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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-6 in the reply filed on 08/14/2025 is acknowledged.
Claims 7-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/14/2025.
Claim Rejections - 35 USC § 112
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 1-6 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “forming a light diffraction element” in line(s) 9. Claims must particularly point out and distinctly define the metes and bounds of the subject matter. A claim is indefinite if the scope of the claim is not clear to a hypothetical person possessing the ordinary level of skill in the pertinent art. One cannot ascertain whether “a light diffraction element” recited in line 9 is the same as or different than “an optical computing device” previously recited in line 1. Claims 2-6 which depend from claim 1 are similarly rejected.
Claim 2 recites the limitation “the filling of the liquid material” in line 1. There is insufficient antecedent basis for this limitation in the claim because there is no earlier recitation of the limitation. MPEP 2173.05(e). For compact prosecution, the limitation has been examined as if it read --the filling the cavity Ci--.
Claim 3 recites the limitation “the filling of the liquid material” in line 6. There is insufficient antecedent basis for this limitation in the claim because there is no earlier recitation of the limitation. MPEP 2173.05(e). For compact prosecution, the limitation has been examined as if it read --the filling the cavity Ci--.
Appropriate correction is required.
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, 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.
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 35 U.S.C. 103 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Border (US 6,740,474 B2) as evidenced by W. Yang et al., “Light-powered microrobots: Recent progress and future challenge” (hereinafter Yang).
Regarding claim 1, Border teaches methods for using photolithographic techniques for making optical structures such as diffractive lens (method for manufacturing an optical computing device) (col 1, lns 6-18).
Border teaches a method comprising the steps wherein vertical wall 40 is sealed to the transparent substrate 34 of apparatus 41 such that a chamber 42 is created that is bounded by the vertical wall 40 (forming the container including an i-th cavity Ci, using at least an i-th bottom wall WBi and an i-th side wall WSi, where i is an integer of 1≤i≤n) (Fig 5 and col 4, ln 44-62);
Border teaches a method comprising the steps wherein a thick layer of photoresist 37 has been placed on a transparent substrate 34; a laser 50 located on the opposite side 46 the transparent substrate 34 is shown producing a three-dimensional optical structure 48 in the photoresist 37 by transmitting the beam 51 from the laser 50 in a controlled pattern through the transparent substrate 34 and into the thick layer of photoresist 37 such that the three-dimensional optical structures 48 are formed above the transparent substrate 34; and wherein optical structures include, for example, arbitrary diffractive surfaces (filling the cavity Ci with a liquid material Ri containing a photo-curable resin; forming a light diffraction element on one main surface of the bottom wall WBi through stereolithography by emitting light to a part near an interface between the bottom wall WBi and the liquid material Ri to cure the photo-curable resin) (Fig 5, col 3, ln 34-36 and col 4, ln 63 - col 5, ln 9). Examiner notes that photoresists comprise a mixture of light-sensitive liquid composed of photosensitive resin, sensitizer and solvent as evidenced by Yang.
Examiner notes that any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation. MPEP 2111.02(I).
While Border teaches a method comprising a container that includes n side walls WS1 to WSn, where n is a natural number of not less than 2 (Fig 5 shows a vertical wall 40 on the left- and right-side of transparent substrate 34 of apparatus 41), and a bottom wall made of an optically-transparent material (transparent substrate 34), Border does not teach n bottom walls WB1 to WBn, where n is a natural number of not less than 2.
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the bottom wall (transparent substrate) disclosed in Border such that n bottom walls WB1 to WBn, where n is a natural number of not less than 2, since it has been held that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced, and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. MPEP 2144.04(VI)(B).
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Border (US 6,740,474 B2) in view of Wicker (US 2006/0022379 A1) as evidenced by W. Yang et al., “Light-powered microrobots: Recent progress and future challenge” (hereinafter Yang).
Regarding claim 1, Border teaches methods for using photolithographic techniques for making optical structures such as diffractive lens (method for manufacturing an optical computing device) (col 1, lns 6-18).
