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 Arguments
Applicant's arguments filed March 6, 2026 have been fully considered but they are not persuasive.
Applicant presents arguments regarding the rejection of independent claim 1 under 35 U.S.C. § 103:
1) Applicant argues regarding the primary reference, Trunz (EP 1 026 532 A1) with machine translation, that there is a “rigid” connection between lens – 7 and tabs – 6 (paragraph [0016] by gluing or soldering at connection – 12 a rigid connection between the lens – 7 and the membrane ring – 4 or its tabs – 6). Moreover, Trunz fails to teach an “inorganic adhesive” for the securement between lens – 7 and tabs – 6 and it would not be obvious in view of the secondary reference, DeRosa (US 2015/0093080 A1). This is because DeRosa teaches an inorganic adhesive as connecting an optical fiber with a connector ferrule (Figs. 1, 2 paragraph [0014] inorganic adhesive – 40 connecting optical fiber – 40 connector ferrule – 12), which is very different from the lens support structure disclosed by Trunz. Applicant argues that the Office fails to show that one of skill in the art would have looked to an optical fiber connector to modify a lens support structure as these devices are used for very different purposes and in different technological fields. Moreover, there is no indication given by the Office to show that the lens material of Trunz is similar to the material of the optical fiber of DeRosa such that the inorganic adhesive of DeRosa would have been suitable for adhesion for use with the lens of Trunz or that these materials are similar (Applicant Arguments/Remarks 03/06/2026 pp.2-3).
The examiner counter-argues that the applicant’s argument is based upon entirely replacing, in the perception of the skilled artisan, the lens support structure of Trunz with the optical fiber connector of DeRosa such that the applicant’s argument is based on the alleged difficulty of literally combining Trunz and DeRosa. Bodily incorporation of a secondary reference into the apparatus described in the primary reference is not necessary for an obviousness rejection to be proper. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
The critical question is whether the claimed inventions would have been rendered obvious by the teachings of the prior art as a whole. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). The test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). See also MPEP § 2145 III.
In this case, under broadest reasonable interpretation, one with ordinary skill would be motivated to consider the inorganic adhesive composition disclosed by DeRosa because the inorganic adhesive composition used in DeRosa has a coefficient of thermal expansion (CTE) similar to the CTE of the bearing surface of metallic fixable members as disclosed in DeRosa (paragraphs [0028] [0036]) and this, under broadest reasonable interpretation, would be applicable in Trunz (Applicant Arguments/Remarks 03/06/2026 p. 3).
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2) The applicant further argues that the Office fails to show that the inorganic adhesive of DeRosa would not have provided a “rigid” connection when used in the lens support structure of Trunz. The Office Action appears to allege that it would have been obvious for the lens support structure of Trunz to have used the inorganic adhesive of DeRosa, but this is not based on facts actually gleaned from the prior art.
The examiner counter-argues that this argument is based on an overly-narrow claim interpretation. The applicant contends that facts actually gleaned from prior art must be used to support the use of the inorganic adhesive of DeRosa to meet the limitation of “an inorganic adhesive” of the claim. However, claim 1 is not so limited. Claim 1 recites “the inorganic adhesive being configured to secure an optical element to the mount such that the optical element is held by the mount.” Under broadest reasonable interpretation, it is valid that the inorganic adhesive used in DeRosa would meet this limitation, where DeRosa is analogous art in that its inorganic adhesive is used to secure an optical element to a mount and therefore pertinent, because a skilled artisan would be motivated by the similarity in CTE’s, as discussed above.
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 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(s) 1-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Trunz (EP 1 026 532 A1) IDS 09/18/2023 with machine translation in view of DeRosa (US 2015/0093080 A1). See also evidence: “Ferrule.” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/ferrule. Accessed 30 Oct. 2025.
Regarding Claim 1, Trunz discloses an assembly for mounting an optical element in an optical system (abs), the assembly comprising:
a mount configured for rigid attachment to the optical system (Fig. 1 paragraph [0013] ring-shaped socket – 1 with ring shoulder – 2 has a support contour – 3);
a plurality of flexible members (Figs. 1, 2 paragraphs [0006] [0013] elastic connections, tabs – 6 made of springy material), each flexible member having a first end affixed to or integrally extending from the mount and a free end defining a bearing surface (Figs. 1, 2 paragraphs [0013] [0016] membrane ring – 4 where a multitude of tabs – 6 project inwards from inner circumference, with centering collar – 6 serves for a stop and acting as one end of a bearing surface of a flexible member; stress and deformation-free mounting of the lens – 7 can be achieved due the high elasticity of the membrane ring – 4 or tabs – 6), the free end being radially inward of the mount (Fig. 1, 2 tabs project inwards from its inner circumference), and the flexible members each being comprised of metal (Figs 1, 2 paragraph [0013] springy material made from a very thin sheet of metal).
