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 .
Current Status
The amendment to the title is accepted, and the objection withdrawn.
The amendment(s) to claim(s) 1-8, 14, 15, 17, 20 resolve the issues regarding clarity, and the rejection under 35 US 112 is withdrawn.
However, it is noted that withdrawn claims 9-13, 16, 18-19 have not been amended. The unchanged “prismatic motor” language in the preamble of these claims complicates rejoinder (see below).
Claim(s) 1-8, 14, 15, 17, 20 are amended.
Claim(s) 1-20 are pending. With this Office Action,
claim(s) 1-8, 14, 15, 17 are allowable in light of the remarks and amendments,
claims 9-13, 16, 18-19 are rejoined and rejected, and
claim 20 remains rejected.
Response to Arguments
First, Applicant's arguments submitted 4/28/26 have been considered, but, respectfully, are not found persuasive with respect to claim 20. Applicant argues, regarding the 102 rejection of claim 20 the first and second holders were “mapped” as the same element (see Remarks, p. 8 of 13, last 2 lines), the backboard limitation is not met and then citations are provided explaining why they cannot be interpreted as the same element (p. 9).
This argument is not understood because the first holder in claim 20 was correlated with carrier 1110 (see non-final rejection mailed 1/29/26, p. 4, 3rd line from the bottom) and the second holder with the backboard was correlated with the rotation holder structure 1130 (see non-final rejection mailed 1/29/26, p. 5, 8th line from the top [not including header]). The analysis in claim 1 was slightly different (id. at pp. 6-7) where the first holder was correlated with carrier 1110 and the second holder correlated with housing 1010. Further, the claim does not require that the “backboard” be solid or entirely support the entire back of the prism, as seemingly implied in the remarks. Thus, the cited elements are sufficient to support the backboard function of supporting the back of the prism.
No special definition of “backboard” is found in the present specification, and, absent a special definition, Examiner is obligated to take the broadest reasonable interpretation not in conflict with the specification. It is noted that the feature upon which applicant relies (i.e., “solid the entire length of the prism”) has been given its broadest reasonable interpretation. MPEP 2111-2111.01. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Second, the title objection and 35 USC 112 rejections of claims 1-8, 14, 15, 17, 20 are withdrawn pursuant to the responsive amendments.
Third, Applicant's arguments submitted 2/28/26 with respect to claim 1 have been considered, and are found to be at least partially persuasive. Examiner particularly notes the following section(s) (pp. 11-13):
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Election/Restrictions
Claim 1 is allowable. Claims 9-13, 16, 18-19, previously withdrawn from consideration as a result of a restriction requirement, including all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement, as set forth in the Office action mailed on 8/11/25, is hereby withdrawn and claim 9-13, 16, 18-19 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Specification
Applicant's amended title is noted, and it found to be sufficiently descriptive. Therefore, the new title is accepted.
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.
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 9-13, 16, 18-19 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 pre-AIA the applicant regards as the invention.
In light of the withdrawal of the restriction, previously withdrawn claims 9-13, 16, 18-19 recite the phrase "prismatic motor" in the preamble, and this implies that the motor itself has some optical feature rather than holding an optical element, as disclosed in the application. For examination purposes, it will be interpreted as "a motorized prism mount."
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 20 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Kwon (US 20210286193).
Regarding independent claim 20, Kwon discloses A motorized prism mount for driving a prism (Abstr – rotation holder; Figs. 13, 17A, 17B; note element 1150 may be a prism, see para. 195) comprising (i.e., open language for the claim, MPEP 2111.03):
a first holder (1110 - carrier) comprising two bosses (in Kwon, the portion of 1110 above 26b – one on either side; insofar as such as structure is the same as the present application, Fig. 3: 121 shows the boss as the portion above the groove surface 1200) and two first clamping parts (the upper and lower holding portion [with respect to the Figure with labeling upright] above guide ball 1111, e.g., elements side surfaces 25b, surface 26b, guide portion 1123b), wherein the two bosses are disposed horizontally and outwards (i.e., on either side), the first holder is for holding the prism between the two bosses (i.e., via either side), and the two first clamping parts are located on the two bosses respectively (i.e., connected to);
a second holder which comprises a backboard, two arms located on two sides of the backboard, and two second clamping parts located on the two arms respectively (Kwon, Figs. 11, 13, 17 – e.g., 1130 – rotation holder structure), wherein there is an avoidance space formed between the backboard and the two arms, the first holder is disposed in the avoidance space (Kwon, Figs. 11, 13, 17 – note behind), the two arms are correspondingly disposed with the two bosses respectively, the second clamping part is rotatably connected to the first clamping part (Fig. 13 – note rotation arrows), and the first holder is configured to rotate relative to the second holder by the first clamping part and the second clamping part (Fig. 13 – note rotation arrows).
Allowable Subject Matter
Pursuant to the amendments and remarks filed 4/28/25 (see above), claims 1-8, 14, 15, 17 are allowed.
Regarding claim 1, the prior art does not teach or suggest “A motorized prism mount for driving a prism comprising: a first holder for holding the prism, the first holder comprising a first clamping part; a second holder comprising a second clamping part which is correspondingly disposed with the first clamping part; and a cylinder located between the first clamping part and the second clamping part and radially separating the first holder from the second holder, wherein, the first holder is configured to rotate along a circumference direction of the cylinder,” including the specific arrangement for both “a length of the first clamping part is approximately equal to a length of the cylinder,” and “a length of the second clamping part is approximately equal to the length of the cylinder.” as set forth in the claimed combination(s).
With respect to claims 1-8, 14, 15, 17, these claims depend on claim 1 and are allowable at least for the reasons stated supra.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Examiner's Note
With respect to claim(s) 9-13, 16, 18-19, Examiner makes no prior art rejection. However, these claims are not allowable pursuant to the pending 35 USC 112, second paragraph, rejection.
With respect to claims 9-13, 16, 18-19, these claims depend on claim 1 and are allowable at least for the reasons stated supra.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER D. CARRUTH whose telephone number is (571)272-9791, who can normally be reached on Mon-Fri 9:00 AM - 4:00 PM ET.
Examiner interviews are available via telephone 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 Supervisory Examiner Carruth by telephone are unsuccessful, the examiner’s supervisor, Director Allana L Bidder, can be reached on 571-272-5560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER D. CARRUTH/Supervisory Patent Examiner, Art Unit 2871
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