Prosecution Insights
Last updated: April 19, 2026
Application No. 18/371,090

SURVEYING INSTRUMENT AND SURVEY SYSTEM

Non-Final OA §112
Filed
Sep 21, 2023
Examiner
HASAN, MAINUL
Art Unit
2485
Tech Center
2400 — Computer Networks
Assignee
Topcon Corporation
OA Round
1 (Non-Final)
74%
Grant Probability
Favorable
1-2
OA Rounds
2y 4m
To Grant
99%
With Interview

Examiner Intelligence

Grants 74% — above average
74%
Career Allow Rate
328 granted / 441 resolved
+16.4% vs TC avg
Strong +25% interview lift
Without
With
+24.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 4m
Avg Prosecution
27 currently pending
Career history
468
Total Applications
across all art units

Statute-Specific Performance

§101
6.0%
-34.0% vs TC avg
§103
39.5%
-0.5% vs TC avg
§102
22.2%
-17.8% vs TC avg
§112
22.5%
-17.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 441 resolved cases

Office Action

§112
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. 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. There are a total of 13 claims and claims 1 - 13 are pending. Information Disclosure Statement The information disclosure statement (IDS) submitted on 11/25/2024 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. 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 for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function. Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function. Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. This application includes one or mor e claim limitations that use generic placeholders in place of “means”, and are 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 means plus functional languages without reciting sufficient structures to perform the recited function and the generic placeholders are not preceded by a structural modifier . Such claim limitation(s) is/are: “ a lens barrel unit storing optical systems of a tracking unit and a distance- measuring unit ”, “ a driving unit configured to drive and rotate the lens barrel unit ” , “ an imaging device configured to image an image in front of the lens barrel unit ”. “ a filter switching device configured to make switching so that either of two filters is selectively disposed on an optical axis of the imaging device ” and “ a control unit configured to, when the imaging device acquires an image including tracking guide light transmitted from an optical transmitter, analyze the image and operate an arrival direction of the tracking guide light ” in claim(s) 1- 13 . A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: “ a lens barrel unit ” is denoted by reference numeral 18 (Fig. 3 ) with the function of storing optical systems of a tracking unit and a distance-measuring unit (P 1 , [00 06 ], L 2 -3) without elaborating any structure associated with the lens barrel unit ; “ a driving unit ” is denoted by reference numeral s M1, M2 ( Fig. 3 ) with the function of driv ing and rotat ing the rotary base in the horizontal direction around a vertical axis by M1 (P 6 , [00 27 ], L 3 - 4 ) and driv ing and rotat ing the lens barrel unit in the vertical direction by M2 (P6, [0029], L1-2) with the structure of a motor (P8, [0040], L1-2) ; “ an imaging device ” is denoted by reference numeral 41 ( Fig. 3 ) with the function of capturing an image in front of the lens barrel unit (P 1 , [00 0 6], L 4 - 5 ) with the structure of a wide camera with a wide angle of view (P10, [0047], L3-4) ; “ a filter switching device ” is denoted in Fig s . 6A, 6B with the function of switching so that either of two filters is selectively disposed on an optical axis of the imaging device ([00 06 ], L 5 - 6 ) without elaborating the overall structure of the filter switching device ; “ a control unit ” is denoted by reference numeral 29 ( Fig. 3 ) with the function of analyz ing the image and operat ing an arrival direction of the tracking guide light, and control ling the driving unit so that a collimation axis of the lens barrel unit is directed toward the arrival direction of the tracking guide light ([00 06 ], L 6 - 10 ) with the structure of a microcontroller (P9, [0044], L1-2) . 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. For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications , 76 FR 7162, 7167 (Feb. 9, 2011). 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, second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the appl icant regards as his invention. Claims 1 - 13 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. Claim elements “ a lens barrel unit ” and “ a filter switching device ” are limitations that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function . The specification is devoid of adequate structure to perform the claimed function through the use of the generic placeholders as identified in the previous claim interpretation. Applicant may: (a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph; or (b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a)). If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function applicant should clarify the record by either: (a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or (b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181. Allowable Subject Matter Claims 1-13 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action. None of the prior arts on the record have taught the limitation where it states “ analyze the image and operate an arrival direction of the tracking guide light, and control the driving unit so that a collimation axis of the lens barrel unit is directed toward the arrival direction of the tracking guide light, wherein one filter of the two filters is a tracking guide light filter configured to transmit only wavelengths in a predetermined range centered on a wavelength of the tracking guide light ”. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. “ SURVEYING INSTRUMENT AND SURVEYING INSTRUMENT SYSTEM ” – Ishinabe et al., US PGPub 2021 / 0088333 A1 . “SURVEYING INSTRUMENT” – Ohtomo et al., US PGPub 2020 / 0081266 A1 . “SURVEYING SYSTEM” - Ohtomo et al., US PGPub 2019 / 0063922 A1 . “ MEASURING SYSTEM, AND PORTABLE RADIO TRANSCEIVER AND MEASUREMENT POLE USED IN MEASURING SYSTEM ” – Yanobe, US PGPub 2016 / 0109560 A1 . “ SURVEYING INSTRUMENT ” – Chiba et al., US PGPub 2015 / 0052766 A1 . Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAINUL HASAN whose telephone number is (571)272-0422. The examiner can normally be reached on MON-FRI: 10AM-6 PM, Alternate FRIDAYS, EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JAY PATEL can be reached on (571)27 2-2988 . 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. /Mainul Hasan/ Primary Examiner, Art Unit 248 5
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Prosecution Timeline

Sep 21, 2023
Application Filed
Apr 02, 2026
Non-Final Rejection — §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
74%
Grant Probability
99%
With Interview (+24.9%)
2y 4m
Median Time to Grant
Low
PTA Risk
Based on 441 resolved cases by this examiner. Grant probability derived from career allow rate.

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