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.
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 processing unit, information capturing unit, and a scanning output unit in claim 1 and a receiving unit in claim 8.
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
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 8, and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claims 1 and 8, the limitations “processing unit,” “information capturing unit,” “scanning output unit,” and “receiving unit” are being interpreted under 35 USC 112f as described above. However, the specification fails to define the parameters of the terms. Examples are provided, such as P,0015 discloses that the processing unit “may be a laser”, P.0019 discloses the information capturing unit “can include a lens”, P0017 discloses the scanning output unit “may be a scanning galvanometer” and P.0023 discloses an image sensor as an example for the receiving unit. For 112f, the terms but be clearly defined such that one of ordinary skill in the art would understand the metes and bounds included in the terms. Examples are not definitions. For this reason, the claims are considered not supported.
With respect to claim 1 and 14, additionally, the term “scanning output unit” although undefined as noted above for claim 1, is suggested may be “a scanning galvanometer” and is definitely limited in claim 14. The function performed by the scanning output unit is to be signally connected to the image capturing unit and outputting the detection information. Generally, scanning galvanometers cannot perform this function. Scanning galvanometers generally are made up of a rotating mirror that deflects laser beams, converting electrical control signals into mechanical movement of the surface. So even if the scanning output unit were defined clearly in the specification, there would be an issue that the structure described cannot perform the stated function. Clarification is required.
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.
Claims 1 and 8 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.
Claim limitations “processing unit,” “information capturing unit,” “scanning output unit,” and “receiving unit” in claims 1 and 8 invoke 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 as described above. Therefore, the claim is indefinite.
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;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, 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 and clearly links them to the function 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.
With respect to claim 1 and 8, the limitation “an information capturing unit synchronously receiving a piece of detection information for each of the processing positions via the processing scanner” is unclear if it is a structural or method claim. More precisely, it is unclear if the apparatus is infringed upon when the structure is present, or only when the structure is present and the method of receiving detection information is performed. A claim can only cover a single statutory category. Additionally, the limitation “a scanning output unit…outputting each piece of detection information at the scanning frequency” contains the same issue. Correction and clarification is required.
The balance of claims is likewise rejected for failing to correct the deficiencies described above.
Claim Rejections - 35 USC § 102
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(s) 1, 2, 5, 7, 8, 9, 11, 12, and 15 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Shiraishi U.S. Publication 2021/0132352.
With respect to claim 1, Shiraishi discloses an optical deflector and scanning laser microscope comprising:
A stage configured to place a sample to be processed, wherein a surface of the sample to be processed has a plurality of processing positions (Figure 1, sample table 15= stage, sample 16, it should be noted that the further limitations of a plurality of processing positions on the sample to be processed is not structurally limiting since it is an intended use and the sample itself is not part of the claimed structure)
A processing unit disposed relative to the stage to process the sample to be processed (Figure 1, processing unit = laser light source 34)
A processing scanner, configured to scan the sample to be processed, the processing scanner controls the processing unit to process the processing positions sequentially at a scanning frequency (Figure 1, processing scanner = optical deflector 100 + beam splitter 28 and beam splitter 23, P.0021)
At least one detection scanner comprising an information capturing unit synchronously receiving a piece of detection information for each of the processing positions via the processing scanner (Figure 1, detection scanner = scanning laser microscope 10, information capturing unit = lens 27, P.0021)
A scanning output unit signally connected to the information capturing unit and outputting each piece of detection information at the scanning frequency (Figure 1, scanning output unit = beamsplitter 28, P.0027)
With respect to claim 2, Shiraishi discloses all of the limitations as applied to claim 1 above. In addition, Shiraishi discloses:
The at least one detection scanner also comprises a light source module connected to the processing scanner and the information capturing unit, the light source module has a light path and the light path is controlled by the processing scanner so that the light path is coaxial with a vector of the processing unit relative to each of the processing positions, wherein each piece of detection information is a light signal reflected from the surface of the sample to be processed (Figure 1, light source module = white light 26, P.0022)
With respect to claim 5, 7, 8, 9, 11, 12, and 15, Shiraishi discloses all of the limitations as applied to claims 1 and 2 above. In addition, Shiraishi discloses:
5- The light source module emits multi-wavelength detection light (P.0022, wherein the light source module = white light which inherently means multi-wavelength)
7- The processing unit is a laser light source and each piece of detected information is the laser light source reflected from the surface of the sample to be processed (P.0021)
8- Further comprising at least one receiving unit connected to the scanning output unit of the detection scanner to receive each piece of detection information (Figure 1, receiving unit = image acquisition detector 40, P.0027)
9- The receiving unit is an image sensor and has a plurality of imaging areas, each piece of detection information includes an image of one of the processing positions, and each piece of detection information is respectively imaged on different imaging areas through the scanning output unit (P.0023, confocal image acquisition detector implies an image which inherently has a plurality of imaging areas, i.e. pixels. It should be noted that the limitation “each piece of detection information….” fails to structurally limit the claim since the detection information is not part of the apparatus structure)
11- The receiving unit is a luminance meter and each piece of detection information includes a luminance signal of one of the processing positions (P.0020, a photomultiplier collects light, or luminance, and turns it into electrical signals. It should be noted that the limitation “each piece of detection information….” cannot structurally limit the claim since the detection information is not part of the apparatus structure)
12- an optical modulator disposed between the detection scanner and the receiving unit and the optical modulator shields at least part of the detection information and transmits it to the receiving unit (Figure 1, optical modulator = beamsplitter 38, P0021)
15- The information capturing unit includes a light incident surface (inherent to lens)
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, 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(s) 3, 4, 6, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi U.S. Publication 2021/0132352.
