DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1- This office action is a response to an application filed on 12/16/2024, in which claims 1-8 are currently pending. The Application is a National Stage entry of PCT/JP2021/027882 , International Filing Date: 07/28/2021, and claims foreign priority to 2020-131675, filed 08/03/2020.
Information Disclosure Statement
2- The submitted information disclosure statement(s) (IDS) is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is(are) being considered by the examiner.
Specification
3- The specification 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 application may become aware in the specification.
Drawings
4- The drawings were received on 2/01/2023. These drawings are acceptable.
Claim Interpretation - 35 USC § 112
5- 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.
6- 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:
Holding part, illumination part, image pickup part, posture control part, discrimination part in claim 1,
image pickup part in claims 7-8.
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.
Double Patenting
7- The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
8- Claim 1, 7 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 9 of Fujioka et al. (U.S. Patent N. 12607571). Although the claims at issue are not identical, they are not patentably distinct from each other because the aforementioned claims of the instant application merely inconsequentially rephrase the scope of Wang1, reorder its claims and or limitations within the claims.
a- This is a non-provisional non-statutory double patenting rejection.
Claims of Application 18019170
Claim of Patent 12607571
[Claim 1] An inspection device for inspecting a surface of an object to be inspected, the inspection device comprising: a holding part configured to hold the object to be inspected; an illumination part configured to irradiate a surface of the object to be inspected with light; an image pickup part configured to pick up an image of the surface of the object to be inspected; a posture control part configured to change a relative posture of the surface of the object to be inspected with respect to the image pickup part; and a discrimination part configured to discriminate between a defect and luminance unevenness of the surface of the object to be inspected based on a change in a plurality of surface images that are picked up while the relative posture is being changed.
[Claim 7] An inspection method for inspecting a surface of an object to be inspected, the method comprising: an image pickup step of picking up a plurality of surface images while changing a relative posture of the surface of the object to be inspected with respect to an image pickup part configured to pick up an image of the surface of the object to be inspected under a state in which the surface of the object to be inspected is irradiated with light; and a discrimination step of discriminating between a defect and luminance unevenness of the surface of the object to be inspected based on a change in the plurality of surface images.
A visual inspection apparatus configured to inspect a surface of an inspection target, the visual inspection apparatus comprising: a rotational portion configured to rotate in a state in which the inspection target is placed on the rotational portion; a mirror portion provided so as to reflect the inspection target in the state in which the inspection target is placed on the rotational portion; an imaging portion configured to image the inspection target reflected in the mirror portion; an adjustment portion configured to change an imaging angle of the imaging portion relative to the inspection target reflected in the mirror portion; and an inspection portion configured to inspect a surface of the inspection target based on image data captured by the imaging portion, wherein the inspection portion distinguishes defect and luminance unevenness on the surface of the inspection target based on a plurality of different pieces of image data, wherein each different piece of image data is captured at a different imaging angle from the other different pieces of image data and with the surface of the inspection target being oriented in a different rotational position from the other different pieces of image data, the different imaging angles of the plurality of different pieces of image data being formed by the adjustment portion, and the different rotational positions of the plurality of different pieces of image data being attained by adjustments of the rotational portion, and wherein the inspection portion distinguishes the defect and the luminance unevenness on the surface of the inspection target after performing processing for causing the plurality of different pieces of image data to be oriented in the same direction.
(an illumination part appears to be obvious and necessary for the images to be generated and acquired by the imaging portion)
9. A visual inspection method for inspecting a surface of an inspection target, the visual inspection method comprising: imaging the inspection target by causing an imaging portion to image the inspection target reflected in a mirror portion, the mirror portion being provided so as to reflect the inspection target in a state in which the inspection target is placed on a rotational portion which rotates the inspection target; and inspecting a surface of the inspection target based on a plurality of different pieces of image data, each different piece of image data being captured at a different imaging angle from the other different pieces of image data and with the surface of the inspection target being oriented in a different rotational position from the other different pieces of image data, the different imaging angles of the plurality of different pieces of image data being formed by an adjustment portion, and the different rotational positions of the plurality of different pieces of image data being attained by adjustments of the rotational portion, the adjustment portion being configured to change an imaging angle of the imaging portion relative to the inspection target reflected in the mirror portion, wherein the inspecting of the surface includes distinguishing a defect and luminance unevenness on the surface of the inspection target, and wherein the inspecting of the surface includes distinguishing the defect and the luminance unevenness on the surface of the inspection target after performing processing for causing the plurality of different pieces of image data to be oriented in the same direction.
