wherein
- the actuator system is configured to move at least one of the first and third reflective surfaces so that an angle of at least one of the first and third reflective surfaces is adjustable (Fig. 1, device 1, first micro-mirror 3 can be actuated by electrostatic, electromagnetic, piezo-electric, or thermal actuation means, par. [0082], and Fig. 7, device 103, first permanent magnet 111 actuates first micro-mirrors 3, par. [0105]).
Abele does not disclose the first body surface (i.e., cap member 13 of device 1) is arranged in contact with the first and third reflective surfaces (micro-mirror 3 and reflective metal element 23, respectively) or arranged with an intermediate layer between the first body surface and the first and third reflective surfaces. As shown in Fig. 1, device 1 has reflective metal element 23 in contact with cap member 13, but micro-mirror 3 is not also in contact with cap member 13. Likewise, an intermediate layer is between cap member 13 and micro-mirror 3, but there is no intermediate layer between cap member 13 and reflective metal element 23.
Regarding dependent claim 26, Abele does not disclose the opto-mechanical scanning device according to claim 20, wherein the actuator system is configured to move the first and third reflective surfaces independently of each other so that the angles of the first reflective surface and the third surface can be adjusted independently of each other.
Regarding dependent claim 27, Abele does not disclose the opto-mechanical scanning device according to claim 20, comprising a third actuator system configured to move the third reflective surface or other reflective surface comprised by the opto-mechanical scanning device so that a further angle of the third reflective surface or the other reflective surface is adjustable to deflect the incident beam in a direction out of a plane of incidence of the incident beam, wherein the plane of incidence is defined relative to the first reflection surface.
Regarding dependent claim 28, Abele does not disclose the opto-mechanical scanning device according to claim 20, wherein, the second window is further configured to reflect a second incident light beam of the at least one incident light beams towards the third reflective surface, and the first window is further configured to receive and transmit the second incident light beam out of the non-fluid body.
Regarding dependent claim 33, Abele discloses the light beam scanner according to claim 31, but does not disclose wherein the controller is configured to power a first of the two or more light sources when the tilt parameter is within a first range and to power a second of the two or more light sources when the tilt parameter is within a second range which is different from the first range.
Regarding dependent claim 34, Abele discloses the light beam scanner according to claim 30, but does not disclose the light beam scanner further comprising first and second light devices, wherein the first light device is configured to inject one or more light beams into the first window and the second light device is configured to inject one or more light beams into the second window.
Response to Arguments
Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
Claim 1 was rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention due to recitation of "a transparent, deformable, non-fluid body." Applicant has argued Claim 1 complies with 35 U.S.C. § 112(b) because, under a broadest reasonable interpretation, one of ordinary skill in the art in optics would understand from both the specification and his or her technical knowledge in optics that this particular group of materials is not merely "any material" but a limited and selected group of optical materials with these properties. Examiner respectfully disagrees.
As noted above, the limitation “a transparent, deformable, non-fluid body” is indefinite because all materials are capable of being deformed under appropriate temperature, pressure, and stress conditions and as such, any material can satisfy the limitation “deformable”, because any material will deform some amount when forces are applied. Applicant notes that example materials that meet the limitation of "a transparent, deformable, non-fluid body” are listed in the specification, these example materials being soft polymer, silicone, polymer gels, a polymer network of cross-linked or partly crosslinked polymers. It is noted that the features upon which Applicant relies to argue the definiteness of the claim limitation (i.e., soft polymer, silicone, polymer gels, a polymer network of cross-linked or partly crosslinked polymers) are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, the limitation in claim 1 referring to the body as being transparent is overly broad; even in the specific field of optics, there are materials that are transparent in one band of the electromagnetic spectrum while being opaque in a different band, and thus the transparency of the body is indefinite (whether the device is intended to be transparent to visible light, infrared light, ultraviolet light, or some combination of these is unclear). Furthermore, the limitation of the body being deformable is overly broad, since the body being deformable means that it can be changed in shape under force, which any material commonly used in optical devices can satisfy because the limitation does not specify whether the body is elastically deformable, and thus able to return to an original shape when force is removed, or whether the body of the optical device is plastically deformable, in which case the body is permanently changed in shape after the application of force. Thus, the limitations on the physical properties of the body are claimed so broadly that a person of ordinary skill would not be appraised of which materials would lead to infringement of the claimed device. Thus the rejection of claim 1 under 35 U.S.C. § 112(b) is sustained.
With regard to the rejection of claim 1 under 35 U.S.C. § 102, Applicant has argued that the glass cover 19, which comprises cap member 13 and has been mapped to the first body surface, does not rotate with the micro-mirror 3, and that cap member 13 is not equivalent to the claimed transparent, deformable, non-fluid body because the cap member 13 is not arranged to contact the micromirror 3 or arranged with an intermediate layer between cap member 13 and the micro-mirror 3. Examiner respectfully disagrees.
The features upon which Applicant relies (i.e., that glass cover 19 of Abele does not rotate with micro-mirror 3) is not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Specifically, there is no limitation that requires or implies rotation of the first body surface of the instant device. Furthermore, the elements comprising the transparent, deformable, non-fluid body recited in claim 1 are mapped by the Examiner in the rejection above.
With regard to claim 25 and claim 32, Applicant has respectfully traversed these rejections, the characterizations of the pending claims and the cited references and each and every implicit and explicit potential for reliance on Official Notice because the cited portions of the cited art, alone or in combination, fail to teach or suggest the elements of the claims. Examiner respectfully disagrees.
Claim 25 is rejected as obvious over Abele with the duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (1977). Per MPEP 2144.04(VI)(B), duplication of parts has no patentable significance unless a new and unexpected result is produced. In this case, no new or unexpected results are expected when a further transparent, deformable, non-fluid body is added and located between the second reflective surface and the transparent, deformable, non-fluid body. Per MPEP 716.02(b)(I), the burden is on the applicant to establish results are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
Claim 32 is rejected as obvious over Abele in view of Miller, because it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have included a controller in the devices to control activation of beam combiner 20 and adjust positions of micro-mirrors 3 and 5, to control the projection system and have it function as intended (Miller, par. [0033]). No Official Notice was taken in rejecting claim 32, as features claimed are present in the prior art, and motivation for combinations are provided in the rejections.
No other arguments were presented after page 11 of Remarks. Therefore the prior art teaches the device as currently claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 Justin W Hustoft whose telephone number is (571)272-4519. The examiner can normally be reached Monday - Friday 8:30 AM - 5:30 PM Eastern Time.
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/JUSTIN W. HUSTOFT/ Examiner, Art Unit 2872
/THOMAS K PHAM/ Supervisory Patent Examiner, Art Unit 2872