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 .
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.
DETAILED ACTION
This is an AIA application filed May 10, 2023.
This application is also a national stage application filed under 35 U.S.C. § 371 for PCT international application number PCT/US2021/072415 filed November 16, 2021 and published April 27, 2023 as PCT publication no. WO 2022115829 A9.
The earliest effective filing date of this AIA application is seen as November 26, 2020, the date of the earliest priority application (United States provisional patent application serial number 63/118,650) for any claims which are fully supported under 35 U.S.C. 112(a) by the provisional application.
The same is similarly true for the following United States provisional, non-provisional, or international PCT patent application(s):
United States patent application serial number 63/261,468 filed September 22, 2021; and
United States patent application serial number 63/186,184 filed May 10, 2021.
The effective filing date of this AIA application is seen as May 10, 2023, the actual filing date, for any claims that are not fully supported by the foregoing application(s).
The present application is also related to the applications giving rise to the following patent publication(s) (please note that redundancies are generally present):
Office
Application
App. Date
Pub. #
Pub. Date
JP
2023532240
11/16/2021
JP 2023552130 A
JP 7600399 B2
12/14/2023
12/16/2024
KR
20237021438
11/16/2021
KR 20230124930 A
08/28/2023
EP
21899252
11/16/2021
EP 4252047 A1
EP 4252047 A4
10/04/2023
10/23/2024
CN
202180075965
11/16/2021
CN 116569085 A
08/08/2023
US
PCT/US21/72415
11/16/2021
WO 2022115829 A1
WO 2022115829 A9
06/02/2022
04/27/2023
The claims originally filed May 10, 2023 are entered, currently outstanding, and subject to examination.
This action is in response to the information disclosure statement/IDS filing of October 22, 2024.
Claims 1-15 are currently pending and outstanding.
No claims have been amended, cancelled, withdrawn, or added.
Claims 1-15 are currently outstanding and subject to examination.
This is a non-final action and is the first action on the merits.
Allowable subject matter is not indicated below.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
Applicant must provide the same terminology/vocabulary/phrasing in the specification that is present in the claims. At least one term or phrase is missing from the specification present in the claim(s).
Correction is required as the following amendment(s)/text in the claims find(s) no antecedent in the specification.
Claim(s)
Antecedent Missing For
3
"wavelength of 350 to 2,500 nm"
14
"light reflective material"
"light absorbing material"
15
"optical isolation channel bottom"
As set forth in MPEP § 608.01(o):
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually the terminology of the original claims follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
. . . While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure [sic, ensure] certainty in construing the claims in the light of the specification, Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm’r Pat. 1901). See 37 CFR 1.75 and MPEP §§ 608.01(i), § 1302.01.
Consequently, identity between terms and phrases in the specification and claims is preferred and is seen as mandatory to ensure “certainty in construing the claims in the light of the specification”.
Further, under 37 C.F.R. § 1.121(e) regarding disclosure consistency in making amendments:
The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
Examiner considers direct correspondence between the specification and the claims to be important with respect to determining the scope of the claims.
Examiner strongly urges Applicant to review its claims with a fine-toothed comb and scrutinize them for any discrepancies between claim language and language that is used in the written description/specification as originally filed. Applicant is responsible for what it drafts. Discrepancies may be interpreted to Applicant’s detriment.
Claim Objections
The following claims are objected to because of the indicated informality/ies:
Claim(s)
Antecedent(s) Missing For
1
"the material"
"the light conducting conduits"
"the outlet face"
4
"the range of 10 to 150 dB"
6, 7
"the light conducting conduits"
8, 9
"the optical isolation channels"
"the material"
11, 12
"the optical isolation channels"
The claims listed above have the indicated terms lacking antecedent basis in the claims. MPEP § 2173.05(e). Appropriate correction is required.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s).
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 and 3-15 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 20150292948 of Goldring et al. (Goldring, cited by Applicant).
With respect to claim 1, Goldring discloses a light isolating array (Figs. 5-7, ¶ 155, "In many embodiments, each filter defines an optical channel of the spectrometer. The optical channel can extend from the filer through an aperture and a lens of the array to a region of the sensor array. The plurality of parallel optical channels can provide increased resolution with decreased optical path length."), comprising:
a transparent material having a thickness, a light inlet face, a light outlet face, a side face (lens array 174, Fig. 7, ¶ 166),
a plurality of light conducting conduits (channels 177, ¶ 159, Fig. 5, "The plurality of channels 177 may define optical channels of the spectrometer.") and a plurality of optical isolation channels (defined by non-transmissive material of aperture array 172, support array 176, and support structures 179 and aligned with each channel of the support array 176 in order to inhibit cross talk; Figs. 5-7; ¶¶ 159, 166; ¶ 156, "The spectrometer module can comprise an aperture array 172. The aperture array can prevent cross talk between the filters. The aperture array comprises a plurality of apertures formed in a non-optically transmissive material."), wherein,
(i) the plurality of light conducting conduits have a horizontal light inlet surface that is substantially parallel to the light inlet face,
a horizontal light outlet surface that is substantially parallel to the light outlet face, and
a vertical side wall that is substantially parallel to the side face (Fig. 5, the plurality of optical channels 177 comprise each lens of the lens array 174 wherein a horizontal light inlet surface of 177 is parallel to a light inlet face of each aligned lens within the array 174, a horizontal light outlet surface of 177 is parallel to a light outlet face of each aligned lens within the array 174, and a vertical side wall of 177 is parallel to sides of each aligned lens within the array 174; ¶¶ 159, 160), and
(ii) the plurality of optical isolation channels are openings in the material between the light conducting conduits and extend from the outlet face through about 5% to 100% of the thickness (aperture array 172 and support array 176 include openings in the material between each light conducting lens of the lens array 174, and aperture array 172 extends from an outlet face through 100% of at least one thickness in figure 7; additionally support array 176 extends from another face between each lens of lens array 174 through less than 100% of another thickness direction at a height calibrated to the focal length of each lens; Fig. 7; ¶ 160); and
(b) an optical isolation material applied to the vertical side wall of the plurality of light conducting conduits (¶ 160, "In some embodiments, support array 176 is black, or comprises a black coating to further reduce cross talk between channels.", "In many embodiments, the support array [176] comprises an absorbing and/or diffusive material to reduce stray light, for example."),
wherein the light isolating array transmits light through each light conducting conduit from the horizontal light inlet surface to the horizontal light outlet surface while the optical isolation material substantially prevents the light from traveling between the light conducting conduits (¶ 12, "In many embodiments, the spectrometer further comprises: … the support array comprising a plurality of light transmitting channels defined with a non-optically transmissive material, wherein the plurality of isolated optical paths extends from the plurality of lenses through the plurality of channels to the plurality of regions in order to isolate the plurality of channels.").