Border teaches a method comprising the steps wherein vertical wall 40 is sealed to the transparent substrate 34 of apparatus 41 such that a chamber 42 is created that is bounded by the vertical wall 40 (forming the container including an i-th cavity Ci, using at least an i-th bottom wall WBi and an i-th side wall WSi, where i is an integer of 1≤i≤n) (Fig 5 and col 4, ln 44-62);
Border teaches a method comprising the steps wherein a thick layer of photoresist 37 has been placed on a transparent substrate 34; a laser 50 located on the opposite side 46 the transparent substrate 34 is shown producing a three-dimensional optical structure 48 in the photoresist 37 by transmitting the beam 51 from the laser 50 in a controlled pattern through the transparent substrate 34 and into the thick layer of photoresist 37 such that the three-dimensional optical structures 48 are formed above the transparent substrate 34; and wherein optical structures include, for example, arbitrary diffractive surfaces (filling the cavity Ci with a liquid material Ri containing a photo-curable resin; forming a light diffraction element on one main surface of the bottom wall WBi through stereolithography by emitting light to a part near an interface between the bottom wall WBi and the liquid material Ri to cure the photo-curable resin) (Fig 5, col 3, ln 34-36 and col 4, ln 63 - col 5, ln 9). Examiner notes that photoresists comprise a mixture of light-sensitive liquid composed of photosensitive resin, sensitizer and solvent as evidenced by Yang.
Examiner notes that any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation. MPEP 2111.02(I).
While Border teaches a method comprising a container that includes n side walls WS1 to WSn, where n is a natural number of not less than 2 (Fig 5 shows a vertical wall 40 on the left- and right-side of transparent substrate 34 of apparatus 41), and a bottom wall made of an optically-transparent material (transparent substrate 34), Border does not teach n bottom walls WB1 to WBn, where n is a natural number of not less than 2.
However, reasonably pertinent to the particular problem with which the applicant was concerned (stereolithographic methods and apparatus comprising n bottom walls WB1 to WBn, where n is a natural number of not less than 2; see MPEP 2141.01(a)), Wicker discloses a method and apparatus comprising multi-material SL machine 30 that may include a stacked vat system or a fixed vat system each designed to accommodate multi-material fabrication of a part and capable of accommodating intermediate washing and/or curing/drying of the subject part 26, while maintaining a sterile environment that should eliminate contamination between materials and/or resins (Fig 3A, 4 and ¶0009,0045,0056). Fig 3A and 4 show three vats 22 comprising n bottom walls WB1 to WBn, where n is a natural number of not less than 2.
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the method disclosed in Border by duplicating the bottom wall (transparent substrate) disclosed in Border as taught by the stacked vat system or fixed vat system wherein three vats 22 comprises n bottom walls WB1 to WBn, where n is a natural number of not less than 2, as disclosed in Wicker in order to accommodate multi-material fabrication of a part while maintaining a sterile environment that should eliminate contamination between materials and/or resins (Fig 3A, 4 and ¶0009,0045,0056).
Regarding claim 2, as applied to claim 1, Border in view of Wicker disclose a method wherein the forming of the container, the filling of the liquid material, and the forming of the light diffraction element are carried out repeatedly for each cavity Ci (see rejection of claim 1 above; wherein Ci = 1).
Regarding claim 3, as applied to claim 1, Border in view of Wicker does not disclose a method wherein: the container further includes a bottom wall WBn+1, which is an n+1-th bottom wall; in the forming of the container, the i-th bottom walls WBi, i+1-th bottom walls WBi+1, and the i-th side walls WSi are used to form the container, and the cavities Ci are layered; in the filling of the liquid material, the cavities Ci are filled with the liquid material Ri containing the photo-curable resin; and in the forming of the light diffraction element, the emitting of the light is carried out for each of the cavities Ci.
