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 .
Response to Arguments
Applicant’s arguments, see Page 7, filed 12 March 2026, with respect to claims 1 and 10 have been fully considered, but are not persuasive. Therefore, the §112(f) interpretation of claims 1 and 10 has been maintained.
Applicant’s arguments, see Page 7, filed 12 March 2026, with respect to claims 2-3 have been fully considered and are persuasive. Therefore, the objections to claims 2-3 have been withdrawn.
Applicant’s arguments, see Pages 7-8, filed 12 March 2026, with respect to claims 1, 10, and 12 have been fully considered and are persuasive. Therefore, the §102 rejections of claims 1, 10, and 12 have been withdrawn. However, upon further consideration, a new ground of rejection is made in view of the amendments.
Applicant has amended claims 1, 10, and 12 to recite that the limiting unit includes an incidence-side opening and an emission-side opening, wherein the emission-side opening is smaller than the incidence-side opening. Applicant argues that, while Masahiro discloses incidence-side and emission-side openings, these are equally sized.
However, Applicant has provided no criticality for the emission-side opening to be smaller than the incidence-side opening. Masahiro, furthermore, discloses deforming the limiting unit (17) such that it is concave on the emission side (Fig. 6B) [0011]. It is evident that this concavity achieves the claimed purpose of narrowing the path of light as it approaches the target region.
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 Masahiro’s limiting unit by slightly tapering the hexagonal columns towards the emission side for the purpose of narrowing the path of light as it approaches the target region without compromising the structural integrity of the limiting unit.
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: “limiting unit” in claims 1 and 10.
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 § 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 (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 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 1-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Masahiro et al. (JP 6039119), hereinafter Masahiro. Citations are based on the attached English translation.
Claim 1: Masahiro discloses an inspection apparatus (Figs. 3-4) comprising:
a limiting unit (17) that is provided between a light source (11) and a target region (S) and limits light traveling from the light source (11) toward the target region (S) [0027]; and
an imaging unit (20) that captures an image using light passing through the limiting unit (17), reflected from the target region (S), and incident on the imaging unit (20) [0034],
wherein the limiting unit (17) allows light, which travels in one direction and is incident on the imaging unit (20) in a case where the light is specularly reflected from the target region (S), to pass through the limiting unit (17) and does not allow at least a part of light, which travels in other directions, to pass through the limiting unit (17), among light emitted from the light source (11) (“In other words, the light-shielding member 15 has the function of limiting the light irradiated onto a part of the object to be inspected S to only the light irradiated from a predetermined light-passing hole 17e”, Fig. 1A, [0026]),
the limiting unit (17) includes:
an incidence-side opening on which the light emitted from the light source (11) is incident (evident from Fig. 4), and
an emission-side opening from which the light that is allowed to pass through the limiting unit (17) is emitted from the limiting unit towards the target region (S) (evident from Fig. 4).
Masahiro does not explicitly disclose wherein the emission-side opening is smaller than the incidence-side opening.
However, Applicant has provided no criticality for the emission-side opening to be smaller than the incidence-side opening. Masahiro, furthermore, discloses deforming the limiting unit (17) such that it is concave on the emission side (Fig. 6B) [0011]. It is evident that this concavity achieves the claimed purpose of narrowing the path of light as it approaches the target region.
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 Masahiro’s limiting unit by slightly tapering the hexagonal columns towards the emission side for the purpose of narrowing the path of light as it approaches the target region without compromising the structural integrity of the limiting unit.
Claim 2: Masahiro further discloses
wherein the limiting unit (17) does not allow at least a part of light, which travels in a direction approaching the imaging unit (20), among the light traveling in other directions, to pass through the limiting unit (17) (“In other words, the light-shielding member 15 has the function of limiting the light irradiated onto a part of the object to be inspected S to only the light irradiated from a predetermined light-passing hole 17e”, Fig. 1A, [0026]).
