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 Pre-amendment
2. The present office action is made in response to the Pre-amendment filed on 05/12/2023. It is noted that in the Pre-amendment, applicant has made changes to the specification and the claims. There was not any change to be made to the abstract and the drawings.
A) Regarding to the specification, applicant has added a new paragraph about “CROSS REFERENCE TO RELATED APPLICATIONS” to page 1; and
B) Regarding to the claims, applicant has amended claims 3, 5-6, 12-13, 15-16 and 18-20. There is not any claim being added/canceled into/from the application. The pending claims are claims 1-20.
Election/Restrictions
3. In response to the Election/Restriction mailed to applicant on 11/20/2025, applicant has made an election of Invention I with traverse in the reply filed on of 03/05/2026. The traversal is on the ground(s) that “Applicant respectfully submits … distinct from claim 1” (Election on pages 1-2. This is not found persuasive because of the following reasons.
a) Applicant is respectfully invited to review the features recited in the claims of each groups of Inventions I-IV which recites different features and not overlapped from each other. In particular, the claims of the Invention I is directed to specific features regarding the beam splitters constituted the optical path modifier and their arrangement in different optical paths which features are not recited in the claims of the Invention II (which Invention II is directed to specific features regarding the combination of an optical shutter and the switching mechanism of the optical path modifier) or not recited in the claim of the Invention III (which Invention III is directed to a retarding element located in specific optical path(s) for changing the optical path length) or not recited in the claims of the Invention IV (which claims are directed to specific features regarding the locations of targets with plurality of sensors for varying the focus levels).
b) It is noted that the Election/Restriction set forth in the office action of 10/10/2024 provides different classes/subclassed which is/are required to search for different feature recited in different Inventions.
Thus, the different structures constituted by different features among claims of the Inventions I-IV require different searches for each structure and thus cause a serious burden on the examiner to search and examination of different inventions if an election was not being issued.
The requirement is still deemed proper and is therefore made FINAL.
4. As a result of applicant’s election and the examiner’s response provided above, claim claims 1-3, 6-12, 15 and 18-20 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.
Priority
5. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
6. The listing of references in pages 1-2 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.
7. The information disclosure statement, hereafter, IDS, filed on 11/05/2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
In particular, the Chinese office action for CN Application No. 202180076886.6 listed in the section of NON-PATENT LITERATURE DOCUMENTS of the mentioned IDS has not been considered and has been lined-through because it was written in a foreign language and applicant has not provided an English translation or an explanation of the Chinese office action.
Drawings
8. 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 objected by the examiner for the following reason(s).
9. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the feature of a scanning system as recited in claim 1 must be shown or the feature(s) canceled from the claim(s). See Note below. No new matter should be entered.
Note: while figure 1 shows/illustrates a reference of “8000”; however, that reference is referred to a direction of moving of the slide (6000). There is not any element/component showing a scanning mechanism being provided in all figures.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
10. The abstract of the disclosure is objected to because it longs more than 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
11. Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
12. 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.
13. 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 Objections
14. Claims 1-3, 6-12, 15 and 18-20 are objected to because of the following informalities. Appropriate correction is required.
a) In claim 1: some grammatic errors appeared in the claim as follow:
a1) on line 4, “on to” should be changed to --onto--;
a2) on lines 17-19, the phrase thereof “wherein the apparatus … the respective light path” (lines 17-19) has a grammatical error. Should --between-- be added after “switched” (line 18)? And
a3) on line 16: “image sensors” should be changed to –imaging sensors--, see the claim on lines 2, 4, 6, 7, …
b) The remaining claims are dependent upon the objected base claim and thus inherit the deficiencies thereof.
15. Claim 20 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 18. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant should note that the features thereof “the first optical shutter and the second optical shutter are operated in their respectively first and second modes” recited in claim 20 on lines 1-3 are read or recited in its base claim 18 with the features thereof “operating the first optical shutter … the second light path” (lines 4-7).
Claim Interpretation
16. 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.
17. 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.
18. 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 scanning 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 § 112
19. 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.
20. Claim 12 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 12 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the disclosure does not disclose a switching mechanism having a first optical shutter, a second optical shutter and a polarizing optical shutter as recited in the claim on line 2.
