DETAILED ACTION
Information Disclosure Statement
The two information disclosure statement(s) filed on various dates is/are in compliance with the provisions of 37 CFR 1.97 and is/are being considered by the Examiner.
Priority
Acknowledgment is made of applicant’s claim for priority for U.S. National Stage under 35 U.S.C. 371 filed on 01/12/2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55(f)(2).
Drawings
The drawings are objected to because: The drawings do not satisfy the requirement of satisfactory reproduction characteristics. As stated in 37 CFR 1.84(l): All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
In the present case, FIGS. 1-3 and 6-21 contains lines, numbers, and symbols which are not dense and dark, nor uniformly thick and well-defined, thereby rendering the axes, units, and labels within FIGS. 1-3 and 6-21 illegible/unascertainable. It appears that FIGS. 1-21, as originally filed, appear to be a scan or photocopy of a document, rather than an original document itself.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-12 of copending Application No. 18/271,838 of Takeo et al. (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the elements of Claims 1-8 of the present application is met by corresponding Claims 1-12 of the copending application. Instant claim 1 is fully encompassed by reference claim 1 which requires a method for designing a mirror comprising: , the method comprising: defining an optical axis of an incoming beam to the mirror as a zi axis, and defining a cross section orthogonal to the zi axis as an x1y1 plane; defining an optical axis of an outgoing beam from the mirror as a z2 axis, and defining a cross section orthogonal to the z2 axis as an x2y2 plane; setting the x1 axis and the x2 axis to be parallel to a sagittal direction of the reflecting surface; causing incoming beams to have a light source for light collection in the sagittal direction at a position displaced by LI, in a zi-axis direction from an intersection point Mo on the z1 axis on the reflecting surface between the z1 axis and the z2 axis, and a light source for light collection in a meridional direction at a position displaced by Lim in the zi-axis direction from the intersection point Mo on the zi axis; causing outgoing beams to be collected at a position displaced by L2s in a z2-axis direction from the intersection point Mo on the z2 axis for light collection in a sagittal direction, and to be collected at a position displaced by L2m in the z2-axis direction from the intersection point Mo on the z2 axis for light collection in a meridional direction; causing all incoming light rays passing through the mirror to pass through both a sagittal light source ray and a meridional light source ray, the sagittal light source ray passing through a position of the light source in the light collection in the sagittal direction and extending in a direction orthogonal to both the xi axis and the zi axis, the meridional light source ray passing through a position of the light source in light collection in the meridional direction and extending in a direction orthogonal to both the y1 axis and the z1 axis; causing all outgoing light rays emitted from the mirror to pass through both a sagittal collected light ray and a meridional collected light ray, the sagittal collected light ray passing through a collecting position in the light collection in the sagittal direction and extending in a direction orthogonal to both the x2 axis and the z2 axis, the meridional collected light ray passing through a collecting position in the light collection in the meridional direction and extending in a direction orthogonal to both the y2 axis and the z2 axis; representing any point on the reflecting surface of the mirror by M, expressing coordinates of an intersection point between the sagittal light source ray and an incoming light ray to the M point and an intersection point between the meridional light source ray and the incoming light ray to the M point by using the Lis and the Lim, and expressing coordinates of an intersection point between an outgoing light ray from the M point and the sagittal collected light ray and an intersection point between the outgoing light ray from the M point and the meridional collected light ray by using the L2s and the L2m; and designing the mirror by using design formulas of the reflecting surface derived based on the coordinates and a condition that an optical path length from a light source position to a light collection position is constant with respect to any point on the reflecting surface for both the light collection in the sagittal direction and the light collection in the meridional direction. Additionally, instant claim 2 is fully encompassed by reference claim 2, instant claim 3 is fully encompassed by reference claim 3, instant claim 4 is fully encompassed by reference claim 5, instant claim 5 is fully encompassed by reference claim 6, instant claim 6 is fully encompassed by reference claim 8, instant claim 7 is fully encompassed by reference claim 9, and instant claim 8 is fully encompassed by reference claim 12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented (as of 10/18/2025).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea in the form of mathematical calculations combined with mental processes, without significantly more. Claims 1-5 recite(s) a method of characterizing properties of light beams such as incoming and outgoing light beams, wherein the light beam(s) characterization is inputted as parameter(s) into a reflecting surface design formula. Furthermore, the method encompasses defining coordinate axes wherein a plurality of intersection points and displacements are expressed, followed by recitation of mathematical conditions correlating the optical path length with the light collection and light source positions comprised within a design formula. Specifically, the characterization of the coordinate system comprising optical axes, planes, intersection points of simulated light rays amounts to an extra-solution activity of mere data-gathering to provide an input for the for the subsequent mathematical calculations of the reflecting surface design formula i.e., “designing the mirror by using design formulas of the reflecting surface derived based on the coordinates and a condition that an optical path length from a light source position to a light collection position”, as recited in claim 1. See In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989). Furthermore, such a generally recited design formula based on coordinate system transformations could easily be performed by the human mind, in addition to the mathematical calculations based on parameter conditions that are input into the design formula as recited in claims 2-5, which could be performed mentally or with pen and paper. See Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016). See also MPEP § 2106.04(a)(2).1IL.B: “If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea.”; see also Synopsys, 839 F.3d at 1139, 120 USPQ2d at 1474 (holding that claims to the mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Thus, the instant claims 1-5 are directed to an ineligible abstract idea.
