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 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 Objections
Claims 2-3 are objected to because of the following informalities:
Claim 2: The Examiner assumes that “wherein the limiting unit allows at least a part of light, which travels in a direction approaching the imaging unit, among the light traveling in other directions not to pass” should actually be --wherein the limiting unit allows at least a part of the light which travels in a direction approaching the imaging unit, among the light traveling in other directions, not to pass--.
Claim 3: The Examiner assumes that “wherein the limiting unit allows 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 not to pass” should actually be -- wherein the limiting unit allows 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, not to pass--.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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 1-2, 5, 7, 9-10, and 12 are rejected under 35 U.S.C. 102(a) as being anticipated by 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 and allows at least a part of light, which travels in other directions, not 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]).
Claim 2: Masahiro further discloses
wherein the limiting unit (17) allows at least a part of light, which travels in a direction approaching the imaging unit (20), among the light traveling in other directions, not to pass (“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 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 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 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 and allows at least a part of light, which travels in other directions, not 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]).
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 and allows at least a part of light, which travels in other directions, not 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]).
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 3-4, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Masahiro.
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 allows 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, not to pass.
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 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 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 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
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.
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, 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