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 the argument
Response to the argument on 112b rejection
As to the claim 19, applicant asserts that amended claim 19 overcomes the 112b rejection regarding the light generation assembly which invokes 112f.
However, the amendment added more functional limitations for the light generation assembly without further clarifying the structural component which responsible for the functional limitations.
Therefore, the rejection deemed proper and thus maintained.
Further as to the claim 19, the applicant asserts the amended limitation overcomes the previous 112b rejection regarding whether the limitation invokes 112f or not being unclear. Amended limitation clarifies that. However, amended limitation further invokes 112b rejection as shown in the below 112b rejection section.
Further as to the claim 19, “nominally” which is interchangeable to ‘ideally’ as a clear limitation since there being always real-world inherent imperfections. However, for those real world unavoidable imperfections are inherent (as applicant assertion), person of ordinary skill in the art would not appraise the specific use of “nominally” are indicating inherent characteristics rather the use of “nominally” make the person ordinary skill in the art to believe there’s special ranges of certain characteristics being considered as nominally (ideally) and other ranges being not nominal.
Further, if the applicant insist to use the ‘nominal’ for inherent real world imperfection, the nominal should be used every other limitations since every component/functions are inherently imperfect in real world (nominally parallel, nominally complementary, nominally returned etc.).
Therefore, the applicant’s assertion is self-contradictory.
As a result, the rejection deemed proper and thus maintained.
Response to the argument on 103 rejections
As to the claim 19, applicant asserts neither Satohiko or Kazuo teach or suggest newly amended limitation.
However, as shown in the below 103 rejection, Satohiko and Kazuo teaches the newly amended limitation.
Therefore, the rejection deemed proper and thus maintained.
As to the dependent claims, the applicant argues based on their dependencies on the claim 19 and the reason provided above applies the same.
Response to the argument on Double patenting rejection
Based on terminal disclaimer filed on 10/17/2025, DP has been withdrawn.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) The term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a light folding component (LFC) nominally configured to fold light incident thereon at a nominal inclination angle defined by an external, flat first surface and an external, flat second surface of a sample”, and “a light generation assembly configured to: (a) generate a first incident light beam (LB), and a second incident LB parallel to the first incident LB, wherein the first incident LB and the second incident LB are complementary portions of a collimated LB, (b) project the first incident light beam (LB) on the first surface, so as to generate a first returned LB by reflection off the first surface, and(c) project the second incident LB on the LFC, ,so as to generate a second returned LB, by folding by the LFC, reflection off the second surface, and repassage via the LFC”, in claim 19.
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.
Specification of instant application supports: LFC as a prism, one or more mirrors, and/or a diffraction grating and the examiner understood LFC as those elements or known in the art of those structures.
As to the light generation assembly, while the speciation of instant application discloses “light generation assembly includes a light source and optical equipment”, an optical equipment is not known in the art structure. As a result, it is not clear what kind of optical equipment would be sufficient enough to perform the claimed functionality of configured to (a) generate a first incident light beam (LB), and a second incident LB parallel to the first incident LB, wherein the first incident LB and the second incident LB are complementary portions of a collimated LB, (b) project the first incident light beam (LB) on the first surface, so as to generate a first returned LB by reflection off the first surface, and(c) project the second incident LB on the LFC, ,so as to generate a second returned LB, by folding by the LFC, reflection off the second surface, and repassage via the LFC.
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 (b)
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 19-24, 37 and 38 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.
As to claim 19, as discussed in the 112f interpretation, speciation of instant application discloses “light generation assembly includes a light source and optical equipment” while, the recited optical equipment is not known in the art structure.
Therefore, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention since it is not clear what kind of optical equipment would be claimed to perform the claimed functionality of configured to (a) generate a first incident light beam (LB), and a second incident LB parallel to the first incident LB, wherein the first incident LB and the second incident LB are complementary portions of a collimated LB, (b) project the first incident light beam (LB) on the first surface, so as to generate a first returned LB by reflection off the first surface, and(c) project the second incident LB on the LFC, ,so as to generate a second returned LB, by folding by the LFC, reflection off the second surface, and repassage via the LFC.
Further as to the claim 19, Claim limitations “at least one sensor, configured to measure a first angular deviation of the second returned LB relative to the first returned LB”, and “an eyepiece assembly configured to enable manually measuring the first angular deviation” in claim 19, has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because a light generation assembly, one sensor, and eyepiece which are known in the art would not perform all the functionally claimed limitations in the claim 19. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Further, as to the claims 1, 19, 21 and 38, the claims recite “nominally configured” “nominal inclination” and “nominally normally impinges”.
However, “nominally” means ‘in name only; officially though perhaps not in reality’. As a result, it is not clear whether applicant really tried to mean the meaning of nominally in the claim which nullifies the followed functionals or it was mistakenly stated but did not mean that.
For the purpose of examination, the examiner would consider “nominally” does not exist in the claim.
However, correction is required.
As to claim 19, the claim further recites “at least one sensor, an eyepiece assembly or a combination thereof, wherein the at least one sensor is configured to measure a first angular deviation of the second returned LB relative to the first returned LB, and wherein the eyepiece assembly is configured to enable manually measuring the first angular deviation”
However, it is not clear whether the recited limitation require both of at least one sensor and eyepiece assembly or one of them being required and the other is an optional.
For the purpose of examination, the examiner would consider the above recited limitation being satisfied by satisfying one of condition either ‘at least one sensor, wherein the at least one sensor is configured to measure a first angular deviation of the second returned LB relative to the first returned LB’ OR ‘an eyepiece assembly wherein the eyepiece assembly is configured to enable manually measuring the first angular deviation’.
