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 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Note that a rotating angled mirror with an actuator is well known in the arts.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1, 16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending U.S. Patent No. 11,307,090 (hereinafter Watson) in view of US 5105297 A (hereinafter Kessler). This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, Watson teaches a spectrometer comprising: an excitation source for providing an excitation signal; a detector for detecting a spectroscopy signal; and an optical system for directing an incident beam of the excitation signal toward a sample, receiving the spectroscopy signal from the sample, and providing the spectroscopy signal to the detector, wherein the optical system comprises: a focusing lens for focusing the incident beam from the excitation source; a rotating mirror assembly including an angled mirror face surface; and an actuator assembly for controlling the rotating mirror assembly to move a focused incident beam across a surface of the sample, wherein the actuator assembly comprises a rotary motor coupled to the rotating mirror assembly and adapted to rotate the angled mirror face surface to redirect an incident beam of the excitation signal (claim 1).
Watson does not recite wherein excitation signal is directed off-center to the angled mirror face surface and reflected toward the sample.
Kessler, from the same field of endeavor as Watson, teaches wherein excitation signal is directed off-center to the angled mirror face surface and reflected toward the sample (fig. 3a-b, col 4 para 3).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Kessler to Watson to have wherein excitation signal is directed off-center to the angled mirror face surface and reflected toward the sample in order to have a resolution, or sensitivity of adjustment, which can be controlled in both of the directions by choosing the size of the off-axis angles of the support and holder and in order to have high precision angular control of a laser beam is required, for example, in low power laser printers and in high power beam delivery systems (Abstract lines 3-4).
Regarding claim 16, Watson teaches a method of moving a focused incident beam of a spectrometer across a surface of a spectroscopic sample, the method comprising: generating an incident beam of an excitation signal; directing the incident beam towards the sample via an optical system of the spectrometer, wherein the operation of directing the incident beam towards the sample comprises: rotating a moveable mirror surface of the optical system; directing the incident beam off-center to the moveable mirror surface; moving the incident beam across a surface of the sample by reflecting the incident beam from the rotating mirror surface ; receiving a spectroscopic signal from the sample; and detecting the spectroscopic signal.
Claim 2-15, and 17-20 is non-provisionally rejected on the ground of nonstatutory double patenting as being unpatenable over claims 1-14, 16-19 of Patent No. 11,307,090 Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims are anticipated by the patented claims. See Chart below.
INSTANT APPLICATION (18/412933)
PATENT (11,307,090)
CLAIM 2
CLAIM 3
CLAIM 4
CLAIM 5
CLAIM 6
CLAIM 7
CLAIM 8
CLAIM 9
CLAIM 10
CLAIM 11
CLAIM 12
CLAIM 13
CLAIM 14
CLAIM 15
CLAIM 17
CLAIM 18
CLAIM 19
CLAIM 20
CLAIM 2
CLAIM 3
CLAIM 4
CLAIM 5
CLAIM 1
CLAIM 6
CLAIM 7
CLAIM 8
CLAIM 9
CLAIM 10
CLAIM 11
CLAIM 12
CLAIM 13
CLAIM 14
CLAIM 16
CLAIM 17
CLAIM 18
CLAIM 19
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 7-20 is non-provisionally rejected on the ground of nonstatutory double patenting as being unpatenable over claims 4-17 of Patent No. 10,473,522, Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims are anticipated by the patented claims. See Chart below.
INSTANT APPLICATION (18/412933)
PATENT (10,473,522)
CLAIMS 7-15
CLAIM 17
CLAIM 18
CLAIM 19
CLAIM 20
1) CLAIMS 4-12
2) CLAIM 14
3) CLAIM 15
4) CLAIM 16
5) CLAIM 17
Claim 1-25 is non-provisionally rejected on the ground of nonstatutory double patenting as being unpatenable over claims 1-25 of Patent No. 9,791,313, Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims are anticipated by the patented claims. See Chart below.
INSTANT APPLICATION (18/412933)
PATENT (9,791,313)
CLAIM 2-15, 17, 25
CLAIM 2-15, 17, 25
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 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.
Claim(s) 1, 2, 3, 5, 7, 9, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over US6501551B1 (hereinafter Tearney) and in view of US 5105297 A (hereinafter Kessler).