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 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 (MPEP 706.02(m)).
9- 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.
In addition, the functional recitation in the claims (e.g. "configured to" or "adapted to" or the like) that does not limit a claim limitation to a particular structure does not limit the scope of the claim. It has been held that the recitation that an element is "adapted to", "configured to", "designed to", or "operable to" perform a function is not a positive limitation but only requires the ability to so perform and may not constitute a limitation in a patentable sense. In re Hutchinson, 69 USPQ 139. (See MPEP 2111.04); see also In In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014).
Also, it should be noted that it has been held that a recitation with respect to the manner in which a claimed device is intended to be employed does not differentiate the claimed device from a prior art apparatus satisfying the claimed structural limitations Ex-parte Masham 2 USPQ2d 1647 1987).
The claimed system in the instant application is capable of performing the claimed functionality, as is the prior art used in the present office action. The Examiner notes that where the patent office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart and sfiligoj, 169 USPQ 226 (C.C.P.A. 1971).
10- Claims 1-2, 5-7 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Haruna (JP 2017040600), hereinafter Canon.
As to claims 1/7, 5, Canon teaches an inspection device, and its method of use, for inspecting a surface of an object to be inspected (Abstract, Figs. 1-6), the inspection device comprising: a holding part (end of robot arm 110 attaching object W) configured to hold the object to be inspected (W); an illumination part (light source 102) configured to irradiate a surface (WA) of the object to be inspected with light (Fig. 1); an image pickup part (camera 105) configured to pick up an image of the surface of the object to be inspected; a posture control part (112/111) configured to change a relative posture of the surface of the object to be inspected with respect to the image pickup part and (Claim 5) wherein the posture control part is configured to change the relative posture of the surface of the object to be inspected with respect to the image pickup part by displacing the holding part with respect to the image pickup part being fixed (¶ 16-17 for ex.); and a discrimination part (200/201) configured to discriminate between a defect and luminance unevenness of the surface of the object to be inspected based on a change in a plurality of surface images that are picked up while the relative posture is being changed (¶ 51-52, 59-68).
(Claim 2) wherein the change in the plurality of surface images is a change in luminance distribution, which corresponds to posture angles representing a plurality of the relative postures, and wherein the discrimination part is configured to discriminate between the defect and the luminance unevenness of the surface of the object to be inspected based on the change in luminance distribution (¶ 8-10, 51, 59-61, 73).
(Claim 6) wherein the object to be inspected is a piston for an internal combustion engine, and the surface of the object to be inspected is a crown surface of the piston (Although Canon discloses the object to be inspected can be a component manufactured at a factory, which engulfs any manufactured object, the Examiner submits that the object as a piston, is a mere article worked or acted upon by the inspection device, and therefore does not limit apparatus claims -See MPEP 2115-) .
Claim Rejections - 35 USC § 103
11- 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 of this title, 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
12- Claim 3 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Canon.
As to claim 3, Canon teaches the inspection device according to claim 1.
Canon does not teach expressly wherein the plurality of surface images include a bright-field image that is picked up by using specularly reflected light from the illumination part as normal and a dark-field image that is picked up by using scattered light from the illumination part as normal.
However, one PHOSITA appreciates from Canon’s teachings and its measurements of light reflections that both species of the genus reflection, i.e. specular and scattering, and their corresponding bright and dark field images, would be obvious to be collected and measured as the robot 110 changes the posture/angles of the object surface WA. Both images can be used to evaluate luminance unevenness or changes in intensity to identify defects from normal reflections (See MPEP 2143, Sect. I. B-D. See also, Pinter, used hereunder for the rejection of claim 4).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Canon in view of general optical measurement suggestions so that the plurality of surface images include a bright-field image that is picked up by using specularly reflected light from the illumination part as normal and a dark-field image that is picked up by using scattered light from the illumination part as normal, with the advantage of effectively optimizing the identification of the defects on the object to be tested.
13- Claim 4 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Canon in view of Pinter et al. (PGPUB 20200134773).
As to claim 4, Canon teaches the inspection device according to claim 3.