Applicant is respectfully invited to review base claim 7 on lines 2-7 which recites that the switching mechanism comprises a first and a second optical shutters. Applicant should further note that the disclosure disclose an alternative switching mechanism in which there is only polarizing optical shutter is used in place of the first and second optical shutters. See specification in pages 14-18 and figs. 3 and 5-8b.
21. 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.
22. Claims 1-3, 6-12, 15 and 18-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “a scanning mechanism … image sensors” (lines 14-16).
The mentioned feature makes the claim indefinite due to the use of terms “may be” in the mentioned feature. Applicant should note that the terms “may be” renders the claim indefinite because it is unclear whether the limitation(s) following the terms are part of the claimed invention. See MPEP § 2173.05(d).
b) Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because each of the features thereof “the optical path length” (lines 1-2) and “the optical path length” (line 2) lacks a proper antecedent basis.
c) Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “wherein when the polarizing optical shutter … second light source” (lines 1-7). The mentioned feature makes the claim indefinite due to the use of terms “when” in the mentioned feature. Applicant should note that the terms “when” renders the claim indefinite because it is unclear whether the limitation(s) following the terms are part of the claimed invention. See MPEP § 2173.05(d).
d) Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the group” (line 3) lacks a proper antecedent basis.
e) Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element c) above.
f) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 103
23. 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.
24. 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.
25. Claims 1-3, 6-8, 12, 18 and 20, as best as understood, 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).
Gouch discloses an apparatus and a method for image scanning.
a) Regarding present claims 1-3 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 scanning 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 discloses 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.
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 6, 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 modifiers is a polarizing beam splitter;
c) Regarding present claims 7 and 12, 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.
d) Regarding present claim 8, 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).
e) Regarding present claims 18 and 20, the method steps are implicitly met by the structure of the combined product as provided by Gouch and Hayashi.
26. Claims 9 and 19 , as best as understood, are rejected 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).
Regarding present claim 9, while the combined product provided by Gouch and Hayashi does not positively disclose that the shutters each is a polarizing shutter; however, a focusing system having a lens , polarizing beam splitter and shutters in form of polarizing shutter is known to one skill in the art as can be seem in the optical device provided by Bean et al, see the second embodiment provided in paragraphs [0026]+ and fig. 2. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to use a polarizing shutter in a focusing system as suggested by Bean et al for each optical shutter of the combined product provided by Gouch and Hayashi to meet a particular application.
b) Regarding present claim 19, the method steps are implicitly met by the structure of the combined product as provided by Gouch, Hayashi and Bean et al.
27. Claims 10-11 , as best as understood, are rejected 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, submitted by applicant).
It is noted that the combined product provided by Gouch, Hayashi and Bean et al does not disclose that the switching system comprises a polarizing shutter which is placed upstream of the first polarizing beam splitter or downstream of the second polarizing beam splitter as recited in claim 10; however, an arrangement of a switching system having the polarizing shutter placed upstream of the first polarizing beam splitter or downstream of the second polarizing beam splitter as claimed is merely that of a preferred embodiment and no criticality has been disclosed. The support for that conclusion is found in the present disclosure and also claimed in present claims 7-8. Further, it is noted that an arrangement of a shutter downstream a (polarizing) beam splitter is known to one skill in the art as can be seen in the optical device provided by Duckett et al, see the embodiment shown in figure 4, for example.
Regarding the arrangement of the shutter as recited in present claim 11, such an arrangement would have been obvious to one skill in the art in case that a plurality of light sources being used to illumination a target.
Thus, absent of any criticality, it would have been obvious to one skill in the art to modify the combined product provided by Gouch, Hayashi and bean et al by rearrangement the elements constituted the focusing system including an arrangement of the shutter before/after a beam splitter to meet a particular application. In re Japikse, 86 USPQ 70.
Conclusion
28. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
29. The Korean reference No. 10-1939939 and the Chinese reference No. 103926225 are cited as of interest in that each discloses an optical device having polarized beam splitter and shutters disposed between two optical path defined by the two polarized beam splitters.
30. 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
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