However, Trunz is silent as to an inorganic adhesive composition disposed on the bearing surfaces.
DeRosa discloses optical connectors for fiber optic fibers, lens or other structures using inorganic adhesives where the optical connector is ring shaped (Fig. 1 abs, paragraph [0003] ferrule which is usually a ring made of metal around a slender shaft, from Merriam Webster on-line dictionary definition cited above); where the inorganic adhesive is configured to secure an optical element to the mount such that the optical element is held by a mount for the optical element (Figs. 1, 2 paragraph [0014] fiber receiving passage – 30 defined inner surface of the ferrule – 12 contacted with an inorganic adhesive composition – 40 to secure an optical fiber disposed within the ferrule – 12 and in contact with inner surface of the ferrule – 12 and stub optical fiber – 14).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Trunz with the disclosure of DeRosa, whereby an assembly for mounting an optical element in an optical system, having a plurality of flexible members with a first end affixed and extending from a mount and a free end defining a bearing surface, as disclosed by Trunz, would also include an inorganic adhesive composition disposed on this bearing surface to secure the optical element to the mount in order to hold the optical element to the mount, as disclosed by DeRosa.
One with ordinary skill would consider an inorganic adhesive composition advantageous because the precursors are stable at ambient conditions for at least a month without significant degradation and, in some embodiments, the inorganic adhesive compositions have a coefficient of thermal expansion (CTE) may be similar to the CTE of the bearing surface of the metallic flexible members (paragraphs [0028] [0036]).
Regarding Claim 2, the combination of Trunz and DeRosa disclose all the limitations of claim 1 and DeRosa further discloses that a precursor to the inorganic adhesive composition comprises a metallic salt or a metal ion containing compound in a solvent (paragraph [0024]).
Regarding Claim 3, the combination of Trunz and DeRosa disclose all the limitations of claim 2 and DeRosa further discloses that the metallic salt or metal ion containing compound comprises zinc, tin, aluminum, indium, iron, tungsten, titanium, zirconium, silicon, silicon nitride, boron, boron nitride, copper, silver, yttrium, rare earth ions, or combinations thereof (paragraph [0024]).
Regarding Claim 4, the combination of Trunz and DeRosa disclose all the limitations of claim 3 and DeRosa further discloses that the metallic salt or metal ion containing compound comprises zirconium, yttrium, or both zirconium and yttrium (paragraph [0024]).
Regarding Claim 5, the combination of Trunz and DeRosa disclose all the limitations of claim 2 and DeRosa further discloses that the precursor to the inorganic adhesive composition comprises a polar aprotic solvent (paragraph [0025]).
Regarding Claim 6, the combination of Trunz and DeRosa disclose all the limitations of claim 5 and DeRosa further discloses that the polar aprotic solvents comprises dichloromethane (DCM), tetrahydrofuran (THF), ethyl acetate, acetone, dimethylformamide (DMF), acetonitrile, and/or dimethylsulfozide (DMSO) (Table 1, paragraph [0026]).
Regarding Claims 7 and 8, the combination of Trunz and DeRosa disclose all the limitations of claim 1 and 7, respectively, and DeRosa further discloses that the inorganic adhesive composition comprises a metal oxide (claim 7) and that the metal oxide comprise a metal oxide of zirconium or yttrium (claim 8) (paragraph [0022] inorganic adhesive composition may comprise one or more metal oxides such as zirconium …yttrium).
Regarding Claim 9, the combination of Trunz and DeRosa disclose all the limitations of claim 1 and DeRosa further discloses that the inorganic adhesive composition comprises a ceramic material (paragraph [0022]).
Regarding Claims 10 and 11, the combination of Trunz and DeRosa disclose all the limitations of claim 1 and 10, respectively, and DeRosa further discloses that an adhesion promoting coating is disposed between the bearing surface and the inorganic adhesive composition (claim 10) (paragraph [0035] fiber or ferrule or both – which define the bearing surface of Trunz – may be coated with the adhesion promoter prior to the deposition of the inorganic adhesive composition) and DeRosa further discloses that the adhesion promoting coating comprises titanates, zirconates, and/or silanes (claim 11) (paragraph [0035]).
