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 Pre-amendment
2. The present office action is made in response to the Pre-amendment filed on 07/07/2023. It is noted that in the Pre-amendment, applicant has made changes to the abstract, the specification and the claims. There is not any change to be made to the drawings.
A) Regarding to the abstract, applicant has submitted a separated sheet contained a new abstract;
B) Regarding the specification, applicant has added a new paragraph into page 1 of the specification; and
C) Regarding to the claims, applicant has amended claims 1-15. There is not any claim being added/canceled into/from the application. The pending claims are claims 1-15.
Election/Restrictions
3. In response to the Election/Restriction mailed to applicant on 08/14/2025, applicant has made an election with traverse of Invention I in the reply filed on 10/09/2025. The traversal is on the ground(s) that: “pending claims share a common inventive concept … fourth optical path” (Election in page 5), and the reference WO 2007/044582 does not disclose the common inventive concept, see Election in pages 5-6.
While applicant’s arguments, which have been fully considered, are not persuasive; however, the observation system as recited in the independent claim 1 and the observation method as recited in the independent claim 13 each is allowable with respect to the prior art, thus the Election/Restriction of 08/14/2025 is now withdraw and all pending claims 1-15 are examined in the present office action.
4. Claims 1 and 13 each is allowable. The restriction requirement between Inventions I and II, as set forth in the Office action mailed on 08/14/2025, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 08/14/2025 is now withdrawn. Claims 7-9 and 14, directed to Invention II are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or non-statutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Priority
5. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
6. The article thereof “Written Opinion … Rijswijk, Netherlands” listed in the section of NON-PATENT LITERATURE DOCUMENTS of the information disclosure statement filed on 07/07/2023 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because it was written in a foreign language. It is noted that applicant has not provided an English translation or an explanation of the mentioned article. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
7. The listing of reference(s) in the specification. i.e., the WO201218812, WO201216794 A1, WO200744582 A1, WO200569056 A2, WO2003104877, and US Patent No. 6560029 in pages 1-2, is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
8. The drawings contain five sheets of figures 1-5 were received on 07/07/2023. These drawings are approved by the examiner.
Specification
9. The lengthy specification which was amended by the pre-amendment of 07/07/2023 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 Objections
10. Claim 11 is objected to because of the following informality. Appropriate correction is required.
In claim 11: on line 2, “emit third optical radiation” should be changed to --emit a third optical radiation--. The reason for the objection and the suggestion is that there is a missing article “a” for the third optical radiation. See claim 1 on each of lines 2 and 4 for the use of an article in each of elements claimed,
Claim Interpretation
11. 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.
12. 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.
13. 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) “an optical assembly” as recited in each of claims 2-6;
b) “an optical system” as recited in each of claims 2 and 3;
c) “a one-piece assembly” as recited in claim 4;
d) “an image processing unit” as recited in claim 7; and
e) “an electronic control unit” as recited in each of claims 8 and 12.
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 Rejections - 35 USC § 112
14. 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.
15. Claims 4, 11-12 and 15 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 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the optical assembly” (line 1) lacks a proper antecedent basis. Applicant should note that claim 2 or claim 3, not claim 1, recites an optical assembly (see line 1 of each of claims 2-3). Should claim 4 be amended to depend upon claim 2 or claim 3?
b) Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the infrared range” (line 2) lacks a proper antecedent basis. Should the term “the” in the mentioned feature be changed to --a--?
c) Claim 12 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.
c1) the feature thereof “the pulsed type” (line 2) lacks a proper antecedent basis. Should the term “the” in the mentioned feature be changed to --a--? and
c2) the feature thereof “an electronic control unit … optical radiation” (lines 3-5) makes the claim indefinite because it is unclear about the so-called “a distance to the scene” recited in the mentioned feature. In other words, how “the distance” is measured/calculated? Should “a distance to the scene” be changed to --a distance from the system to the scene-- or other technical terms to make clear the feature claimed?
d) Claim 15 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 reason as set forth in element b) above.
Allowable Subject Matter
16. Claims 1-3, 5-10 and 13-14 are allowed.
17. Claims 4, 11-12 and 15 are rejected for the reasons set forth in the section of
Claim Rejections - 35 USC § 112 but will be allowed if the claims are amended to overcome the rejections of those claims under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
18. The following is a statement of reasons for the indication of allowable subject matter:
The observation system as recited in the independent claim 1 and the observation method as recited in the independent claim 13 each is allowable with respect to the prior art, in particular, the US Publication No. 2007/0228259, the WO 2007/044582 and the French reference No. 3 048 800 by the limitations regarding the four optical paths and their arrangements as recited in the features thereof “a first optical path … the four optical path” (claim 1 on lines 1-10) or the features thereof “a first optical path … the third optical path” (claim 13 on lines 1-8). Such a structure with the arrangements of the optical paths as claimed is not disclosed in the prior art.
Conclusion
19. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
20. The US Patent No. 7,813,037 and the US Publication No. 2024/0248320 are cited as of interest in that:
a) the US Patent discloses an observation system having four optical paths and a display; however, the arrangement of the optical paths and the function of the display do not meet the function of the display and the arrangements of four optical paths as recited in each of claims 1 and 13 of the present application; and
b) the US Publication directed to the copending application serial No. 18/260,747 discloses an observation system having plurality of optical paths; however, the observation system recited in the claims of the copending application does not recite the structure as recited in each of claims 1 and 13 of the present application.
21. 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