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 .
Disposition of Claims
Claims 1-3, 8-18, 20-24 & 47 are pending and rejected.
Claims 4-7, 19, 25-46 & 48-50 are canceled.
Claim Objections
Claims 1 & 24 are objected to because of the following informalities:
Regarding Claim 1, Claim 1 recites the limitation “propagating along an axial direction” on Line 8. Claim 1 further recites the limitation “redirects the light from an axial direction” on Lines 13-14. Examiner kindly requests Applicant amend “redirects the light from an axial direction” to read “redirects the light from the axial direction” to provide consistent claim language throughout.
Regarding Claim 24, Claim 24 recites the limitation “propagating along an axial direction” on Line 8. Claim 15 further recites the limitation “redirects the light from an axial direction” on Lines 14-15. Examiner kindly requests Applicant amend “redirects the light from an axial direction” to read “redirects the light from the axial direction” to provide consistent claim language throughout.
Claim Interpretation
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.
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.
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 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 limitation is:
“a focusing component/structure… focus[ing] the routed light” in Claims 1 & 24, as described on Page 5, Lines 21-27 of Applicant’s specification.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is 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 limitation 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 to avoid it 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 recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
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.
Claims 9 & 22-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 9, Claim 9 recites the limitation “wherein all the optical components in the optical routing structure are flat optical components” on Lines 1-2. The metes and bounds of this limitation are indefinite because, as previously recited, the optical routing structure only has one optical component —a flat optical component supported by the substrate (see Lines 10-11 of Claim 1) and thus it is unclear if the optical routing structure further comprises additional optical components. For the purpose of examination, “wherein all the optical components in the optical routing structure are flat optical components” is being interpreted as “wherein all components in the optical routing structure are flat optical components”.
Regarding Claim 22, Claim 22 recites the limitation “a vertical stack of at least two flat optical components” on Line 3. It is unclear whether these “at least two flat optical components” are the same as the “flat optical component [of the optical routing structure]” previously recited on Line 10 of Claim 1, or separate, different flat optical components. For the purpose of examination, the “at least two flat optical components” are interpreted to include the previously recited “flat optical component [of the optical routing structure]”.
Regarding Claim 23, Claim 23 is rejected as being dependent upon claims previously rejected under 35 U.S.C. § 112(b).
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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 1-3, 8-17, 21-24 & 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagao et al. (hereinafter "Nagao") (US 2016/0265747).
Regarding Claim 1, Nagao discloses an endoscope system (Fig. 47, 505; [0459]) comprising:
an insertion tube (Fig. 47, 510; [0460]) having a distal tip (Fig. 47, 510a; [0460]);
an optical fiber running along the insertion tube (Fig. 47, 585; [0466]); and
an optical system (Figs. 47 & 17B, 310 wherein 310 is 100; [0451] & [0465]) located at the distal tip (see Fig. 48) and receiving light from the optical fiber ([0466]), the optical system comprising:
a substrate (Fig. 17B, 140; [0366]) having a flat surface (see Fig. 17B)
an input aperture (Figs. 17B & 48, a back face of 140; [0466]) configured to receive the light from the optical fiber ([0466]), the received light propagating along an axial direction of the substrate (see Fig. 17B);
an optical routing structure (Fig. 17B, a meta-lens (i.e., a lens with micro-periodic structures) formed by 110 and 120; [0366]) comprising a flat optical component (110 and 120 of the meta-lens are both substantially flat (i.e., not curved); see Fig. 17B) supported by the flat surface of the substrate (see Fig. 17B); and
a focusing component (the meta-lens —see Applicant’s Claim 2 wherein the meta-lens is both the focusing component and the flat optical component of the optical routing structure; [0366]),
wherein the optical routing structure routes light from the input to the focusing component ([0409] & [0410]) and also redirects the light from the axial direction to a transverse direction ([0375]), and
the focusing component focuses the routed light to a focal spot located to a side of the optical system ([0366]).
Regarding Claim 2, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the optical system further comprises:
a lens selected from a group consisting of a photonic integrated circuit PIC lens, a diffractive lens and a meta-lens (Fig. 17B, the meta-lens is formed by 110 and 120; [0366]), wherein the lens is supported by the flat surface of the substrate (see Fig. 17B), and the lens functions as both the focusing component and as the flat optical component of the optical routing structure ([0366]).
Regarding Claim 3, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the optical routing structure comprises:
a first grating selected from a group consisting of a PIC grating, a surface relief grating and a meta-grating ([0317]), the first grating supported by the flat surface of the substrate (see Fig. 17B); and
a second grating supported by the substrate ([0319]);
wherein the first grating redirects the light from the axial direction to an oblique direction through the substrate to the second grating, and the second grating redirects the light from the oblique direction to the transverse direction ([0317] – [0319]).
Regarding Claim 8, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the light travels by total internal reflection through the substrate ([0336]).
Regarding Claim 9, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein all of the optical components in the optical routing structure are flat optical components (110 and 120 of the meta-lens are both substantially flat (i.e., not curved); see Fig. 17B).
Regarding Claim 10, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the optical routing structure does not contain a prism or turning mirror (Fig. 17B, neither 110 nor 120 of the meta-lens are a prism or turning mirror; [0366]).
Regarding Claim 11, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein, within the optical routing structure, the light is redirected only by PIC, diffractive and/or meta optical components (Fig. 17B, the meta-lens is formed by 110 and 120; [0366]).
Regarding Claim 12, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein a maximum transverse dimension of the optical system does not exceed 3 mm ([0379]).
Regarding Claim 13, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the flat optical component has a thickness of not more than 200 µm ([0379]).