With respect to claim 3, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
the light conducting conduits transmit at least 90% of light at a wavelength of 350 to 2,500 nm.
¶ 108, "The detector can be sensitive to one or more of ultraviolet wavelengths of light, visible wavelengths of light, or infrared wavelengths of light."
For product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties and/or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01(I).
Consequently, because Goldring as set forth above as set forth above provides the claimed structure of claim 1, the combination is seen as also providing the same claimed properties or functions of claim 3.
Unsupported features are seen to directly result from the supported/claimed structures. No authority is known by which unsupported or “naked” functions/characteristics/features can be claimed and subject to exclusive protection.
Below, this analysis is referred to as “same product/same features”.
With respect to claim 4, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
a damping of light leakage from each light conducting conduit is in the range of 10 to 150 db.
Same product/same features.
With respect to claim 5, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
the light isolating array comprises about 0.25 to about 5 light conducting conduits per square millimeter of the light isolating array.
Same product/same features.
With respect to claim 6, Goldring as set forth above discloses the transparent array of claim 1, but not one wherein
the light conducting conduits have a height of about 100 μm to about 50 mm and a diameter of about 10 μm to about 10 mm.
Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP § 2144.04(IV)(A).
As the scope of claim 6 departs from that of claim 1 only with regards to the relative dimensions, the claimed device is not patentably distinct from the prior art device of Goldring as set forth above.
Any height providing optical integrity and signal preservation is seen to be available for the Goldring device.
Herein, this analysis is referred to as “relative dimensions/size”.
With respect to claim 7, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
aspect ratio of the light conducting conduits is about 30: 1 to about 5:1.
Same product/same features.
With respect to claim 8, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
the optical isolation channels extend through 100% of the thickness of the material.
Fig. 7, aperture array 172 extends through 100% of at least one thickness of spectrometer module 160.
With respect to claim 9, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
the optical isolation channels extend through about 80% to 100% or less of the thickness of the material.
Fig. 7, aperture array 172 extends through 100% of at least one thickness of spectrometer module 160.
With respect to claim 10, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
the horizontal light outlet surface of each light conducting conduit is coplanar with the light outlet face.
Fig. 5, ¶¶ 159, 160, stopper mounting 178 limits movement and fixes the position of lens array 174 in relation to the sensor array/each region of the plurality of regions of the image sensor 190, wherein horizontal light outlet surfaces of optical channels 177 that face the image sensors 190 are coplanar in alignment along the stopper mounting 178.
With respect to claim 11, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
the optical isolation channels do not extend completely from the vertical side wall of one light conducting conduit to the vertical side wall of another light conducting conduit.
Fig. 7, the farthest distal end portions of aperture array 172 beyond the distal row of apertures 194 do not extend from a vertical side wall of that row to another row of optical channels.
With respect to claim 12, Goldring as set forth above discloses the transparent array of claim 1, but not one wherein
the optical isolation channels have a diameter of about 0.01 to about 10 mm,
a width of about 0.001 to about 5 mm, and
a depth of about 0.01 to about 30 mm.
Relative dimensions/size.
With respect to claim 13, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
the optical isolation material comprises an opaque material, an absorptive material, and/or a reflective material.
¶ 160, support array 176 is constructed from an opaque plastic, is black or comprises a black coating, and comprises an absorbing and/or diffusive material to reduce stray light.
With respect to claim 14, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
the optical isolation material comprises a light absorbing material applied on a light reflective material.
¶ 160, support array 176 comprises a black coating on a diffusive material to reduce stray light, i.e., directed reflections.
With respect to claim 15, Goldring as set forth above discloses the transparent array of claim 1, including one wherein
the optical isolation material is also applied to an optical isolation channel bottom.
Fig. 7, ¶ 160, support array 176 is constructed from an opaque plastic, is black, or comprises a black coating, and is seen to comprise a bottom of spectrometer module 160.
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims, the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over Goldring as set forth above.
With respect to claim 2, Goldring as set forth above discloses the transparent array of claim 1, but not one wherein
the transparent material is comprised of single glass material or a single polymer material.
The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.). MPEP § 2144.07.
Consequently, the recitation of specific materials is seen as obvious, particularly with respect to transparent materials used to preserve and protect optical signals.
Conclusion
Applicant’s publication US 20240012197 A1 published January 11, 2024 is cited.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references have elements related to Applicant’s disclosure and/or claims or are otherwise associated with the other cited references, particularly with respect to optic isolation systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JORDAN whose telephone number is (571) 270-1571. The examiner can normally be reached most days 1000-1800 PACIFIC TIME ZONE (messages are returned).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas (Tom) HOLLWEG can be reached at (571) 270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
September 29, 2025