DETAILED ACTION
Restriction/Election Requirement
In response to the claims filed 07/11/2023, the Office issued a Restriction/Election Requirement on 09/25/2025. The Office required restriction between the invention of Group I (Claims 1-7) and the invention of Group II (Claims 8-13).
Applicant’s election of Group I in the reply filed on 11/14/2025 is acknowledged. Accordingly, Claims 1-7 will be examined herein on the merits. Claims 8-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/14/2025.
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).
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 1-7 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 1-7 recite(s) a method of characterizing properties of virtual light beams such as simulated incoming and outgoing light beams, wherein the light beam(s) characterization is inputted as parameter(s) into reflecting surface(s) 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 (i.e., “virtual light rays” as recited in claims 1-3) 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(s) design formula i.e., “designing the mirror by using a design formula of a reflecting surface derived based on the coordinates; 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…”, 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 definitions followed by coordinate transformations could easily be performed by the human mind, in addition to the mathematical calculations based on relative parameter conditions within said coordinate system that are input into the design formula as recited in claims 2-7, 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 1-7 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 incoming and outgoing light ray 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 and/or express the steps of the abstract idea in terms of other parameters. Specifically, the method step of weighting the first, second, and third formulas expressed by orthogonal coordinate system uvw (which is defined in terms of the x1y1z1-x3y3z3 coordinate systems) derived from optical path length conditions as recited in claims 4-6 does not positively require any reflecting surface(s) and/or a mirror, but merely amounts to obtaining data, organizing, inputting and manipulating information through mathematical calculations in the form of coordinate transformations of optical axes of simulated incoming/outgoing light beams, all of which can be performed mentally or by hand. Similarly, the method further comprising setting the magnification MS and Mm (for the light collection along sagittal and meridional directions, respectively) via formulas expressed in terms of LA2m and LA2s (see claim 7) 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 distances therebetween, 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 2-7 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 (discussed supra). As such, Claims 1-7 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 1-7 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.
Claim 1 recites “A method for designing a mirror having a first reflecting surface and a second reflecting surface, which sequentially reflect light, the method comprising…designing the mirror by using a design formula of a reflecting surface, the design formula being derived based on: the coordinates; a condition that an optical path length from a light source position to a virtual light collection position is constant with respect to any point on the reflecting surface for the light collection in the sagittal direction and the light collection in the meridional direction on the first reflecting surface; and a condition that an optical path length from a virtual light source position to a light collection position is constant with respect to any point on the reflecting surface for the light collection in the sagittal direction and the light collection in the meridional direction on the second reflecting surface”. There is unclear and insufficient antecedent basis for “a reflecting surface” and “the reflecting surface” recited later in claim 1 accompanying the term ‘design formula’ because earlier in the claim, a first and a second reflecting surface are previously recited, thereby making it unclear which of the two reflecting surfaces are being referred to in the latter limitation. Additionally, it is unclear what is meant by the various positions displaced by LA1m, LA1s, LB2m, LB2s, LA2m, LA2s as recited in claim 1, since these various L terms are not sufficiently defined anywhere in the claims. Furthermore, the various “intersection points” using the L displacements (as recited in the claim) are defined in terms of MA and MB, which are defined as “any point on” the first and second reflecting surfaces, respectively. Thus, there appears to be an infinite number of positions/displacements these limitations could refer to, thereby rendering the positional relationships of the various points on the first and second 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’ as recited within the claim 1 limitation “an optical path length from a virtual light source position to a light collection position is constant with respect to any point on the reflecting surface for the light collection in the sagittal direction and the light collection in the meridional direction on the second reflecting surface” 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 “A method for designing a mirror having a first reflecting surface and a second reflecting surface, which sequentially reflect light; the design formula being derived based on the coordinates”.
Claims 2-7 inherit the deficiencies of Claim 1, and are thus rejected under 35 U.S.C. 112(b).
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.