However, Border in view of Wicker discloses a stacked vat system (Wicker, Fig 3A, 4 and ¶0009,0045,0056; see rejection of claim 1 above).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the method disclosed in Border in view of Wicker by applying the known technique of a stacked vat system disclosed in Wicker to the container, the step of forming of the container, the step of filling the cavity Ci, and the step of forming the light diffraction element disclosed in Border in view of Wicker such that the container further includes a bottom wall WBn+1, which is an n+1-th bottom wall; in the forming of the container, the i-th bottom walls WBi, i+1-th bottom walls WBi+1, and the i-th side walls WSi are used to form the container, and the cavities Ci are layered; in the filling of the liquid material, the cavities Ci are filled with the liquid material Ri containing the photo-curable resin; and in the forming of the light diffraction element, the emitting of the light is carried out for each of the cavities Ci with predictable results and resulting in an improved method. MPEP 2143(D).
Regarding claim 5, as applied to claim 1, although Border in view of Wicker does not specify a method wherein a second light is emitted to inhibit curing of the photo-curable resin, one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the method disclosed in Border in view of Wicker by duplicating the laser to provide a second light is emitted to inhibit curing of the photo-curable resin, since it has been held that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced, and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. MPEP 2144.04(VI)(B).
While Border in view of Wicker disclose forming of the light diffraction element and a second light is emitted to inhibit curing of the photo-curable resin, Border in view of Wicker does not explicitly disclose wherein the second light is emitted at least to a cavity adjacent to each of the cavities Ci.
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the method disclosed in Border in view of Wicker such that the second light is emitted at least to a cavity adjacent to each of the cavities Ci, since it has been held that rearranging parts of an invention is an obvious matter of design choice and would not have modified the operation of the device. MPEP 2144.04(VI)(C).
Regarding claim 6, as applied to claim 1, Border in view of Wicker does not disclose a method wherein: the light diffraction element includes a plurality of cells having respective thicknesses or refractive indices set independently of each other.
However, Border in view of Wicker disclose a method wherein the three-dimensional optical structures 48 are produced in the photoresist 37 by transmitting the beam 51 from the laser 50 in a controlled pattern through the transparent substrate 34 and into the thick layer of photoresist 37 (Border, col 4, ln 66 - col 5, ln 1).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the method disclosed in Border in view of Wicker such that the light diffraction element includes a plurality of cells having respective thicknesses or refractive indices set independently of each other with a reasonable expectation of success by transmitting the beam from the laser in a controlled pattern through the transparent substrate as disclosed in Border to produce the desired light diffraction element (three-dimensional optical structure) (Border, col 4, ln 66 - col 5, ln 1).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Border (US 6,740,474 B2) in view of Wicker (US 2006/0022379 A1) as evidenced by W. Yang et al., “Light-powered microrobots: Recent progress and future challenge” (hereinafter Yang), as applied to claim 2, and in further view of Bertoncini (US 2020/0033571 A1).
Regarding claim 4, as applied to claim 2, while Border in view of Wicker teach a method comprising forming of the light diffraction element, the light is emitted to the part near the interface by stereolithography (base device; see rejection of claims 1-2 above), Border in view of Wicker does not disclose a method comprising a two-photon method.
However, reasonably pertinent to the particular problem with which the applicant was concerned (two-photon methods; see MPEP 2141.01(a)), Bertoncini discloses a two-photon method for building up the lens by 3D printing, wherein the two-photon method uses a two-photon polymerization process in which lasers can be used to 3D-print detailed microstructures (¶0035) (known technique applicable to base method).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the method disclosed in Border in view of Wicker by applying the known technique of a two-photon method disclosed in Bertoncini to the method comprising forming of the light diffraction element, the light is emitted to the part near the interface by stereolithography disclosed in Border in view of Wicker with predictable results and resulting in an improved method. MPEP 2143(D).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Jeandel (US 2022/0143908 A1) teaches that the two-photon method is a technique that allows to produce objects of great complexity with a high degree of finish, i.e. spatial resolution, which can be in the nanometer range (¶0007).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JaMel M Nelson whose telephone number is (571)272-8174. The examiner can normally be reached 9:00 a.m. to 5:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached on (571) 270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMEL M NELSON/Primary Examiner, Art Unit 1743