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 06/09/2026. It is noted that in the amendment, applicant has made changes to the abstract, the drawings, the specification and the claims.
A) Regarding the abstract, applicant has made changes to the abstract, see amendment in page 2.
B) Regarding the drawings, applicant has submitted a set of 8 sheets of figures 1, 3A-3B, 4A-4B and 5A-5E which comprise four replacement sheets of figures 1, 3A-3B, 4A-4B and 5A and four new sheets of figures 5B-5E.
C) 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, see amendment in page 2.
D) Regarding the claims, applicant has amended claims 1, 14 and 17-18 and canceled claims 3 and 15-16.
Response to Arguments
3. The amendments to the abstract, the drawings, the specification and the claims as provided in the amendment of 06/09/2026, and applicant's arguments provided in the mentioned amendment, pages 7-11, have been fully considered and resulted the following conclusions.
A) Regarding the abstract, while the amendments to the abstract is sufficient to overcome the objection(s) to the abstract set forth in the office action of 03/09/2026; however, the amended abstract provided in page 2 of the amendment is not acceptable because applicant has failed to provide the amended abstract in a separate sheet as required by Rule 37 CFR 1.121 and 37 CFR 1.72. As a result, the objection(s) to the abstract is repeated in the present office action. Note that a form PTO-324 is attached with the present office action.
B) Regarding the objections to the drawings set forth in the office action of 03/09/2026, the amendments to the drawings and the specification as provided in the amendment of 06/09/2026 and applicant’s arguments provided in the mentioned amendment, pages 3 and 7-8, 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 03/09/2026, the amendments to the specification as provided in the amendment of 06/09/2026, the substitute specification contained the changes to the specification which has been entered, and applicant’s arguments provided in the mentioned amendment, page 8, are sufficient to overcome the objections to the specification set forth in the mentioned office action.
D) Regarding the objections to the claims 1-6 and 13-18 set forth in the office action of 03/09/2026, the amendments to the claims as provided in the amendment of 06/09/2026 and applicant’s arguments provided in the mentioned amendment, pages 8-9 are sufficient to overcome the objections to the claims 1-6 and 13-18 set forth in the mentioned office action.
E) Regarding the Claim Interpretation set forth in the office action of 03/09/2026, the amendments to the claims as provided in the amendment of 06/09/2026 and applicant’s arguments provided in the mentioned amendment, page 10, are sufficient to overcome the objections to the claims 1-6 and 13-18 set forth in the mentioned office action.
F) Regarding the rejections of claims 1-6 and 13-18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, set forth in the office action of 03/09/2026, the amendments to the claims as provided in the amendment of 06/09/2026 and applicant’s arguments provided in the mentioned amendment, pages 9-10, have been fully considered but are not sufficient to overcome the rejections of claims 1-6 and 13-18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Applicant should note that the feature thereof “that compensates … the objective” newly-added into claim 1 on lines 5-6 still contains the term of “when”.
G) Regarding the rejection of claims 13-18 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) set forth in the office action of 03/09/2026, the cancelation of claims 13 and 15-16 and the amendments to the claims 14 and 17-18 provided in the amendment of 06/09/2026 and applicant’s arguments provided in the mentioned amendment, page 11, have been fully considered and are sufficient to overcome the rejection of claims 13-18 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) set forth in the office action.
Drawings
4. The four replacement sheets of figures 1, 3A-3B, 4A-4B and 5A and four new sheets of figures 5B-5E have been received by the Office on 06/09/2026.
5. As a result of the changes to the drawings, the application now contains a total of nine sheets of figures 1-2, 3A-3B, 4A-4B and 5A-5E which includes one sheet of figure 2 as filed on 02/22/2023, four replacement sheets of figures 1, 3A-3B, 4A-4B and 5A as filed on 06/09/2026, and four new sheets of figures 5B-5E as filed on 06/09/2026. The mentioned total of nine sheets of figures 1-2, 3A-3B, 4A-4B and 5A-5E is now approved by the examiner.
Specification
6. 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).
7. 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.
8. The lengthy specification which was amended by the amendment of 06/09/2026 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.
Claim Rejections - 35 USC § 112
9. 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.
10. Claims 1-6, 14 and 17-18 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 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 5. 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).
b) The remaining claims are dependent upon the objected base claims and thus inherit the deficiencies thereof.
Allowable Subject Matter
11. Claims 1-6, 14 and 17-18 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.
12. 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 9-29). 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
13. 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.
14. The US Publication Nos. 2011/0069381 and 2012/0307036 are cited as of interest in that each discloses an optical system having a relay lens group having a pupil relay module aberration elements for canceling an objective aberration component introduced by an objective lens.
15. 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
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