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 present office action is made in response to the amendment filed by applicant on 08/13/2026. It is noted that in the amendment, applicant has made changes to the abstract, the specification and the claims.
A) Regarding the abstract, applicant has submitted a substitute abstract in a separate sheet and its marked-up copy showing the changes to the abstract;
B) Regarding the specification, applicant has submitted a substitute specification with its marked-up copy showing the changes to the specification and a statement that the substitute specification does not contain any new matter; and
C) Regarding the claims, applicant has amended claims 1-5, 8 and 12-18 and canceled claims 6-7, 9-11 and 19-20.
Response to Arguments
The amendments to the abstract, the specification and the claims as provided in the amendment of 08/13/20267, and applicant's arguments provided in the mentioned amendment, pages 8-16 have been fully considered and resulted in the following conclusions.
A) Regarding the claims, because applicant has canceled claims 6-7, 9-11 and 19-20 and has not added any claim into the application, thus the pending claims are now claims 1-5, 8, and 12-18, in which claims 1-3, 8, 12, 15 and 18 are examined in the present office action, and claims 4-5, 13-14 and 16-17 have been withdrawn from further consideration as being directed to non-elected Inventions.
Applicant should note that the non-elected claims 4-5, 13-14 and 16-17 will be rejoined if the linking claim 1 is later found as an allowable claim.
B) Regarding the objections to the Drawings set forth in the office action of 05/18/2026, the amendments to the claim(s) as provided in the amendment of 08/13/2026, and applicant’s arguments provided in the mentioned amendment, page 8, have been fully considered and are sufficient to overcome the objections to the drawings set forth in the mentioned office action.
C) Regarding the objections to the specification set forth in the office action of 05/18/2026, the amendments to the claims as provided in the amendment of 08/13/2026, and applicant’s arguments provided in the mentioned amendment, page 8, have been fully considered and resulted in the following conclusions.
C1) Regarding the objection to the abstract set forth in the office action of 05/18/2026, the amendments to the abstract as provided in the amendment of 08/13/2026, and applicant’s arguments provided in the mentioned amendment, page 8, have been fully considered and are sufficient to overcome the objections to the drawings set forth in the mentioned office action. The substitute abstract filed by applicant on 08/13/2206 has been entered; and
C2) Regarding the objection to the specification, set forth in the office action of 05/18/2026, the amendments to the specification as provided in the amendment of 08/13/2026, and applicant’s arguments provided in the mentioned amendment, page 8, have been fully considered and are sufficient to overcome the objections to the specification set forth in the mentioned office action.
However, the substitute specification filed by applicant on 08/13/2206 has NOT been entered because the substitute specification does not contain the change(s) to the specification as provided in the Pre-amendment filed by applicant on 05/12/2023. As a result, the objections to the specification set forth in the office action of 0/18/2026 is repeated in the present office action.
D) Regarding the objections to the claims as set forth in the office action of 05/18/2026, the amendments to the claims as provided in the amendment of 08/13/2026, and applicant’s arguments provided in the mentioned amendment, page 8, have been fully considered and are sufficient to overcome the objections to the claims set forth in the mentioned office action.
E) Regarding the Claim Interpretation as set forth in the office action of 05/18/2026, the amendments to the claims as provided in the amendment of 08/13/2026, and applicant’s arguments provided in the mentioned amendment, pages 9-10, have been fully considered but they are not persuasive.
Applicant is invited to review the claims with claimed language as provided. In particular the claims 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. Applicant should note that “focus” in the generic placeholder of “a focusing system” and “control” in the generic placeholder of “a control system” each is not considered as a structural modifier.
Thus, the Claim interpretation is repeated/raised in the present office action.
F) Regarding the rejection of claim 12 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and the rejections of claims 1-3, 6-12, 15 and 18-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 05/18/2026, the amendments to the claims as provided in the amendment of 08/13/2026, and applicant’s arguments provided in the mentioned amendment, page 10, have been fully considered and are sufficient to overcome the rejection of claim 12 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, and the rejections of claims 1-3, 6-12, 15 and 18-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the mentioned office action.
G) Regarding the rejection of claims 1-3, 6-8, 12, 18 and 20 under 35 U.S.C. 103 as being unpatentable over Gouch (US Patent No. 9,638,573, submitted by applicant) in view of Hayashi (Japanese reference No. 2016-180675), the rejection of claims 9 and 19 under 35 U.S.C. 103 as being unpatentable over Gouch in view of Hayashi as applied to claims 1, 3 and 6 above, and further in view of Bean et al (US Publication No. 2003/0007086), and the rejection of claims 10-11 under 35 U.S.C. 103 as being unpatentable over Gouch in view of Hayashi and Bean et al as applied to claims 1, 3, 6 and 9 above, and further in view of Duckett et al (US Publication No. 2019/0219831) set forth in the office action of 05/18/2026, the amendments to the claims as provided in the amendment of 08/13/2026, and applicant’s arguments provided in the mentioned amendment, pages 10-17, have been fully considered but they are not persuasive. Thus, claims 1-3, 6-8, 12, 18 and 20, now applied to claims 1-3, 8, 12, 15 and 18, over the same arts are rejected in the present office action.