Canon does not teach expressly wherein the object to be inspected includes a main body part having a cylindrical or columnar shape, wherein the illumination part includes: a dome configured to accommodate the object to be inspected; and a ring light having a ring shape, which is accommodated in the dome and is arranged so as to surround the object to be inspected, wherein, when a center axis of the image pickup part and the dome is referred to as a first center axis, a center axis of the main body part is referred to as a second center axis, and a center axis of the ring light is referred to as a third center axis, the holding part holds the object to be inspected under a state in which the second center axis is inclined at a predetermined first inclination angle with respect to the first center axis, the ring light is arranged so that the third center axis is inclined at a second inclination angle being different from the predetermined first inclination angle with respect to the first center axis, and the bright-field image and the dark-field image are acquired through rotation of the ring light about the first center axis.
However, in a similar field of endeavor, Pinter teaches machine vision systems for inspection of manufactured objects (Abstract and Figs. 1-46) wherein objects such as 350/450/550 and alike appear to have a cylindrical body (even though the object is considered here as a mere article worked or acted upon by the inspection device, and therefore does not limit apparatus claims -See MPEP 2115-). Moreover, Pinter appears to teach using a dome (405 in Fig. 4 for ex. to accommodate an object, 450 in Fig. 4) and ring shaped light sources Figs. 4, 13-14, 26, 33-35). One PHOSITA would find it obvious to combine Canon and Pinter’s teachings and incorporate the missing elements in Canon from Pinter, and change the angles between t5he object, the dome and the ring light source to obtain different dark and bright field measurements as suggested by Pinter (¶ 72-75, 82-85, 138, 146, 211, 215, 222 for ex.) to optimize the measurements of the luminance and detect the presence of defects in the object.
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Canon in view of Pinter’s suggestions so that the object to be inspected includes a main body part having a cylindrical or columnar shape, wherein the illumination part includes: a dome configured to accommodate the object to be inspected; and a ring light having a ring shape, which is accommodated in the dome and is arranged so as to surround the object to be inspected, wherein, when a center axis of the image pickup part and the dome is referred to as a first center axis, a center axis of the main body part is referred to as a second center axis, and a center axis of the ring light is referred to as a third center axis, the holding part holds the object to be inspected under a state in which the second center axis is inclined at a predetermined first inclination angle with respect to the first center axis, the ring light is arranged so that the third center axis is inclined at a second inclination angle being different from the predetermined first inclination angle with respect to the first center axis, and the bright-field image and the dark-field image are acquired through rotation of the ring light about the first center axis, with the advantage of effectively optimizing the identification of the defects on the object to be tested.
14- Claim 8 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Suzuki et al. (JP 2014178243, cited by Applicants) in view of Canon
As to claim 8, Suzuki teaches a method of manufacturing a piston (Abstract, Figs. 1-9), comprising: a first process of preparing a piston (Abstract, ¶ 17-25 for ex.); a second process of inspecting a surface of the piston prepared in the first process; and a third process of acquiring the piston inspected in the second process as a post- process (¶ 17-25, 27-48 for ex.).
Suzuki does not teach expressly the second process comprising: an image pickup step of picking up a plurality of surface images while changing a relative posture of the surface of the piston with respect to an image pickup part configured to pick up an image of the surface of the piston under a state in which the surface of the piston is irradiated with light; and a discrimination step of discriminating between a defect and luminance unevenness of the surface of the piston based on a change in the plurality of surface images.
However, Canon teaches an image pickup step of picking up a plurality of surface images while changing a relative posture of the surface of the piston with respect to an image pickup part configured to pick up an image of the surface of the piston under a state in which the surface of the piston is irradiated with light; and a discrimination step of discriminating between a defect and luminance unevenness of the surface of the piston based on a change in the plurality of surface images (see the rejection of claims 1 and 7 here above).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Suzuki in view of Canon’s suggestions so that the second process comprising: an image pickup step of picking up a plurality of surface images while changing a relative posture of the surface of the piston with respect to an image pickup part configured to pick up an image of the surface of the piston under a state in which the surface of the piston is irradiated with light; and a discrimination step of discriminating between a defect and luminance unevenness of the surface of the piston based on a change in the plurality of surface images, with the advantage of effectively optimizing the identification of the defects on the piston to be tested.
Conclusion
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877
Prosecution Insights