With respect to claim 3, Shiraishi discloses all of the limitations as applied to claim 1 and 2 above. However, Shiraishi is silent as to whether the light source module is a continuous light source or pulse light source.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use a continuous or pulsed light source since these are the well known forms of light sources used for sample detection. Continuous and pulsed are the simpler and less expensive forms of light and would have been readily available to those of ordinary skill in the art.
With respect to claim 4, Shiraishi discloses all of the limitations as applied to claim 1 and 2 above. However, Shiraishi fails to disclose the light source is a single wavelength.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use a single wavelength rather than a multi wavelength since this a result effective variable. Those of ordinary skill in the art would recognize that different wavelengths allow for different types of measurements and it is common to select a single wavelength for more precision and clarity in a sample response while minimizing noise.
With respect to claims 6 and 13, Shiraishi discloses all of the limitations as applied to claim 1 and 12 above. In addition, Shiraishi discloses:
A plurality of receiving units and the optical modulator receives a plurality of pieces of detection information and distributes them to the plurality of receiving units (Figure 1, optical modulator = beamsplitter 38, receiving units = 40 and 41, P.0021)
However, Shiraishi fails to disclose a plurality of detection scanners.
It would have been obvious to one of ordinary skill in the art at the time of the invention to multiply the detection scanners of Shiraishi since it has been held that multiplying working components of a device is within ordinary skill in the art. By having a plurality of detection scanners, more information can be garnered from a single test, saving time and equipment costs.
Claim(s) 10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Shiraishi U.S. Publication 2021/0132352 in view of Mahadevan-Jansen U.S. Publication 2009/0021724.
With respect to claim 10 and 14, Shiraishi discloses all of the limitations as applied to claim 1 and 8 above. However, Shiraishi fails to disclose the scanning output unit is a scanning galvanometer.
Mahadevan-Jansen discloses a spectroscopy system comprising:
At least one detection scanner comprising an information capturing unit synchronously receiving a piece of detection information for each of the processing positions via the processing scanner (Figure 1, information capturing device = lens 126, P.0077)
A scanning output unit, signally connected to the information capturing unit, and outputting each piece of detection information at the scanning frequency (Figure 21, scanning output unit = XY galvo pair 125, P.0078)
At least one receiving unit connected to the scanning output unit of the detection scanner to receive each piece of information (Figure 1, receiving unit = spectrograph 155, P.0080)
The receiving unit is a spectrometer, each piece of detection information includes a spectrum signal of one of the processing positions (Figure 1, receiving unit = spectrograph 155, P.0080
The receiving unit receives the pieces of detection information to generate an image data (P.0022, camera inherently means image data, P.0122)
The scanning output unit is a scanning galvanometer (Figure 1, XY galvo pair 125, P.0076)
It would have been obvious to one of ordinary skill in the art at the time of the invention to use the scanning galvanometer of Mahadevan-Jansen in Shiraishi in order to receive the returned light from various locations on the sample. Shiraishi discloses using an optical deflector to scan the surface of the sample but is silent with respect to how the detector collects the returned light at different locations. The scanning galvanometer with a small footprint of Mahadevan-Jansen allows that light at different locations can be collected to a single detector with a smaller surface collection area (P.0089).
It would have been obvious to one of ordinary skill in the art at the time of the invention to use a spectrometer as in Mahadevan-Jansen for the image acquisition detector since Shiraishi uses a white light made up of a plurality of wavelengths and a spectrometer allows for separation of those wavelengths. Separating wavelengths in a spectrometer measurement as opposed to the generic image acquisition detector of Shiraishi is well known for measuring different aspects of a sample and allows for a more complete picture of the sample within a single measurement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA CAROLE BRYANT whose telephone number is (571)272-9787. The examiner can normally be reached M-F, 12-4 pm.
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/REBECCA C BRYANT/ Primary Examiner, Art Unit 2877