Claim 3: Masahiro discloses wherein the “slits are configured to be at a predetermined angle” [0003], but does not explicitly disclose wherein the limiting unit does not allow light which forms an angle of 20[Symbol font/0xB0] or more with the light traveling in the one direction, among the light traveling in other directions, to pass through the limiting unit.
However, Applicant has not provided any criticality for the light to be in the 0-20[Symbol font/0xB0] range to pass through the limiting unit, providing this configuration only as exemplary [0040]. “Determining where in a disclosed set of percentage ranges the optimum combination of percentages lies is prima facie obvious.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003); see also In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (“[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1995)).
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 Masahiro’s limiting unit to allow only light in the desired angle range to pass through for the purpose of accurately characterizing the target region and maintain a high SNR.
Claim 4: Masahiro does not explicitly disclose wherein the limiting unit sets an amount of light, which travels in other directions and is allowed to pass, to 50% or less of an amount of light traveling in one direction.
However, Applicant has not provided any criticality for the limiting unit to pass only 0-50% of the light travelling in other directions and as disclosed this configuration only as a design choice [0041]. “Determining where in a disclosed set of percentage ranges the optimum combination of percentages lies is prima facie obvious.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003); see also In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (“[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1995)).
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 Masahiro’s limiting unit to allow only a certain amount of light travelling in other directions to pass through for the purpose of accurately characterizing the target region while maintaining a high SNR and preventing saturation of the imaging unit.
Claim 5: Masahiro further discloses
wherein the limiting unit (17) is a group of light blocking walls that are arranged in a direction intersecting with the one direction and are not parallel to each other (evident from Fig. 1A).
Claim 6: Masahiro discloses that “the light transmitting holes 17e can maintain a sufficient size” [0033], but does not explicitly disclose wherein an interval at which the light blocking walls are arranged is 1.5 mm or less.
However, Applicant has not provided any criticality for the light blocking walls to be arranged in the 0-1.5mm range. “Determining where in a disclosed set of percentage ranges the optimum combination of percentages lies is prima facie obvious.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003); see also In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997) (“[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1995)).
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 Masahiro’s limiting unit so that the light blocking walls are arranged in the desired intervals for the purpose of accurately characterizing the target region while limiting the light enough to prevent saturation of the imaging unit.
Claim 7: Maashiro further discloses
wherein the limiting unit (17) is formed of a limiting layer in which portions transmitting light emitted from the light source (11) and portions not transmitting the light emitted from the light source (11) are alternately arranged (evident from Fig. 1A, in which light is transmitted through the white portions, and light is not transmitted through the dark (wall) portions).
Claim 8: Masahiro does not explicitly disclose the composition of the limiting layer.
However, Masahiro does disclose wherein the limiting layer (17) is disposed to be bent such that the portions transmitting the light emitted from the light source (11) are orthogonal to the one direction (evident from Fig. 2, in which the curved surface of the limiting unit maintains orthogonality with the one direction in which light travels).
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 Masahiro’s limiting layer to be formed of a film for the purpose of allowing the limiting layer to be bent as desired without compromising the integrity of its structure.
Claim 9: Masahiro further discloses
wherein the limiting unit (17) is formed of a plurality of limiting layers that are arranged in a direction intersecting with the one direction (evident from Fig. 2, in which the limiting unit 17 is curved so that each of the limiting layers intersects the one direction in which light travels).
Claim 10: Masahiro discloses an inspection system (Figs. 3-4) comprising:
a limiting unit (17) that is provided between a light source (11) and a target region (S) and limits light traveling from the light source (11) toward the target region (S) [0027];
an imaging unit (20) that captures an image using light passing through the limiting unit (17), reflected from the target region (S), and incident on the imaging unit (20) [0034]; and
a processor (30) that is configured to process the image captured by the imaging unit (20) [0016],
wherein the limiting unit (17) allows light, which travels in one direction and is incident on the imaging unit (20) in a case where the light is specularly reflected from the target region (S), to pass through the limiting unit (17) and does not allow at least a part of light, which travels in other directions, to pass, among light emitted from the light source (11) (“In other words, the light-shielding member 15 has the function of limiting the light irradiated onto a part of the object to be inspected S to only the light irradiated from a predetermined light-passing hole 17e”, Fig. 1A, [0026]),
the limiting unit (17) includes:
an incidence-side opening on which the light emitted from the light source (11) is incident (evident from Fig. 4), and
an emission-side opening from which the light that is allowed to pass through the limiting unit (17) is emitted from the limiting unit towards the target region (S) (evident from Fig. 4).