As to claim 1, Tearney teaches a spectrometer (34) comprising: an excitation source (1) for providing an excitation signal; (See Col 11 Lines 5-14, Lines 30-36; Figs. 1, 4,10)
The term “spectrometer” is met by the term “endoscopic unit”. The endoscopic unit consist of optical fiber (44), lens (256), prism (59), and mirror (158), which creates a spectrometer device. The optical source (2) provides the signal for the endoscopic unit.
a detector (820) for detecting a spectroscopy signal; and (See Col 3 Lines 10-14, Col 18 Lines 39-46; Figs. 4, 10, 18)
The spectrum analyzer uses the reflectance from the sample to create a profile.
an optical system (44, 256, 59, 158) for directing an incident beam of the excitation signal toward a sample (14), receiving the spectroscopy signal from the sample, and providing the spectroscopy signal to the detector (52), wherein the optical system comprises: (See Col 11 Lines 30-35; Fig. 10)
a rotating mirror assembly (158) including an angled mirror (158) face surface; and (See Col 11 Lines 5-14; Fig. 10)
an actuator assembly (52) for controlling the rotating mirror assembly (158) to move a focused incident beam across a surface of the sample (14), wherein the actuator assembly comprises a rotary motor (74) coupled to the rotating mirror assembly and adapted to rotate the angled mirror face to redirect an incident beam of the excitation signal. (See Col 4 Lines 66-67-Col 5 Lines 1-3; Col 9 Lines 25-28, 52-57; Col 11 Lines 5-14; Figs. 8, 10)
The incident beam travels through the optical fiber (44). The rotation of the endoscopic units and the angled mirror face scans across the surface of the sample (14).
Tearney does not recite wherein excitation signal is directed off-center to the angled mirror face surface and reflected toward the sample.
Kessler, from the same field of endeavor as Watson, teaches wherein excitation signal is directed off-center to the angled mirror face surface and reflected toward the sample (fig. 3a-b, col 4 para 3).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Kessler to Watson to have wherein excitation signal is directed off-center to the angled mirror face surface and reflected toward the sample in order to have a resolution, or sensitivity of adjustment, which can be controlled in both of the directions by choosing the size of the off-axis angles of the support and holder and in order to have high precision angular control of a laser beam is required, for example, in low power laser printers and in high power bean delivery systems (Abstract lines 3-4).
As to claim 2, Tearney discloses the spectrometer (34) wherein the rotary motor (74) is coupled to the rotating mirror assembly (158) via a drive shaft (46’) of the rotary motor. (See Col 11 Lines 5-18; Fig. 10)
As to claim 3, Tearney discloses the spectrometer (34) wherein the rotating mirror assembly (158) is coupled to the drive shaft (46’) of the rotary motor via a flexible mount. (See Col 9 Lines 65-67; Col 10 Lines 1-5; Fig. 10)
As to claim 5. Tearney discloses the spectrometer (34) wherein rotating mirror assembly (158) is fixedly attached to the drive shaft (46’) of the rotary motor. (See Col 11 Lines 14-16; Fig. 10)excitation
As to claim 7, Tearney discloses the spectrometer (34) wherein the rotating mirror assembly (158) comprises a single angled mirror surface. (See Col 9 Lines 19-24; Col 11 Lines 5-9; Fig. 10)
As to claim 9, Tearney discloses the spectrometer (34) wherein the rotating mirror assembly (158) comprises a focusing mirror. (See Col 9 Lines 19-24; Col 11 Lines 5-9; Fig. 10)
The rotating mirror assembly (158) focuses the beam onto the surface of the sample (14) by being rotated.
As to claim 16, Tearney discloses a method of moving a focused incident beam of a spectrometer (34) across a surface of a spectroscopic sample (14), the method comprising: (See Col 11 Lines 5-14, Lines 30-36; Figs. 1, 4,10)
generating (1) an incident beam of an excitation signal; (See Col 5 Lines 22-24; Col 10 Lines 5-14, Lines 30-36; Figs. 1, 4,10)
The optical source (2) provides the signal through the optical fiber (44) within the endoscopic unit (34).
directing the incident beam towards the sample (14) via an optical system (44, 256, 59, 158) of the spectrometer (34), the optical system comprising a moveable mirror (158); (See Col 11 Lines 30-35; Fig. 10)
moving (52) the incident beam across a surface of the sample (14) by reflecting the incident beam from the rotating mirror surface (this is shown in fig. 13A, col 3 last para)
receiving (820) a spectroscopic signal from the sample (14); and (See Col 3 Lines 10-14, Col 18 Lines 39-46; Figs. 4, 10, 18)
detecting (820) the spectroscopic signal. (See Col 3 Lines 10-14, Col 18 Lines 39-46; Figs. 4, 10, 18)
The spectrum analyzer uses the reflectance from the sample to create a profile.
Tearney does not recite wherein the operation of directing the incident beam towards the sample comprises: rotating a moveable mirror surface of the optical system; directing the incident beam off-center to the moveable mirror surface.
