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 .
DETAILED ACTION
Response to Arguments
Applicant’s arguments filed 08/03/2026 have been fully considered but they are not persuasive.
The applicant argues that Lee does not disclose the limitation as presented in claim 1. The examiner respectfully disagrees. Lee (figure 2) discloses an optical device for a vehicle as claimed including a correction optical system (122-125) disposed between the optical sensor module and the light- transmissive member (300 and 121), wherein the correction optical system includes at least one optical member to refract the light that propagates between the light-transmissive member and the optical sensor module in a second direction different from the first direction in which the light- transmissive member refracts the light (one of the dotted lines as shown in figure 2), wherein the at least one optical member (122-125) is formed in an asymmetric configuration such that a first side thereof with respect to an optical axis has a greater thickness than a second side thereof with respect to the optical axis, thereby causing the light that propagates from the light-transmissive member to be refracted in the second direction and to be incident to the optical sensor module substantially parallel with the optical axis of the optical sensor module (The third lens 123 is disposed between the second lens 122 and the fourth lens 124 and is disposed on the rear surface facing the second lens 122 facing the front surface 5 and the fourth lens 124 (6) is formed as an aspherical surface to correct the aberration generated in the second lens 122. The third lens 123 according to the embodiment has the concave surface facing the second lens 122 and the concave surface or the convex surface facing the fourth lens 124, and is an aspherical lens having positive refractive power. The third lens 123 can correct an aberration generated in the second lens 122see at least paragraph 0036).
The claim language therefore does not patentably distinguish over the applied reference[s], and the previous rejections are maintained.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (KR 10-1589636).
Regarding claim 1, Lee (figure 2) discloses an optical device for a vehicle, comprising:
an optical sensor module (300) for detecting light (The infrared optical system 300 receives the infrared light passing through the beam splitter 200 and senses or detects it; see at least paragraph 0028); and
a light-transmissive member (121) disposed upstream of the optical sensor module, wherein the light-transmissive member refracts light incident to the optical device in a first direction;
a correction optical system (122-125) disposed between the optical sensor module and the light- transmissive member (300 and 121), wherein the correction optical system includes at least one optical member to refract the light that propagates between the light-transmissive member and the optical sensor module in a second direction different from the first direction in which the light- transmissive member refracts the light (one of the dotted lines as shown in figure 2),
wherein the at least one optical member (122-125) is formed in an asymmetric configuration such that a first side thereof with respect to an optical axis has a greater thickness than a second side thereof with respect to the optical axis, thereby causing the light that propagates from the light-transmissive member to be refracted in the second direction and to be incident to the optical sensor module substantially parallel with the optical axis of the optical sensor module (The third lens 123 is disposed between the second lens 122 and the fourth lens 124 and is disposed on the rear surface facing the second lens 122 facing the front surface 5 and the fourth lens 124 (6) is formed as an aspherical surface to correct the aberration generated in the second lens 122. The third lens 123 according to the embodiment has the concave surface facing the second lens 122 and the concave surface or the convex surface facing the fourth lens 124, and is an aspherical lens having positive refractive power. The third lens 123 can correct an aberration generated in the second lens 122see at least paragraph 0036).
The limitation, “to refract the light that propagates between the light-transmissive member and the optical sensor module in a second direction different from the first direction in which the light- transmissive member refracts the light” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 2, Lee (figure 2) discloses wherein the optical sensor module includes at least one of a camera or a lidar (The present invention proposes a common optical system structure of a lens assembly capable of simultaneously performing image tracking and laser tracking; see at least paragraph 0021).
Regarding claim 3, Lee (figure 2) discloses wherein the at least one optical member (100) is formed in an asymmetric configuration in at least one direction around an optical axis of the optical sensor module (300, 410, 420; figure 2).
Regarding claim 4, Lee (figure 2) discloses wherein one of the correction optical system or the light-transmissive member (100 or 200) allows light that transmits therethrough to converge, while the other thereof allows light that transmits therethrough to diverge (figure 2).
The limitation, “wherein one of the correction optical system or the light-transmissive member allows light that transmits therethrough to converge, while the other thereof allows light that transmits therethrough to diverge” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 5, Lee (figure 2) discloses wherein the correction optical system refracts the light in a direction opposite to the direction in which the light-transmissive member refracts the light (100 and 200; figure 2).