Regarding Claim 14, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the focusing component comprises a flat diffractive lens (Fig. 17B, 120 of meta-lens diffracts; [0315]).
Regarding Claim 15, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the focusing component comprises a refractive lens ([0358]).
Regarding Claim 16, Nagao discloses the endoscope system of Claim 1. Nagao further discloses (Fig. 17B, 120 of the meta-lens refracts light and refracted light has a focal point; [0358]).
Regarding Claim 17, Nagao discloses the endoscope system of Claim 16. Nagao further discloses wherein the focusing component is selected from a group consisting of a polarization dependent lens (Fig. 17B, 120 of the meta-lens polarizes; [0358]), a dispersion engineered tens, and an axicon.
Regarding Claim 21, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the light has a wavelength in a range of 800-1500 nm (Fig. 17B, the light is infrared light; [0305]).
Regarding Claim 22, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the optical system further comprises a vertical stack of at least two flat optical components wherein the light propagates out of the substrate through the vertical stack to the focal spot (110 and 120 of the meta-lens are both substantially flat (i.e., not curved); see Fig. 17B).
Regarding Claim 23, Nagao discloses the endoscope system of Claim 23. Nagao further discloses wherein the vertical stack includes at least two of: a color filter, a partial reflector (Fig. 17B, 110 of the meta-lens reflects; [0369]), a waveplate, a polarizer (Fig. 17B, 120 of the meta-lens polarizes; [0358]), a hologram, a thin-film, and a liquid crystal layer.
Regarding Claim 24, Nagao discloses an endoscope system (Fig. 47, 505; [0459]) comprising:
an insertion tube (Fig. 47, 510; [0460]) having a distal tip (Fig. 47, 510a; [0460]);
an optical fiber running along the insertion tube (Fig. 47, 585; [0466]); and
an optical system (Figs. 47 & 17B, 310 wherein 310 is 100; [0451] & [0465]) located at the distal tip (see Fig. 48) and receiving light from the optical fiber ([0466]), the optical system comprising:
a substrate (Fig. 33, 140; [0366]) having at least one flat surface (see Fig. 33);
an input aperture (Figs. 33 & 48, a back face of 140; [0466]) configured to receive the light from the optical fiber ([0466]), the received light propagating along an axial direction of the substrate (see Fig. 33);
an optical routing structure (Fig. 33, a meta-lens (i.e., a lens with micro-periodic structures) formed by 110, 120r, 120g, 120b; [0410]) comprising at least one flat optical component (110, 120r, 120g and 120b are substantially flat (i.e., not curved); see Fig. 33) supported by the flat surface of the substrate (see Fig. 33);
a focusing structure (the meta-lens —see Applicant’s Claim 2 wherein the meta-lens is both the focusing component and the flat optical component of the optical routing structure; [0410]) comprising at least one focusing component (Fig. 33, 120r, 120g, and 120b; [0410]); and
at least two separated exit windows (Fig. 33, a first 130 of R1, a second 130 of R2 and a third 130 of R3; [0410]);
wherein the optical routing structure routes light from the input aperture to each of the exit windows ([0409] & [0410]) and also redirects the light from an axial direction to transverse directions ([0375]), and
the focusing structure focuses the routed light to focal spots corresponding to the exit windows, and the focal spots are located to a side of the optical system ([0366] & [0410]).
Regarding Claim 47, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the optical system is integrated with a biopsy needle (Fig. 49, 594; [0471]).
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.
Claims 18 & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nagao et al. (hereinafter "Nagao") (US 2016/0265747) in view of Paquet et al. (hereinafter "Paquet") (US 2020/0150347).
Regarding Claims 18 & 20, Nagao discloses the endoscope system of Claim 1. Nagao further discloses wherein the optical system further comprises:
a slab waveguide supported by the substrate (Fig. 30, 110s; [0327]), and
wherein the light from the optical fiber is coupled through the input aperture into the slab waveguide ([0327]).
Nagao fails to explicitly disclose wherein the slab waveguide includes a tapered section for mode matching between the optical fiber and the slab waveguide; and wherein the slab waveguide is a silicon on insulator SOI waveguide.
However, Paquet teaches an endoscope system (Fig. 24A, 210; [0110]) comprising:
an insertion tube having a distal tip (see Fig. 24A):
an optical fiber running along the insertion tube (Figs. 1A & 24A, 100; [0059]); and
an optical system (Fig. 1A, 102; [0059]), comprising:
a substrate (Fig. 1A, 104; [0060]) having a flat surface (see Fig. 1A);
an input aperture (Figs. 1A & 1B, 130; [0067]) configured to receive the light from the optical fiber ([0067]); and
a slab waveguide (Fig. 1A, 132; [0069]) supported by the substrate (see Fig. 1A), wherein the light from the optical fiber is coupled through the input aperture into the slab waveguide ([0069]);
wherein the slab waveguide includes a tapered section (132 tapers; see Fig. 1A) for mode matching between the optical fiber and the slab waveguide ([0074]); and
wherein the slab waveguide is a silicon on insulator SOI waveguide ([0060]).
The advantage of the slab waveguide is to improve coupling efficiency between the optical fiber and the substrate (Paquet; [0075]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the optical system as disclosed by Nagao, with to include the slab waveguide as taught by Paquet, to improve coupling efficiency between the optical fiber and the substrate (Paquet; [0075]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2024/0041328; US 2022/0146749; US 2019/0212761; US 2019/0006753; US 2018/0303326; US 2018/0140172; US 2018/0017806; US 2016/0143517; US 2007/0191682 and U.S. 5,980,454.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
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, MICHAEL CAREY can be reached at (571)270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795