Claims 20-24, 37 and 38 have been rejected also based upon their dependencies.
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 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.
Claims 1, and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Satohiko et al. (JP H09304036 filed in IDS hereinafter Sato) in view of KAZUO (JP 2003065739 A filed in IDS hereinafter Kazuo).
As to claims 1 and 19, Satohiko teaches an optical-based system for validating angles between external, flat surfaces of samples, the system comprising:
a light folding component (13 and 14) nominally configured to fold light incident thereon at a nominal inclination angle defined by an external, flat first surface and an external, flat second surface of a sample (FIG. 1); and
an illumination and collection arrangement (12, 16 light sources and 13 half mirror) comprising:
a light generation assembly configured to: (a) generate a first incident light beam (LB from 16), and a second incident LB (13) (b) project the first incident light beam (LB) on the first surface (SF 11), so as to generate a first returned LB by reflection off the first surface (which lands on 17), and(c) project the second incident LB on the LFC, ,so as to generate a second returned LB, by folding by the LFC, reflection off the second surface (from SF22), and repassage via the LFC (13 and 14) and
at least one sensor (15 and 17), configured to measure a first angular deviation of the second returned LB relative to the first returned LB ([0023]); and
wherein the measured first angular deviation is indicative of an actual inclination angle of the second surface relative to the first surface ([0023]).
However, Satohiko does not explicitly disclose the second LB in parallel to the first incident LB wherein the first incident LB and the second incident LB are complementary portions of a collimated LB.
Kazuo teaches the second LB in parallel to the first incident LB (FIG. 2) wherein the first incident LB and the second incident LB are complementary portions of a collimated LB (FIG.2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the system of Satohiko by having parallel incident beams wherein the first incident LB and the second incident LB are complementary portions of a collimated LB for the benefit including simplifying calculations of angle between surfaces.
As to claim 1, the claim calls for the method that corresponds to the system of claim 19. Since the combination of Sato and Kazuo as discussed above meets the system of claim 19, the method practiced as recited for claim 1 is also met.
As to claim 20, Sato in view of Kazuo teaches the optical-based system of claim 19.
However, Satohiko in the same embodiment does not explicitly disclose the first incident LB normally impinge on the first surface.
Satohiko teaches the first incident LB normally impinge on the first surface (FIG. 4 and 5).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the system of Satohiko by having the first incident LB normally impinge on the first surface for the benefit including simplifying calculations of angle between surfaces and eliminating specular reflection
As to claim 21, Sato in view of Kazuo teaches the optical-based system of claim 20.
Sato further teaches a folded LB, obtained by folding of the second incident LB by the LFC, nominally normally impinges on the second surface (FIG. 1)
While Sato does not teach the system further comprises orienting infrastructure configured to orient the sample such that the first incident LB normally impinges on the first surface, in the same embodiment still Sato teach the limitations in the different embodiment (FIG. 5) or if the beam from the 16 was parallel with the beam from 12 (as modified by Kazuo for the claim 19), the first LB would normally impinges too.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the system of Satohiko by having orienting infrastructure configured to orient the sample such that the first incident LB normally impinges on the first surface for the benefit including simplifying calculations of angle between surfaces and eliminating specular reflection.
As to claim 22, Sato in view of Kazuo teaches the optical-based system of claims 21.
Sato further teaches comprising the at least one sensor to compute the actual inclination angle of the second surface relative to the first surface, based at least on the measured first angular deviation ([0023]).
While Sato does not explicitly disclose a computation module, a person in the ordinary skill in the art would understand a use of computational module to calculate the angle.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the system of Satohiko by using computational module for the benefit including improve accuracy and speed of calculation and measurement.
As to claim 23, Sato in view of Kazuo teaches the optical-based system of claim 22.
Sato further teaches the ICA is or comprises an autocollimator ([0003-0005]), the autocollimator comprising the light source (12, 16 light sources) and the at least one sensor (15 and 17).
As to claim 24, Sato in view of Kazuo teaches the optical-based system of claim 23.
Sato further teaches in different embodiment; the ICA further comprises a pair of blocking elements (13 and 23, half mirrors) configured to allow selectively blocking each of the first incident LB and the second incident LB (FIG. 5)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the system of Satohiko by having a pair of blocking elements configured to allow selectively blocking each of the first incident LB and the second incident for the benefit including improve SNR by blocking back reflection noises.
As to claim 37, Sato in view of Kazuo teaches the optical-based system of claim 20.
Sato further teaches system further comprises orienting infrastructure configured to orient the sample such that a folded LB, obtained by folding of the second incident LB by the LFC, normally impinges on the second surface (by 13 FIG. 5).
Allowable Subject Matter
Claim 38 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
AS to claim 38, none of the prior art alone or in combination disclose or teach of “the at least one sensor and the computational module, wherein the nominal inclination angle is 90 and the sample further comprises an external, flat third surface, which is parallel to the first surface, and wherein the computational module is configured to compute the actual inclination angle additionally taking into account a measured second angular deviation of a fourth returned LB relative to a third returned LB, obtained by, with the sample flipped, such that the first surface and the third surface are inverted, (a) projecting a third incident light beam on the third surface of the sample, so as to generate the third returned LB by reflection off the third surface, and (b') projecting a fourth incident LB on the LFC, in parallel to the third incident LB, so as to generate the fourth returned LB by folding thereof by the LFC, reflection off the second surface, and repassage via the LFC.” along with other limitations in the claim.
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 SUNGHEE Y GRAY whose telephone number is (571). The examiner can normally be reached on T-R,.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached on (571) 272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-270-4211.
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/SUNGHEE Y GRAY/
Primary Examiner, Art Unit 2886