Claim 1 is 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 1, as best understood, Nienhuys discloses: A method for designing a mirror having a first reflecting surface and a second reflecting surface, which sequentially reflect light, the method comprising: defining an optical axis of an incoming beam to the first reflecting surface as a z1 axis, and defining a cross section orthogonal to the z1 axis as an x1y1 plane; defining, as a z2 axis, an optical axis of an outgoing beam of the first reflecting surface, the outgoing beam being an incoming beam to the second reflecting surface, and defining a cross section orthogonal to the z2 axis as an x2y2 plane; defining an optical axis of an outgoing beam of the second reflecting surface as a z3 axis, and defining a cross section orthogonal to the z3 axis as an x3y3 plane; setting an x1 axis, an x2 axis, and an x3 axis to be parallel to a sagittal direction of the first reflecting surface and the second reflecting surface; causing incoming beams to the first reflecting surface to have a light source for light collection in the sagittal direction at a position displaced by L1sA in a z1-axis direction from an intersection point MA, on the zi axis on the first reflecting surface, between the zi axis and the z2 axis and a light source for light collection in a meridional direction at a position displaced by L1mA in the zi-axis direction from the intersection point MA on the zi axis; causing outgoing beams of the second reflecting surface to be collected at a position displaced by L2sB in a z3-axis direction from an intersection point MOB, on the z3 axis on the second reflecting surface, between the z2 axis and the z3 axis with respect to light collection in the sagittal direction and to be collected at a position displaced by L2mB in the z3-axis direction from the intersection point MB on the z3 axis with respect to light collection in the meridional direction; causing all of incoming light rays passing through the first reflecting surface 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 of outgoing light rays emitted from the second reflecting surface to pass through both a sagittal collected light ray and a meridional collected light ray, the sagittal collected light ray passing through the light collecting position in the light collection in the sagittal direction and extending in a direction orthogonal to both the x3 axis and the z3 axis, the meridional collected light ray passing through the light collecting position in the light collection in the meridional direction and extending in a direction orthogonal to both the y3 axis and the z3 axis; causing outgoing beams of the first reflecting surface, when the outgoing beams of the first reflecting surface travel straight without being reflected by the second reflecting surface, to be collected at a position displaced by L2sA in a z2-axis direction from the intersection point MA on the z2 axis with respect to the light collection in the sagittal direction, and be collected at a position displaced by L2mA in the z2-axis direction from the intersection point MA on the z2 axis with respect to the light collection in the meridional direction; causing outgoing light rays of the first reflecting surface to pass through both a sagittal virtual collected light ray and a meridional virtual collected light ray, the sagittal virtual collected light ray passing through the light 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 virtual collected light ray passing through the light collecting position in the light collection in the meridional direction and extending in a direction orthogonal to both a y2 axis and the z2 axis; causing all of incoming light rays passing through the second reflecting surface to intersect, on an extension line of the incoming light rays, both a sagittal virtual light source ray and a meridional virtual light source ray, the sagittal virtual light source ray being defined by the sagittal virtual collected light ray in the light collection in the sagittal direction for the first reflecting surface, the meridional virtual light source ray being defined by the meridional virtual collected light ray in the light collection in the meridional direction for the first reflecting surface; defining any point on the first reflecting surface as MA, expressing coordinates of an intersection point between the sagittal light source ray and an incoming light ray to the MA point and an intersection point between the meridional light source ray and the incoming light ray to the MA point by using L1sA and L1mA, and expressing coordinates of an intersection point between an outgoing light ray from the MA point and the sagittal virtual collected light ray and an intersection point between the outgoing light ray from the MA point and the meridional virtual collected light ray by using L2sA and defining any point on the second reflecting surface as MB, expressing coordinates of an intersection point between the sagittal virtual light source ray and an incoming light ray to the MB point and an intersection point between the meridional virtual light source ray and the incoming light ray to the MB point by using the L2SA and L2mA and a distance L between MA and MB, and expressing coordinates of an intersection point between an outgoing light ray from the MB point and the sagittal collected light ray and an intersection point between the outgoing light ray from the MB point and the meridional collected light ray by using the L2sB and L2mB; and designing the mirror by using a design formula of a reflecting surface, the design formula being derived based on: the coordinates; a condition that an optical path length from a light source position to a virtual light collection position is constant with respect to any point on the reflecting surface for the light collection in the sagittal direction and the light collection in the meridional direction on the first reflecting surface; and a condition that an optical path length from a virtual light source position to a light collection position is constant with respect to any point on the reflecting surface for the light collection in the sagittal direction and the light collection in the meridional direction on the second reflecting surface (see corresponding interpretation of claim 1 under 35 U.S.C. 112(b); ¶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; see FIG. 5 showing first reflective surface M2 and second reflective surface M3 which sequentially reflect light, the design of system 200 being derived based on the coordinates XYZ).
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).
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/SAMANVITHA SRIDHAR/Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
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