DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/29/2026 has been entered.
Response to Amendment
Applicant’s arguments filed 05/29/2026 have been fully considered but they are not persuasive.
The applicant argues that f ordinary skill in the art would not be motivated to combine the Okumura and Arakawa references to arrive at the claimed invention. The examiner respectfully disagrees. Wu (figures 3-6) discloses an actuating device as claimed including a deformable moveable element (404; figure 6) connected to the actuator arm, wherein actuation of the actuator arm moves the deformable moveable element (The device is actuated by array of cantilever assemblies comprising of a relaxor ferroelectric single crystal (e.g. PMN-PT) based bimorphs 403a-403f. The device utilizes an array of center-positioned linking posts 405 in the middle of each flexural cantilever elements as a joint link between array of microactuators 403a-403f and the deformable minor faceplate 404; see at least paragraph 0047). The examiner merely relies on Akarawa (figures 1-4) for the teaching of wherein the deformable moveable element has an upper surface and a lower surface, and wherein both the upper surface and lower surface have an optically reflective surface (see at least page 13, 2nd paragraph). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the actuating device as taught by Arakawa in order to provide substrate to keep high-air-tightness each other and the interference filter engaging. The test for obviousness is not whether the features of the reference may be bodily incorporated into the other to produce the claimed subject mater but simply what the references make obvious to one of the ordinary skill in the art. In re Bozek, 163 USPQ 545, (CCPA 1969); In re Richman, 165 USPQ 509, (CCPA 1970); In re Beckum, 169 USPQ 47, (CCPA 1971); In re Sneed, 710 F.2d 1544, 218 USPQ 385.
Applicant’s arguments with respect to claims 1 and 20-21 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Information Disclosure Statement
The information disclosure statements filed 05/07/2026 fails to comply with 37 CFR 1.98(a)(3) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each document listed that is not in the English language (the 5 page Chinese Office Action mailed April 22, 2006). It has been placed in the application file, but the information referred to therein has not been considered.
Election/Restrictions
Claims 6-8 are withdrawn from consideration as being directed to a non-elected species (the species as shown in figure 9). Therefore, claims 1-3, 11-13, 16-18, 20-21, and 23-25 are pending for examination.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-3, 11-12, 16, 18, 20-21, 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 2011/0013300).
Regarding claim 1, Wu (figures 3-6) discloses an actuating device comprising:
at least one actuator arm (403a-403f, 405) comprising a piezoelectric membrane (see at least abstract); and
a deformable moveable element (404; figure 6) connected to the actuator arm, wherein actuation of the actuator arm moves the deformable moveable element (The device is actuated by array of cantilever assemblies comprising of a relaxor ferroelectric single crystal (e.g. PMN-PT) based bimorphs 403a-403f. The device utilizes an array of center-positioned linking posts 405 in the middle of each flexural cantilever elements as a joint link between array of microactuators 403a-403f and the deformable minor faceplate 404; see at least paragraph 0047);
wherein the deformable moveable element comprises an optically reflective surface or a lens (see at least paragraph 0047), and a plurality of individually addressable piezoelectric sections (403a-403f, 405);
wherein the deformable moveable element is configured to change between a first shape and a second shape upon actuation of the individually addressable piezoelectric sections (see at least paragraph 0047).
The limitation, “wherein actuation of the actuator arm moves the deformable moveable element” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Wu discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Wu (figures 3-6) discloses the actuator arm having a width bigger than its thickness (403a-403f, 405). However, Wu is silent regarding the actuator arm having a width at least ten times its thickness. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the actuator arm having a width at least ten times its thickness, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 2, Wu (figures 3-6) discloses wherein the actuator arm comprises a plurality of independently addressable piezoelectric segments (403a-403f, 405).
Regarding claim 3, Wu (figures 3-6) discloses a gap between at least part of the actuator arm and the moveable element (figure 6).
Regarding claim 11, Wu (figures 3-6) discloses wherein the or each actuator arm has a constant width along its length (403a-403f, 405).
Regarding claim 12, Wu (figures 3-6) discloses wherein the or each actuator arm is connected to the moveable element via a connecting member having a thickness greater than the thickness of the or each actuator arm (403a-403f, 405).
Regarding claim 16, Wu (figures 3-6) discloses wherein the deformable moveable element comprises a first individually addressable piezoelectric section and a second individually addressable piezoelectric section, and wherein the first section is circular and the second section is an annulus surrounding the first section (403a-403f, 405).
Regarding claim 18, Wu (figures 3-6) discloses wherein the membrane comprises a piezoelectric layer and a second layer (403a-403f, 405).