Regarding Claims 12 and 13, the combination of Trunz and DeRosa disclose all the limitations of claim 10 and 12, respectively, and DeRosa further discloses that
the inorganic adhesive composition comprises, when disposed on the bearing surface (claim 12) (paragraph [0035]), a first surface and a second surface opposite of the first surface (Figs, 1, 2 paragraph [0014] fiber receiving passage – 30 defined inner surface of the ferrule – 12 contacted with an inorganic adhesive composition – 40 to secure an optical fiber disposed within the ferrule – 12 and in contact with inner surface of the ferrule – 12 and stub optical fiber – 14 where the first surface is the defined inner surface of the ferrule – 12 and the optical fiber surface is the second surface),
a first layer of the adhesion promoting coating is disposed between the bearing surface and the first surface of the inorganic adhesive composition, and
a second layer of the adhesion promoting coating is disposed on the second surface of the inorganic adhesive composition (paragraph [0035] where the coating of both the fiber and ferrule is an embodiment – fiber or ferrule or both, by be coated with the adhesion promoter onto the optical fiber/into a fiber-receiving passage defining an inner surface of the ferrule) and DeRosa further discloses that both the first layer and the second layer of the adhesion promoting coating comprise titanates, zirconates, and/or silanes (claim 13) (paragraph [0035]).
Regarding Claims 14, 15 and 16 the combination of Trunz and DeRosa disclose all the limitations of claim 1 and 14, respectively, and DeRosa further discloses that the optical element is secured to the mount with the inorganic adhesive composition and that the optical element directly contacts the inorganic adhesive composition (claims 14, 15) (Figs. 1, 2 paragraph [0014] fiber receiving passage – 30 defined inner surface of the ferrule – 12 contacted with an inorganic adhesive composition – 40 to secure an optical fiber disposed within the ferrule – 12 and in contact with inner surface of the ferrule – 12 and stub optical fiber – 14) and DeRosa further discloses that the optical element directly contacts an adhesion promoting coating comprised of titanates, zirconates, and/or silanes (claim 16) (paragraph [0035]).
Regarding Claim 17, the combination of Trunz and DeRosa disclose all the limitations of claim 1 and DeRosa further discloses that the inorganic adhesive composition comprises a metal oxide (paragraph [0022]), and
an adhesion promoting coating is disposed between the bearing surface and the inorganic adhesive composition, the adhesion promoting coating being comprised of titanates, zirconates, and/or silanes (paragraph [0035] fiber or ferrule or both – which define the bearing surface of Trunz – may be coated with the adhesion promoter prior to the deposition of the inorganic adhesive composition) and DeRosa further discloses that the adhesion promoting coating comprises titanates, zirconates, and/or silanes (paragraph [0035]).
Regarding Claim 18, the combination of Trunz and DeRosa disclose all the limitations of claim 1 and Trunz further discloses that the plurality of flexible metal members each have an inverted U-shape profile (See Fig. 1 paragraph [0017] tabs have curved geometric shape after connection with the lens).
Regarding Claim 20, the combination of Trunz and DeRosa disclose all the limitations of claim 1 and Trunz further discloses that the mount has a ring-shape (Fig. 2, 4 paragraph [0010] closed membrane ring).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Trunz (EP 1 026 532 A1) IDS 09/18/2023 with machine translation and DeRosa (US 2015/0093080 A1) as applied to claim 1 above, and further in view of Watson (EP 1 081 521 A2) IDS 09/18/2023.
Regarding Claim 19, the combination of Trunz and DeRosa disclose all the limitations of claim 1 but does not disclose that each flexible metal member comprises a cantilever member.
Watson discloses in an invention relating to a lens mounting structure with flexible metal members (Figs. 3, 9A paragraphs [0020] [0033] cell body – 24 includes a plurality of soft mount cutouts – 36 with a plurality of soft mounts or supports – 38 which include a resilient tongue or blade spring – 42; which are formed from a flat material e.g. metal) whereby each flexible metal member comprises a cantilever member (Figs. 3, 4, 9A paragraphs [0021] [0033] set of nine (9) cantilever blades – 42 which are highly compliant)
with a first portion and a second portion extending between the first end and the free end, the first portion extending in a first direction, the second portion extending in a second direction such that the first direction is different from the second direction, and a curved portion of the flexible metal member connecting the first portion with the second portion (Figs. 3, 3A, 4 paragraphs [0020] [0021] when blades are deformed a tip portion – 50 of the blade – 42 is parallel to the surface of the ridge – 12 on the lens – 10 plurality of nine (9) cantilever blades – 42 compliant in the optical axis direction and are inherently curved when deformed by the lens).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention, to have modified the combination of Trunz and DeRosa with the teachings of Watson whereby each of the flexible metal members comprise a cantilever member, as taught by Watson, with a first portion extending in a first direction and a second portion extending in a second direction such that the first and second directions are different with a curved portion connecting the first and second portions, as taught by Watson.
This would be considered as an improvement and advantageous by the skilled artisan because these flexible metal member comprising cantilever members or blades are, as a result of the above recited configuration, compliant in the optical axis direction and, therefore, do not overconstrain the lens positioning due to the cantilever members providing more distributed support of the lens to counter any distortion due to gravity and, additionally, this compliance creates low sensitivity of the supporting force to mechanical machining tolerances (paragraph [0021]).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE K. SWIER/Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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