The limitation, “the correction optical system refracts the light in a direction opposite to the direction in which the light-transmissive member refracts the light” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 11, Lee (figure 2) discloses wherein the optical sensor module further includes a light-emitting module for emitting light toward the light-transmissive member, and wherein the correction optical system refracts the light emitted from the light-emitting module in a direction different from a direction in which the light-transmissive member refracts the light emitted from the light-emitting module (100 and 200; figure 2; the first lens 121 has any one surface of the front surface (①) and the rear surface (②) is formed as a diffractive aspheric surface, and can maximize the aberration correction ability with the aspherical surface of the rear surface (②); see at least paragraph 0034).
The limitation, “wherein the correction optical system refracts the light emitted from the light-emitting module in a direction different from a direction in which the light-transmissive member refracts the light emitted from the light-emitting module” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 12, Lee (figure 2) discloses wherein the correction optical system refracts the light emitted from the light-emitting module in a direction opposite to the direction in which the light-transmissive member refracts the light emitted from the light-emitting module (100 and 200; figure 2).
The limitation, “wherein the correction optical system refracts the light emitted from the light-emitting module in a direction opposite to the direction in which the light-transmissive member refracts the light emitted from the light-emitting module” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 13, Lee (figure 2) discloses wherein the correction optical system comprises a first area for refracting light that transmits through the light-transmissive member (300) and propagates toward the optical sensor module, and a second area for refracting the light that is emitted from the light-emitting module and propagates toward the light-transmissive member (upper and lower areas of 100 and 200; figure 2).
Regarding claim 14, Lee (figure 2) discloses wherein the at least one optical member includes at least one of a lens, a mirror, or a prism (lens 121-125).
Regarding claim 15, Lee (figure 2) discloses wherein the light-transmissive member and the correction optical system have opposite chromatic aberration patterns (The imaging lens group includes a first lens 14 having a positive refractive power and a second lens 15 having a negative refractive power, and the composite refractive power of the first and second lenses 14 and 15 is positive. It has the power of refraction and removes chromatic aberration while determining the image position of the image information source; see at least page 3, paragraph 10).
Claim Rejections - 35 USC § 103
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 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.
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.
Claims 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 10-1589636) in view of Kim et al. (KR 10-2007-0082108).
Regarding claim 6, Lee discloses the limitations as shown in the rejection of claim 1 above. However, Lee is silent regarding wherein in response to the light-transmissive member being deformed due to an ambient temperature change such that a refractive power of the light-transmissive member is changed, the correction optical system compensates for the changed refractive power of the light-transmissive member. Kim et al. (figures 1-3) teaches wherein in response to the light-transmissive member being deformed due to an ambient temperature change such that a refractive power of the light-transmissive member is changed, the correction optical system compensates for the changed refractive power of the light-transmissive member (The third lens 16 is a lens formed of a free curved surface having rotational asymmetry, and may have different curvatures in the x direction and the y direction. This compensates for the trial change due to the curvature difference between the x- and y-axis directions of the windshield; see at least page 3, paragraph 11). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the correction optical system as taught by Kim et al. in order to achieve a vehicle head-up display that can secure safety.
The limitations “wherein in response to the light-transmissive member being deformed due to an ambient temperature change such that a refractive power of the light-transmissive member is changed, the correction optical system compensates for the changed refractive power of the light-transmissive member” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The limitation, “wherein one of the correction optical system or the light-transmissive member allows light that transmits therethrough to converge, while the other thereof allows light that transmits therethrough to diverge” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 7, Kim et al. (figures 1-3) teaches wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member (The third lens 16 is a lens formed of a free curved surface having rotational asymmetry, and may have different curvatures in the x direction and the y direction. This compensates for the trial change due to the curvature difference between the x- and y-axis directions of the windshield; see at least page 3, paragraph 11).
The limitations “wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The limitation, “wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 8, Kim et al. (figures 1-3) teaches wherein the correction optical system is configured such that a position of the at least one optical member is adjusted based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member (The third lens 16 is a lens formed of a free curved surface having rotational asymmetry, and may have different curvatures in the x direction and the y direction. This compensates for the trial change due to the curvature difference between the x- and y-axis directions of the windshield; see at least page 3, paragraph 11).
The limitations “wherein the correction optical system is configured such that a position of the at least one optical member is adjusted based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The limitation, “wherein the correction optical system is configured such that a position of the at least one optical member is adjusted based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 9, Kim et al. (figures 1-3) teaches wherein the position of the at least one optical member is adjusted linearly, rotationally, or by any combination thereof (An additional driving source including a motor is connected to the first mirror (12) or the second mirror (13) to adjust the angle of an optical axis; see at least abstract).
