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 .
Claim objection
Claim 42 recites “said supporting surface is arranged for abutting one of the first and second surfaces of the optical element”.
However, it would be clearer as -- said supporting surface is abutting one of the first and second surfaces of the optical element--
Election/Restrictions
Applicant's election with traverse of Species IVA in the reply filed on 11/03/2025 is acknowledged. The traversal is not particularly pointed on the reply while during the interview on 10/28/2025, the applicant’s representative asked situational question regarding if the elected species being all rejected there’s no more claims left for further examination/amendment. However, the applicant is allowed to amend claim from the any previous disclosure including specification as far as it does not belong to other restricted/restrictable groups or species. Even further the examiner as a courtesy, would allow the applicant pick one of non-elected species to be further examined once after the applicant receive the non-final rejection.
As a result, applicant assertion of nullifying species election was not guaranteed by the previous interview but the examiner allowed to elect one other species instead of currently elected and rejected species (directed to the claim 47) upon the applicant agreement on the rejection on the claim 47 is proper and withdraw from further consideration while incorporating newly added species to the independent claim 42 for further examination.
The requirement is still deemed proper and is therefore made FINAL.
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(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a measurement unit arranged for simultaneously mapping a three dimensional surface shape of the other of the first and second surfaces of the optical element and for mapping a geometry of the supporting surface of the supporting device by taking measurements of the respective surfaces”, and “a processing unit that is configured to determine the one or more parameters on the basis of a provided geometry of the one of the first and second surfaces, the mapped three dimensional surface shape of the other of the first and second surfaces and the mapped geometry of the supporting surface” in claim 42.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112 (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 42 and 47 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.
As to claim 42, as discussed in the 112f interpretation, the claim recites “a measurement unit arranged for simultaneously mapping a three dimensional surface shape of the other of the first and second surfaces of the optical element and for mapping a geometry of the supporting surface of the supporting device by taking measurements of the respective surfaces”, and “a processing unit that is configured to determine the one or more parameters on the basis of a provided geometry of the one of the first and second surfaces, the mapped three dimensional surface shape of the other of the first and second surfaces and the mapped geometry of the supporting surface”.
However, there is no structural support for those recited units in the specification of instant application.
Specification of instant application merely states “Moreover, explicit use of the term "unit", "processor" or "controller" should not be construed to refer exclusively to hardware capable of executing software, and may implicitly include, without limitation, digital signal processor (DSP) hardware, network processor, application specific integrated circuit (ASIC), field programmable gate array (FPGA), read only memory (ROM) for storing software, random access memory (RAM), and non-volatile storage. Other hardware, conventional and/or custom, may also be included.
It is noted that the present invention is not limited to the embodiment shown, but extends also to other embodiments falling within the scope of the appended claims.”
As a result, it is not clear whether the applicant is trying to claim what kind of structures/structural combinations for the recited measurement unit and processing unit.
Therefore, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Below is the capture of relevant MPEP section regarding recited claim limitation of “means for”.
2181 Identifying and Interpreting a 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, Sixth Paragraph Limitation [R-10.2019]
II. DESCRIPTION NECESSARY TO SUPPORT A CLAIM LIMITATION WHICH INVOKES 35 U.S.C. 112(f) or Pre-AIA 35 U.S.C. 112, SIXTH PARAGRAPH
If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b).
For the examination purposes, examiner will interpret them as in the prior art of Glasenapp et al. (US 9797804).
Further as to claim 42, the claim recites “substantially perpendicular”.
However, it Is not clear how perpendicular is considered substantially perpendicular and what is not.
For the examination purposes, examiner will interpret it as in the prior art of Masayoshi et al. (JP 2005366927).
Claim 47 has been rejected also based upon its dependency.
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 of this title, 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.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Glasenapp et al. (US 9797804 hereinafter Glasenapp) in view of Masayoshi et al. (JP 2005366927 A hereinafter Masayoshi).
As to claim 42, Glasenapp teaches a measurement device (spatial structure determining device, title) for determining one or more parameters being indicative for the relative position of a first surface of an optical element with respect to a second surface of an optical element (abstract), the measurement device comprising:
- a supporting device (holding device, abstract and Fig.1) comprising a supporting surface for supporting the optical element in the measurement device in a first direction (right top Fig in Fig. 1),
- a measurement unit (620 first measuring station which includes 670 and 674 and second measuring station 626 and third measuring station 632 in Fig1) arranged for simultaneously mapping a three-dimensional surface shape of the other of the first and second surfaces of the optical element and for mapping a geometry of the supporting surface of the supporting device by taking measurements of the respective surfaces (col. 8 line43 -col. 9 line 37); and
- a processing unit (602 in Fig. 1) that is configured to determine the one or more parameters on the basis of a provided geometry of the one of the first and second surfaces, the mapped three dimensional surface shape (topography) of the other of the first and second surfaces and the mapped geometry of the supporting surface (abstract)
However, Glasenapp does not explicitly disclose said supporting surface is arranged for abutting one of the first and second surfaces of the optical element.
Masayoshi teaches said supporting surface (21, 30 and 70 in Fig. 2b or 70, 71 in a and b of Fig. 3 which is partially enlarged view of 70) is arranged for abutting one of the first (OS1) and second surfaces (OS2) of the optical element (OE).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the device of Glasenapp by having said supporting surface being arranged for abutting one of the first and second surfaces of the optical element for the benefit including optimal grip of the object for a measurement.
Claim 47 is rejected under 35 U.S.C. 103 as being unpatentable over Glasenapp et al. (US 9797804 hereinafter Glasenapp) in view of Masayoshi
As to claim 47, Glasenapp when modified Masayoshi teaches the measurement device according to claim 42.
Glasenapp further teaches the supporting device comprises a plurality of spaced apart first supports, each comprising a contact surface for abutting the optical element, wherein said supporting surface is formed by said contact surfaces of the plurality of first supports, and
However, Glasenapp does not explicitly disclose the plurality of first supports comprises three supports that are selectively movable with respect to each other along at least a direction substantially perpendicular to the first direction.
Masayoshi teaches the plurality of first supports comprises three supports that are selectively movable with respect to each other along at least a direction substantially perpendicular to the first direction (“Further, in this embodiment, all the three spherical surface portions 30 are movable by the outer shape reference detection means 40, but one or two spherical surface portions 30 are fixed with the same one as the second outer shape reference detection means 246 shown in FIG. The remaining spherical portion 30 can be movably supported by the outer shape reference detection means 40 and urged toward the outer edge PA of the optical element OE”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the device of Glasenapp by having the plurality of first supports comprises three supports that are selectively movable with respect to each other along at least a direction substantially perpendicular to the first direction for the benefit including versatile angle arrangements of the object under measure depending on operators’ necessities.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CN 101101364 B (Minami) teaches three balls holding lens structure (FIG. 13).
US 20140347750 A1 (Yamashita et al.) teaches lens with abutting reference surfaces with upper and lower surfaces of lens (Fig. 1 (c), 4, 7).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNGHEE Y GRAY whose telephone number is (571)270-3211. The examiner can normally be reached on T-R, 8:00 am-4:00 pm and F 8 :00 to 2:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached on (571) 272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-270-4211.
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/SUNGHEE Y GRAY/
Primary Examiner, Art Unit 2886