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 11/11/2025. It is noted that in the amendment, applicant has made changes to the claims. There is not any change being made to the abstract, the drawings and the specification.
Regarding the claims, applicant has amended claims 1-2 and 13-14 and canceled claims 7-12. There is not any claim being added into the application. Thus, as amended, the pending claims are claims 1-6 and 13-18.
Election/Restrictions
In response to the Election/Restriction mailed to applicant on 09/11/2025, applicant has made an election without traverse of Invention I in the reply filed on 11/11/2025.
As a result of applicant’s election, claims 1-6 and 13-18 are examined in the present office action. Claims 7-12, directed to Invention II, have been canceled by applicant in the amendment of 11/11/2025.
Drawings
The drawings contain five sheets of figures 1-2, 3A-3B, 4A-4B and 5A-5E were received on 02/22/2023. These drawings are objected by the examiner for the following reason(s).
The drawings are objected to because the words/terms appeared in figures 5A-5E are so blurred that it is difficult to consider and lead to confusion and mistake during the issue and printing processes.
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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the numerical reference “600”in each of figures 3B and 4B which reference is not mentioned in the description. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
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 “optical jig” for coarse alignment of the objective with respect to the pupil relay module as recited in claim 2 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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
The abstract of the disclosure is objected to because the term “said” is used, see abstract on line 5. 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).
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.
The lengthy specification 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.
The specification is objected to because it does not have headlines such as Summary of the Invention, Brief description of the Drawings, … for the purpose of providing a clear framework of the specification. Appropriate correction is required.
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
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 limitations are:
a) “a pupil relay module” as recited in each of claims 1 and 13;
b) “an optical jig” as recited in claim 2; and
c) “an imaging technique” as recited in claim 17.
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 Objections
Claims 1-6 and 13-18 are objected to because of the use of claimed language being inconsistent. Appropriate correction is required.
a) Claims 1 and 13-15: the use of term “the/said” to refer to a component/element previously recited in the claim or its base claim is not consistent. In particular, while applicant uses the term of “said” to refer to an objective aberration component, see claim 1 on lines 5-6 or claim 13 on line 5; however, applicant uses the term of “the” for such a component, see claims 14-15, lines 1-2 of each claim.
Should the term “said” (claim 1 on line 5 and claim 13 on line 5) be changed to --the-- to maintain a consistence in claimed language being used throughout the claims?
b) Claims 1 and 13: the use of terms thereof “the measured combined aberration indicator reaching a predetermined indicator target” in claim 1 on lines 23-24 is not consistent to the use of terms thereof “the measured combined aberration indicator reaches a predetermined combined indicator target” in claim 13 on lines 12-13.
Should the terms “the measured combined aberration indicator reaches a predetermined combined indicator target” in claim 13 on lines 12-13 be changed to
-- the measured combined aberration indicator reaching a predetermined indicator target --?
c) The remaining claims are dependent upon the objected base claims and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 112
19. 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.
20. Claims 1-6 and 13-18 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 for the following reasons:
a1) the claim 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 “the objective …the objective” (lines 2-6). The mentioned feature makes the claim indefinite due to the use of term “when” on line 6. Applicant should note that the term “when” renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d); and
a2) In a similar way, the features thereof “adjusting the pupil relay module … the field of view” (lines 15-22) make the claim indefinite due to the use of term “when” on lines 16 and 20; and
b) Claim 13 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 reasons as set forth in element a1) above.
c) The remaining claims are dependent upon the objected base claims and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 103
21. 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.
22. 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.
23. Claims 13-18, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Kumagai (US Patent No. 5,296,700) in view of Heh et al (EP reference No. EP 1 296 191 B1).
Kumagai discloses an optical device having an objective lens and a pupil relay module.
a) Regarding present claims 13 and 17, the optical device as described in columns 7-8 and shown in fig. 2 comprises an objective lens (31) configured to have an objective aberration and a pupil relay module (33) configured to have a pupil relay aberration disposed along an optical axis/path with the objective lens wherein the pupil relay module aberration cancels the objective aberration.
It is noted that while Kumagai discloses the objective lens and the pupil relay module being aligned to each other along the optical axis/path; however, Kumagai does not positively disclose a method of aligning the objective lens and the pupil relay module based on step of measuring a combined aberration from the mentioned optical elements and the step of adjusting an optical alignment of the mentioned optical elements based on the measured combined aberration to obtain an accurate alignment between them when the measured combined aberration reaches a predetermine target as claimed.
However, a method of alignment two optical elements based on measured combined aberration of two optical elements by the claimed steps is known to one skill in the rt as can be seen in the method for optimizing imaging properties of at least two optical elements provided by Geh et al.
In particular, Geh et al discloses an optical device having a first stationary optical element and a second optical element which is movable with respect to the first stationary optical element and teaches a method for alignment the two optical elements to obtain an optimizing in imaging properties which method comprises a step of measuring a total aberration of all optical elements composed of the aberration of the stationary optical element and the aberration of the moveable optical element, and representing the measured total aberration via an indicator at all positions of the movable optical element, a step of adjusting an optical alignment of the optical elements via a movement of the movable optical element by a rotation and/or a displacement, and a step of iterating the two mentioned steps until the measured combined aberration reaches a particular/threshold value, see pages 1-4 of the English Machine Translation of the EP reference which is attached with the present office action.
Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to apply the method of alignment two optical elements based on measured aberrations as provided by Geh et al in an optical device having an objective lens having an objective aberration and a pupil relay module having a pupil relay aberration provided by Kumagai for the purpose of accurately alignment the objective lens and the pupil relay module so that their aberrations are compensated/canceled each other.
b) Regarding present claim 14, the aberrations of the first stationary optical element and the movable optical element each is a single aberration type of a Zernike order, see English Machine translation in pages 5-7 and 15-17.
c) Regarding present claims 15-16, the method as provided by Geh et al as mentioned by the inventors is able to apply/use for any specific aberration, see English Machine Translation in pages 1-2, which includes a field curvature aberration.
d) Regarding present claim 18, the use of a wavefront sensor for measuring total/combined aberration of the optical elements is read in the English Machine translation in page 5.
Allowable Subject Matter
24. Claims 1-6 would be allowable if claim 1 is rewritten/amended to overcome the rejections of the claims under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the present office action.
25. The following is a statement of reasons for the indication of allowable subject matter:
The method for aligning an objective and a pupil relay module wherein the pupil relay module aberration generated by the pupil relay module compensates the field curvature aberration generated by the objective as recited in the independent claim 1 is allowable with respect to the prior art, in particular, the US Patent No. 5,296,700 and the EP reference No. EP 1 296 191 B1 by the features thereof “measuring a combined aberration … accurate alignment” (claim 1 on lines 8-24). Such steps for accurate alignment of the objective and the pupil relay module as claimed in the mentioned features are not disclosed in the prior art.
Conclusion
26. The US Patent No. 10,890,743 is cited as of interest in that it discloses an optical device comprises an objective lens configured to have an objective aberration and a pupil relay module configured to have a pupil relay aberration disposed along an optical axis/path with the objective lens wherein the pupil relay module aberration cancels the objective aberration.
27. 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 M - Th: 6:00 ~ 17:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (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