Masahiro does not explicitly disclose wherein the emission-side opening is smaller than the incidence-side opening.
However, Applicant has provided no criticality for the emission-side opening to be smaller than the incidence-side opening. Masahiro, furthermore, discloses deforming the limiting unit (17) such that it is concave on the emission side (Fig. 6B) [0011]. It is evident that this concavity achieves the claimed purpose of narrowing the path of light as it approaches the target region.
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 Masahiro’s limiting unit by slightly tapering the hexagonal columns towards the emission side for the purpose of narrowing the path of light as it approaches the target region without compromising the structural integrity of the limiting unit.
Claim 12: Masahiro discloses an inspection apparatus (Figs. 3-4) comprising:
limiting means (17) provided between a light source (11) and a target region (S) and for limiting light traveling from the light source (11) toward the target region (S) [0027]; and
imaging means (20) capturing an image using light passing through the limiting means (17), reflected from the target region (S), and incident on the imaging means (20) [0034],
wherein the limiting means (17) allows light, which travels in one direction and is incident on the imaging means (20) in a case where the light is specularly reflected from the target region (S), to pass through the limiting means (17) and does not allow at least a part of light, which travels in other directions, to pass through the limiting means (17), among light emitted from the light source (11) (“In other words, the light-shielding member 15 has the function of limiting the light irradiated onto a part of the object to be inspected S to only the light irradiated from a predetermined light-passing hole 17e”, Fig. 1A, [0026]),
the limiting means (17) includes:
an incidence-side opening on which the light emitted from the light source (11) is incident (evident from Fig. 4), and
an emission-side opening from which the light that is allowed to pass through the limiting means (17) is emitted from the limiting unit towards the target region (S) (evident from Fig. 4).
Masahiro does not explicitly disclose wherein the emission-side opening is smaller than the incidence-side opening.
However, Applicant has provided no criticality for the emission-side opening to be smaller than the incidence-side opening. Masahiro, furthermore, discloses deforming the limiting means (17) such that it is concave on the emission side (Fig. 6B) [0011]. It is evident that this concavity achieves the claimed purpose of narrowing the path of light as it approaches the target region.
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 Masahiro’s limiting means by slightly tapering the hexagonal columns towards the emission side for the purpose of narrowing the path of light as it approaches the target region without compromising the structural integrity of the limiting means.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Masahiro as applied to claim 10 above, and further in view of Ogawa et al. (US 2014/0300893), hereinafter Ogawa.
Claim 11: Masahiro further discloses
wherein the limiting unit (17) is provided with openings that allow the light traveling in the one direction to pass and are arranged at predetermined intervals (“even when the honeycomb structure 17a is deformed based on a certain radius of curvature, the light transmitting holes 17e can maintain a sufficient size” [0033]), but is silent with respect to processing of the image based on frequency components.
Ogawa, however, in the same field of endeavor of optical inspection apparatus, discloses an inspection apparatus (100, Fig. 1) comprising:
a processor (110) that is configured to process an image captured by an imaging unit (105) [0088], wherein
the processor (110) is configured to perform processing of removing components equal to or higher than a frequency corresponding to the predetermined intervals, on the image captured by the imaging unit (105) [0090].
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 Masahiro’s processor to perform processing that removes low-frequency components for the purpose of reducing the noise in the image.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to HINA F AYUB whose telephone number is (571)270-3171. The Examiner can normally be reached on 9am-5pm ET Mon-Fri.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Tarifur Chowdhury can be reached on 571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hina F Ayub/
Primary Patent Examiner
Art Unit 2877
Prosecution Insights