Regarding applicant’s arguments provided in the amendment, pages 10-17, the examiner offers the following opinions.
a) In response to applicant's arguments against the references individually, see amendment in pages 13-16, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The use of a focusing system and a plurality of sensors is provided by Gouch. The art of Hayashi is used as a secondary in combination with the primary art, Gouch, to show to one skilled in the art a focusing system having a plurality of optical path modifiers (in the form of beam splitters), shutters and a switching system for operating the shutters to pass or block a transmission of a light beam.
b) It is noted that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
c) Regarding applicant’s arguments that the art of Hayashi does not discloses a control system, see amendment in page 14, applicant’s respectfully invited to review the art of Gouch in column 7 and fig. 1, and the rejection of the claims provided in the office action of 05/18/2026 and repeated in the present office action, in which Gouch discloses a driving system for moving target and a processor for controlling the operation of the driving system in relation to the sensor,
d) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
e) Regarding applicant’s arguments about the invention, see amendment in pages 14-16, applicant is respectfully invited to review the claims with language of claimed features. It is noted that all features recited with the claimed language as provided are met by the combined product provided by Gouch and Hayashi. Applicant should further note that the features upon which applicant relies and/or referred to as provided/described in the present specification are not recited in the rejected claim(s). 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).
Information Disclosure Statement
4. The listing of US Patent No. 8,059,366 in page 1 of the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
5. The drawings contain ten sheets of figures 1-6, 7a-7b, 8a-8b and 9-14 were received on 05/12/2023. These drawings are approved by the examiner.
Specification
6. The lengthy specification which was amended by the pre-amendment of 05/12/2023 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 applicant may become aware in the specification.
7. The Summary of the invention is objected to because it contains numerous details of the invention and longs more than 7 pages, see pages 2-9 of the specification. Applicant needs to provide a brief technical description of the invention in the Summary and moves the detailed descriptions to the section of “DESCRIPTION OF EXAMPLES”. Appropriate correction is required.
Claim Interpretation
8. 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.
9. 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.
10. 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 limitations are: “a focusing system” and “a control system” as recited in present claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
11. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
12. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
13. Claims 1-3, 8, 12, 15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Gouch (US Patent No. 9,638,573, submitted by applicant) in view of Hayashi (Japanese reference No. 2016-180675) (both of record).
Gouch discloses an apparatus and a method for image scanning.
a) Regarding present claims 1-3, 8, 12 and 15, the apparatus as described in columns 7-12 and shown in figs. 1-5 comprises the following features:
a1) a plurality of image sensors (2, 3, 9) for generating image data;
a2) a focusing system (1) defined an optical axis and adapted in use to direct light received from a target (6, 7) onto the plurality of imaging sensors
a3) each imaging sensors (2, 3, 9) is positioned with respect to the focusing system (1) such that light focused/received by the imaging sensor having an optical focus level which is different from each other imaging sensor and the light is received from a position on the target with respect to the optical axis which is different from the respective position for each other imaging sensor; and
a4) a control system being used to cause the target to be moved relative to the optical axis such that an image of the target is generated using the image data from the plurality of imaging sensors, see column 7 and fig. 1, for example.
a5) it is noted that while Gouch discloses an imaging system (1) for focusing light from the target to the plurality of imaging sensors; however, Gouch does not disclose the structure of the imaging system (1).
However, a focusing system being used in an optical imaging device for focusing light from the target to the imaging sensor wherein the focusing system comprises a plurality of optical path modifiers and shutters is known to one skill in the art as can be seen in the optical system provided by Hayashi In particular, in pages 6-9 and shown in figs. 1, Hayashi discloses a detecting system (100) having a focusing system (102, 104-110) for focusing light from a target to an imaging sensor (103) wherein the focusing system (102, 104-109) comprises the following features:
a51) an optical path modifier (104) being positioned inside the focusing system to generate a first light path between the optical path modifier (104) and the imaging sensor (103) and a second light path between the optical path modifier and the imaging sensor wherein the first and second light paths have their optical path lengths different from each other;
a52) a switching system (108, 109, 110) configured to be switched between a first mode in which light is transmitted along a respective light path and a second mode in which light is not transmitted along the respectively light path. In particular, in the first mode, the shutter driver (110) is operated to turn the shutter (108) located in the first light path ON while to turn the shutter (109) located in the second light path OFF, see pages 6-8 and fig. 1A and in the second mode, the shutter driver (110) is operated to turn the shutter (108) located in the first light path OFF while to turn the shutter (109) located in the second light path ON, see pages 6-8 and fig. 1B;
a53) the focusing system (102, 104-110) provided by Hayashi comprises a second optical path modifier (105) arranged to combine the first and second light paths back together wherein each optical path modifier is a polarizing beam splitter;
a54) the switching system (108-110) comprises a first optical shutter (108) and a second optical shutter 9109) wherein each optical shutter is controlled by the shutter driver (110) to switch between a first mode and a second mode; and
a55) in the second light path, i.e., the light path from the beam splitter (104) to the second beam splitter (105), a part of such second light path comprises the optical shutter (109) and at least a mirror (106, 107).
Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the apparatus having a focusing system for focusing light from a movable target to a plurality of imaging sensors as provided by Gouch by using a focusing system having an optical path modifier for splitting incident light onto a first and a second light paths and a switching mechanism for switching modes to allow/block light in a respective light path as suggested by Hayashi for the purpose of increasing the number of focus levels that can be imaged during a single courses of frames.
b) Regarding present claim 18, the method steps are implicitly met by the structure of the combined product as provided by Gouch and Hayashi.
Conclusion
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
15. 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.
316. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached on M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached on (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