The limitations “wherein the position of the at least one optical member is adjusted linearly, rotationally, or by any combination thereof” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The limitation, “wherein the position of the at least one optical member is adjusted linearly, rotationally, or by any combination thereof” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 10, Kim et al. (figures 1-3) teaches wherein the correction optical system is configured such that the at least one optical member is fixed to a fixing member that is deformable based on the ambient temperature change (the optical member is fixed to the vehicle and therefore the windshield; figure 1), and wherein in response to the fixing member being deformed, a position of the at least one optical member is adjusted to compensate for the changed refractive power of the light-transmissive member (An additional driving source including a motor is connected to the first mirror (12) or the second mirror (13) to adjust the angle of an optical axis; see at least abstract; The third lens 16 is a lens formed of a free curved surface having rotational asymmetry, and may have different curvatures in the x direction and the y direction. This compensates for the trial change due to the curvature difference between the x- and y-axis directions of the windshield; see at least page 3, paragraph 11).
“Wherein the correction optical system is configured such that the at least one optical member is fixed to a fixing member that is deformable based on the ambient temperature change, and wherein in response to the fixing member being deformed, a position of the at least one optical member is adjusted to compensate for the changed refractive power of the light-transmissive member” is a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP §2113.
The limitations “wherein the correction optical system is configured such that the at least one optical member is fixed to a fixing member that is deformable based on the ambient temperature change, and wherein in response to the fixing member being deformed, a position of the at least one optical member is adjusted to compensate for the changed refractive power of the light-transmissive member” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The limitation, “wherein the correction optical system is configured such that the at least one optical member is fixed to a fixing member that is deformable based on the ambient temperature change, and wherein in response to the fixing member being deformed, a position of the at least one optical member is adjusted to compensate for the changed refractive power of the light-transmissive member” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 7, Kim et al. (figures 1-3) teaches wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member (The third lens 16 is a lens formed of a free curved surface having rotational asymmetry, and may have different curvatures in the x direction and the y direction. This compensates for the trial change due to the curvature difference between the x- and y-axis directions of the windshield; see at least page 3, paragraph 11).
The limitations “wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The limitation, “wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 7, Kim et al. (figures 1-3) teaches wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member (The third lens 16 is a lens formed of a free curved surface having rotational asymmetry, and may have different curvatures in the x direction and the y direction. This compensates for the trial change due to the curvature difference between the x- and y-axis directions of the windshield; see at least page 3, paragraph 11).
The limitations “wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The limitation, “wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 7, Kim et al. (figures 1-3) teaches wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member (The third lens 16 is a lens formed of a free curved surface having rotational asymmetry, and may have different curvatures in the x direction and the y direction. This compensates for the trial change due to the curvature difference between the x- and y-axis directions of the windshield; see at least page 3, paragraph 11).
The limitations “wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The limitation, “wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 7, Kim et al. (figures 1-3) teaches wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member (The third lens 16 is a lens formed of a free curved surface having rotational asymmetry, and may have different curvatures in the x direction and the y direction. This compensates for the trial change due to the curvature difference between the x- and y-axis directions of the windshield; see at least page 3, paragraph 11).
The limitations “wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” are regarded as intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The limitation, “wherein the correction optical system is configured such that the at least one optical member is deformed based on the ambient temperature change so as to compensate for the changed refractive power of the light-transmissive member” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Lee (KR 10-1589636).
Regarding claim 16, Lee discloses the limitations as shown in the rejection of claim 1 above. However, Lee is silent regarding the transmittance of the correction optical system. Lee (figure 2) discloses wherein the correction optical system has a transmittance of at least 50% for a light beam of a wavelength required to be detected by the optical sensor module among light beams incident thereto from an exterior of the vehicle and/or a transmittance of at least 50% for a light beam of a wavelength required to be irradiated to the exterior of the vehicle among light beams emitted from the optical sensor module (A common optical system that transmits light in an infrared band and laser light through the same optical path and has a plurality of lenses; see at least claim 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the correction optical system as taught by Lee in order to achieve broadband optical device capable of simultaneously detecting an infrared image and a laser beam.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
The limitation, “wherein the correction optical system has a transmittance of at least 50% for a light beam of a wavelength required to be detected by the optical sensor module among light beams incident thereto from an exterior of the vehicle and/or a transmittance of at least 50% for a light beam of a wavelength required to be irradiated to the exterior of the vehicle among light beams emitted from the optical sensor module” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Lee discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth, can be reached at 571-272-9791. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871
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