Regarding claim 20, Wu (figures 3-6) discloses a system comprising:
an actuating device comprising:
at least one actuator arm (403a-403f, 405) comprising a piezoelectric membrane (see at least abstract); and
a deformable moveable element (404; figure 6) connected to the actuator arm, wherein actuation of the actuator arm moves the deformable moveable element (The device is actuated by array of cantilever assemblies comprising of a relaxor ferroelectric single crystal (e.g. PMN-PT) based bimorphs 403a-403f. The device utilizes an array of center-positioned linking posts 405 in the middle of each flexural cantilever elements as a joint link between array of microactuators 403a-403f and the deformable minor faceplate 404; see at least paragraph 0047);
wherein the deformable moveable element comprises an optically reflective surface or a lens (see at least paragraph 0047), and a plurality of individually addressable piezoelectric sections (403a-403f, 405);
wherein the deformable moveable element is configured to change between a first shape and a second shape upon actuation of the individually addressable piezoelectric sections (see at least paragraph 0047).
The limitation, “wherein actuation of the actuator arm moves the deformable moveable element” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Wu discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Wu (figures 3-6) discloses the actuator arm having a width bigger than its thickness (403a-403f, 405). However, Wu is silent regarding the actuator arm having a width at least ten times its thickness. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the actuator arm having a width at least ten times its thickness, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Wu discloses the limitations as shown in the rejection of claim 20 above, respectively. Wu does not disclose a projection system including a projector. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the MEMS deformable minor of Wu with a projector because such modification would result in a better projector with a reliable material system for building the deformable mirror to ensure reliable operation for long time run (see at least paragraph 0013). Consequently, an increase in profitability would be achieved.
Regarding claim 21, Wu (figures 3-6) discloses a system comprising:
an actuating device comprising:
at least one actuator arm (403a-403f, 405) comprising a piezoelectric membrane (see at least abstract); and
a deformable moveable element (404; figure 6) connected to the actuator arm, wherein actuation of the actuator arm moves the deformable moveable element (The device is actuated by array of cantilever assemblies comprising of a relaxor ferroelectric single crystal (e.g. PMN-PT) based bimorphs 403a-403f. The device utilizes an array of center-positioned linking posts 405 in the middle of each flexural cantilever elements as a joint link between array of microactuators 403a-403f and the deformable minor faceplate 404; see at least paragraph 0047);
wherein the deformable moveable element comprises an optically reflective surface or a lens (see at least paragraph 0047), and a plurality of individually addressable piezoelectric sections (403a-403f, 405);
wherein the deformable moveable element is configured to change between a first shape and a second shape upon actuation of the individually addressable piezoelectric sections (see at least paragraph 0047).
The limitation, “wherein actuation of the actuator arm moves the deformable moveable element” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Wu discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Wu (figures 3-6) discloses the actuator arm having a width bigger than its thickness (403a-403f, 405). However, Wu is silent regarding the actuator arm having a width at least ten times its thickness. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the actuator arm having a width at least ten times its thickness, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Wu discloses the limitations as shown in the rejection of claim 21 above, respectively. Wu does not disclose an imaging system including a camera. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the MEMS deformable minor of Wu with a camera because such modification would result in a better projector with a reliable material system for building the deformable mirror to ensure reliable operation for long time run (see at least paragraph 0013). Consequently, an increase in profitability would be achieved.
Regarding claim 23, Wu (figures 3-6) discloses wherein actuation of the individually addressable piezoelectric sections results in a curved deformation of the deformable moveable element
The limitation, “wherein actuation of the individually addressable piezoelectric sections results in a curved deformation of the deformable moveable element” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Okumura et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 24, Wu (figures 3-6) discloses wherein the curved deformation is convex.
The limitation, “wherein the curved deformation is convex” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Okumura et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 25, Wu (figures 3-6) discloses wherein the deformable moveable element is arranged to tilt about two orthogonal axes.
The limitation, “wherein the deformable moveable element is arranged to tilt about two orthogonal axes” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Okumura et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 26, Wu (figures 3-6) discloses wherein the plurality of individually addressable piezoelectric sections are attached to the deformable moveable element so as to move the deformable moveable element between the first shape and the second shape (403a-403f, 405).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP §2113.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 2011/0013300) in view of Shani et al. (WO 2019/106429).
Regarding claim 13, Wu discloses the limitations as shown in the rejection of claim 1 above. However, Wu is silent regarding wherein the mass per unit area of the moveable element is greater than that of the actuator arm(s). Shani et al. (figures 11A-11D) teaches wherein the mass per unit area of the moveable element is greater than that of the actuator arm(s) (see at least paragraphs 0165 and 0427). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the actuator arm as taught by Shani et al. in order to provide an actuator device with structural strength while keeping its weight relatively low. In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the mass per unit area of the moveable element being greater than that of the actuator arm(s) since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 2011/0013300) in view of Arakawa (CN 104049358).
Regarding claim 17, Wu discloses the limitations as shown in the rejection of claim 1 above. However, Wu is silent regarding wherein the deformable moveable element has an upper surface and a lower surface, and wherein both the upper surface and lower surface have an optically reflective surface. Akarawa (figures 1-4) teaches wherein the deformable moveable element has an upper surface and a lower surface, and wherein both the upper surface and lower surface have an optically reflective surface (see at least page 13, 2nd paragraph). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the actuating device as taught by Arakawa in order to provide substrate to keep high-air-tightness each other and the interference filter engaging.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth, can be reached at 571-272-97911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871