The Court has repeatedly determined in similar cases that such mathematical correlations are a judicial exception to patent eligibility and directed to an abstract idea. See Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014). In the present case, the judicial exception is not integrated into a practical application because the claims provide no actual or practical applications, and recite the abstract idea of the mental processes of calculating a formula based on coordinate transformations and characterization of simulated light beam(s), without reciting any additional details. Furthermore, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because those additional elements that do appear merely list the steps of the abstract idea. Specifically, the step of “weighting both a first formula fs(u, v, w) = 0 derived from a condition that an optical path length from a light source point to a light collection point is constant for the light collection in the sagittal direction, and a second formula fm(u, v, w) = 0 derived from a condition that an optical path length from the light source point to the light collection point is constant for the light collection in the meridional direction” does not positively require a reflecting surface and/or mirror, and amounts to obtaining data, organizing, inputting and manipulating information through mathematical calculations, all of which can be performed mentally or by hand. Similarly, the method further comprising “a plane that includes an intersection point Mo on the reflecting surface between the z1 axis and the z2 axis and is in contact with the reflecting surface is defined as a uv plane, a direction of a normal line passing through the Mo in the uv plane is defined as a w axis, av axis is a direction orthogonal to both the z1 axis and the z2 axis, and a u axis is a direction orthogonal to both the v axis and the w axis, an orthogonal coordinate system is defined based on a mirror” also does not add a meaningful limitation to the process of mere manipulating information through mathematical correlations in the form of defining intersection points and orthogonal coordinate axes, as recited and encompassed by the claims. Therefore, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claims 2-5 are rejected as being dependent upon claim 1, and fail to cure the deficiencies of the rejected base claim, as the claims do not add any additional elements beyond method steps drawn to the abstract idea. As such, Claims 1-5 do not raise the abstract idea to the level of patentable subject matter.
Claim Rejections - 35 USC § 112
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.
Claims 1-8 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.
1. Claim 1 recites the limitation: “…setting the x1 axis and the x2 axis to be parallel to a sagittal direction of the reflecting surface…causing all incoming light rays passing through the mirror to pass through both a sagittal light source ray and a meridional light source ray, the sagittal light source ray passing through a position of the light source in the light collection in the sagittal direction and extending in a direction orthogonal to both the xi axis and the zi axis, the meridional light source ray passing through a position of the light source in light collection in the meridional direction and extending in a direction orthogonal to both the y1 axis and the z1 axis; causing all outgoing light rays emitted from the mirror to pass through both a sagittal collected light ray and a meridional collected light ray, the sagittal collected light ray passing through a collecting position in the light collection in the sagittal direction and extending in a direction orthogonal to both the x2 axis and the z2 axis, the meridional collected light ray passing through a collecting position in the light collection in the meridional direction and extending in a direction orthogonal to both the y2 axis and the z2 axis; representing any point on the reflecting surface of the mirror by M, expressing coordinates of an intersection point between the sagittal light source ray and an incoming light ray to the M point and an intersection point between the meridional light source ray and the incoming light ray to the M point by using the Lis and the Lim, and expressing coordinates of an intersection point between an outgoing light ray from the M point and the sagittal collected light ray and an intersection point between the outgoing light ray from the M point and the meridional collected light ray by using the L2s and the L2m; and designing the mirror by using design formulas of the reflecting surface derived based on the coordinates and a condition that an optical path length from a light source position to a light collection position is constant with respect to any point on the reflecting surface for both the light collection in the sagittal direction and the light collection in the meridional direction”. There is insufficient antecedent basis for the x1 axis and x2 axis. It is unclear what is meant by expressing the intersection point between two light rays and an intersection point between two other light rays by using L, since there appears to be a plurality of positions this could refer to, thereby rendering the positional relationships of the various points on the reflecting surfaces as insufficiently defined and therefore indefinite. See MPEP § 2173.05(b), Section II, citing Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). Similarly, the various light collection positions and light source positions are solely defined in terms of directions, thereby rendering the various positions unclear (i.e., each claimed ‘position’ may be located at an infinite number of points along the claimed directions they are defined with respect to). For the purposes of examination, the claim will be interpreted as best understood in light of the specification, unless otherwise stated.
Claims 2-8 inherit the deficiencies of Claim 1, and are thus rejected under 35 U.S.C. 112(b).
