Non-Final Rejection
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Following a non-final action, applicant filed a response on 6/17/2026. Claims 1-13 are pending. Note the examiner of record has changed.
The new ground of rejection applied below could have been made previously, therefore this action is made non-final.
Applicant’s argument filed with the response is persuasive. Applicant made a clear statement that the previously applied reference to Golubchik was commonly owned at the time of invention and therefore is disqualified as prior art under 35 U.S.C. 102(b)(2)(C). This reference was applied in all prior art rejections, therefore those rejections are withdrawn.
This reference is also the 371 equivalent to WO 2020/016824, mentioned below and previously cited by applicant. The WO reference remains usable in a rejection under 102(a)(1), as it published prior to the effective date and includes different inventors so it is not apparent at this time that the 102(b)(1)(A) or (B) exception applies. However, the examiner does not agree that the prior rejection should be maintained. This reference is not concerned with range finding, and the signal processor therefore does not perform the claimed functions that ultimately calculate the measurement of a target range as claimed. See also related discussion in the EPO, application EP 21902821.
Claim Rejections - 35 USC § 112
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.
Claim 12 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for calculating a corrected measurement of target range in a specific way (as in child claim 13), does not reasonably provide enablement for generically calculating a corrected measurement of target range in any way, without limitation. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with the claim.
The test for enablement is whether a person skilled in the art could make or use the invention without undue experimentation, using the Wands factors to determine whether there is undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988); MPEP 2164.01. The primary problem here is that applicant has provided only one specific manner of calculating a corrected measurement of target range, the way shown in claim 13, but claim 12 claims doing this in any way. Applicant has therefore not enabled the full scope of the claim. This is particularly important as this is the inventive contribution over the prior art.
As to the Wands factors, factor (A) the breadth of the claims weighs against enablement. Again, the claims are much broader than what is in the specification, as they are drawn to any manner of calculation. Factors (B) the nature of the invention, (D) the level of one of ordinary skill, and (E) the level of predictability appear to be neutral and do not weigh either way. Factor (C) the state of the art weighs against enablement, as this feature is seemingly the inventive aspect over the prior art, therefore we cannot simply look to what is known in the art to supply the missing aspects. Factors (F) the amount of direction provided by the inventor, (G) the existence of working examples, and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure weigh against enablement. Again, the specification tells us only one way of doing this function, one working example, but there is no direction given as to what other types of ways this might be doable. In light of the Wands factors discussed above, the examiner finds that the claims would require undue experimentation to make or use the full scope of the invention. Claim 12 is not enabled.
Allowable Subject Matter
Claims 1-11 are allowed. Claim 13 is 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 claim 1, there is not taught or disclosed in the prior art a range-finding apparatus with a coherent beam combining system illuminating a target with at least two partially coherent sub-beams and the elements claimed, the signal processor further configured to calculate frequency components of the received intensity signal; to form rotated frequency components by rotating said frequency components through an angle proportional to a time-of-flight correction; to calculate an objective function depending upon the rotated frequency components; to determine a global minimum of the objective function; and to calculate a corrected measurement of target range having an uncertainty which is less than the initial uncertainty. Claim 13 is a method claim performing substantially the same function.
It is noted that the claims were rejected by the Korean Ministry of Intellectual Property as unpatentable over the combination of WO 2020/016824, US 2007/0127008, and Ybarra (see cite on attached PTO-892). The examiner does not agree that any rejection is appropriate under US law. The present invention is generally a laser range finder, measuring range by illuminating a target with a coherent beam combining system. WO 2020/016824 was relied upon as teaching a coherent beam combining system, but is not concerned with calculating a range to a target. It relates to measuring and correcting a phase offset between multiple beams and while the beams are directed at a target nowhere does the reference describe using the beams to determine the range of a target, or a similar algorithm for doing so like is found in claim 1. US 2007/0127008 is explicitly intended to not use lasers, it is a passive range finder using GPS. Furthermore, it disparages the use of lasers. See [0002]-[0005] (describing several disadvantages of using lasers for location finding), [0018] (“operates as a laser-free passive-optical locator”), [0021] (range finder operates “in a passive optical manner in which the target 50 is not illuminated with a laser.”). The reference therefore teaches away from using lasers or coherent beams for location and cannot be part of an obviousness rejection. Ybarra relates to signal processing of a radar system, not to a laser or optical system, and is arguably not analogous art. In any event, the above is enough to show that such a combination would not be appropriate.
It is further noted that the EPO and JPO likewise similarly determined that claims 1-11 and 13 were patentable, and that the full scope of claim 12 was too broad as compared to the disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Menefee whose telephone number is (571)272-1944. The examiner can normally be reached M-F 7-4.
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/JAMES A MENEFEE/Primary Examiner, Art Unit 2828
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