2. Claims 6-8 recite “An astigmatism control mirror having a reflecting surface…” along with various L value conditions. The claim scope of each of these claims are unclear and indefinite by virtue of reciting various L1s, L2s, L1m, and L2m conditions: the correlation between the various L conditions and the reflecting surface itself is insufficiently defined within the claims. The L conditions appear to characterize light beam properties, while the claim is directed to the astigmatism control mirror; thus, the limitation fails to recite in what manner these L conditions contribute to properties of the reflecting surface and what relevance that possesses regarding the function of astigmatism control of the mirror. Furthermore, claims 6-8 depend upon claim 1, which recites a method of design via defining coordinate systems and incoming/outgoing light beams therein, while claim 6 is directed to an astigmatism control mirror, thereby rendering unclear the relevance that claim 1 possesses with respect to claim 6. For the purposes of examination, the limitations will be treated as: an astigmatism control mirror having a reflecting surface, wherein outgoing beams which are collected at one point are obtained from an incoming beam having astigmatism (claim 6); wherein an outgoing beam having astigmatism is obtained from an incoming beam diverging from one point (claim 7); the astigmatism control mirror has light collection performance only in the sagittal direction (claim 8).
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 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nienhuys et al. (WO 2016/150612 A2; as cited in the IDS filed 11/29/2024).
Regarding Claim 6, as best understood, Nienhuys discloses the method according to claim 1, as above. Nienhuys further discloses: An astigmatism control mirror having a reflecting surface satisfying the design formula according to claim 1, wherein values of the L1s and the L1m are different from each other, and values of the L2s and the L2m are equal to each other, and outgoing beams which are collected at one point are obtained from an incoming beam having astigmatism (¶005: The radiation source may be operable to produce an astigmatic radiation beam; ¶0108, 000143-46: a concave toroidal-like mirror 350 may, for example, be paraboloidal, hyperboloidal, ellipsoidal or toroidal in this embodiment. mirror is arranged to decrease a divergence of the radiation beam; see FIG. 7 showing curvatures K1 and K2 of reflective surface 352 of mirror corresponding to satisfying L1s, L2s, L2m and L2s conditions).
Regarding Claim 7, as best understood, Nienhuys discloses the astigmatism control mirror according to claim 1, as above. Nienhuys further discloses: wherein values of the L1s and the L1m are equal to each other, and values of the L2s and the L2m are different from each other, and an outgoing beam having astigmatism is obtained from an incoming beam diverging from one point (¶0156: The second mirror M2 increases the divergence of the radiation beam in the y- direction [incoming beam diverging at one point]; ¶00144-45: mirror 350 may have a first focal length in the u-v plane, which is related to the curvature of the reflective surface in the u-direction and the grazing incidence angle β of the radiation beam. toroidal third mirror M3 will therefore decrease the divergence of the radiation beam in the first and second directions in the x-y plane by different amounts; ¶0052, 0099: converging optic is astigmatic mirror [outgoing beam having astigmatism]; ¶0150; see FIG. 7 showing curvatures K1 and K2 of reflective surface 352 of mirror corresponding to satisfying L1s, L2s, L2m and L2s conditions).
Regarding Claim 8, as best understood, Nienhuys discloses the astigmatism control mirror according to claim 1, as above. Nienhuys further discloses: wherein values of the L1m and the L2m are positive or negative infinity, and each of the L1s, and the L2s has a predetermined value (where L1s+ L2s ≠ 0), and the astigmatism control mirror has light collection performance only in the sagittal direction (¶00148: output radiation beam B.sub.out leaving the converging mirror M3 is collimated when the input radiation beam B.sub.in enters the radiation beam expander 200 along the nominal input path AB; ¶0156: The third mirror M3 reduces the divergence of the radiation beam in both the x and y directions such that the radiation beam is collimated; ¶0150; ¶0217: output radiation beam B.sub.out has a fixed position and direction; see FIG. 11 showing collection performance of output beam only in sagittal direction).
Examiner’s Notes
Regarding claims 6-8, the Applicant is respectfully advised that “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.” See MPEP § 2113, Section I, citing In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966. Nonetheless, the Examiner has considered the structure implied by the process steps. See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018).
Other Relevant Documents Considered
Prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Underwood’s NPL titled “IMAGING PROPERTIES AND ABERRATIONS OF SPHERICAL OPTICS AND NONSPHERICAL OPTICS” (2006) disclosing astigmatism control mirrors having a reflecting surfaces satisfying the design formulas for EUV and x-ray systems.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANVITHA SRIDHAR whose telephone number is (571)270-0082. The examiner can normally be reached M-F 930-1800 (EST).
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, BUMSUK WON can be reached at 571-272-2713. 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.
/SAMANVITHA SRIDHAR/Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
Prosecution Insights