Kessler, from the same field of endeavor as Watson, teaches wherein the operation of directing the incident beam towards the sample comprises: rotating a moveable mirror surface of the optical system; directing the incident beam off-center to the moveable mirror surface (fig. 3a-b, col 4 para 3).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to apply the teaching of Kessler to Tearney to have wherein the operation of directing the incident beam towards the sample comprises: rotating a moveable mirror surface of the optical system; directing the incident beam off-center to the moveable mirror surface in order to have a resolution, or sensitivity of adjustment, which can be controlled in both of the directions by choosing the size of the off-axis angles of the support and holder and in order to have high precision angular control of a laser beam is required, for example, in low power laser printers and in high power bean delivery systems (Abstract lines 3-4).
As to claim 18, Tearney discloses the method, wherein rotating mirror assembly (158) comprises a single angled mirror surface. (See Col 9 Lines 19-24; Col 11 Lines 5-9; Fig. 10)
Claims 6, 12, and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tearney and Kessler, and further in view of Odhner et al (US 2006/0285109).
As to claim 6, Tearney teaches the spectrometer of claim 2, in which this claim depends on.
Tearney does not explicitly teach wherein the rotating mirror assembly is coupled loosely to the drive shaft of the rotary motor configured so that the rotating mirror assembly wobbles with respect to the drive shaft when the drive shaft is turned in operation.
However, Odhner does teach in an analogous art wherein the rotating mirror assembly is coupled loosely to the drive shaft of the rotary motor configured so that the rotating mirror assembly wobbles with respect to the drive shaft when the drive shaft is turned in operation. (See ¶0005 Lines 06-08, ¶0024, ¶0025; Fig 1 & modified Fig 3 below).
The term “wobbles” is met by the term “oscillation”. The resonant mirror (32) pivots about the pivot point (38), therefore, the rotating mirror assembly wobbles with respect to the drive shaft when the drive shaft is turned in operation by controlling the oscillation. The rotating mirror is oscillating; therefore, it is loosely coupled at the pivot point.
Therefore, it would be obvious for one with ordinary skills in the art before the effective filing date of the claimed invention to include the spectrometer of Tearney wherein the rotating mirror assembly is coupled loosely to the drive shaft of the rotary motor configured so that the rotating mirror assembly wobbles with respect to the drive shaft when the drive shaft is turned in operation.
The advantage of this inclusion is to analyze spectral characteristics of sample from said selected signals.
As to claims 12, 15, Tearney teaches the limitations of claim 1 in which these claims depends on.
Tearney does not explicitly teach a spectrometer wherein a first magnet is coupled to a drive shaft of the rotary motor or the rotating mirror assembly and is adapted to align the drive shaft or the rotating mirror assembly, respectively to a fixed position by magnetically coupling to a fixed element of the spectrometer. (Claim 12)
wherein a magnet is physically coupled to the spectrometer adjacent to the actuator assembly and is adapted to magnetically couple to an element physically coupled to the drive shaft of the rotary motor or to the rotating mirror assembly and is adapted to align the mirror face surface at a predetermined position. (Claim 15)
However, Odhner does teach in an analogous art teach a spectrometer (10) wherein a magnet (44) is coupled to a drive shaft of the rotary motor or the rotating mirror assembly and is adapted to align the drive shaft or the rotating mirror assembly (32), respectively to a fixed position by magnetically coupling to a fixed element of the spectrometer, and wherein a magnet is physically coupled to the spectrometer adjacent to the actuator assembly and is adapted to magnetically couple to an element physically coupled to the drive shaft of the rotary motor or to the rotating mirror assembly and is adapted to align the mirror face surface at a predetermined position. (See ¶0024 Lines ¶0025, ¶0026, ¶0028; Figs 1-5).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the claimed invention to include in the spectrometer and method of Tearney wherein a magnet is coupled to a drive shaft of the rotary motor or the rotating mirror assembly and is adapted to align the drive shaft or the rotating mirror assembly, respectively to a fixed position by magnetically coupling to a fixed element of the spectrometer, and wherein a magnet is physically coupled to the spectrometer adjacent to the actuator assembly and is adapted to magnetically couple to an element physically coupled to the drive shaft of the rotary motor or to the rotating mirror assembly and is adapted to align the mirror face surface at a predetermined position.
The advantage of this inclusion is to minimize the energy input required to achieve the desired oscillation.
Claim 8 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tearney and Kessler, and further in view of Aleksov et al (US 2019/0025573 A1).
As to claim 8, Tearney teaches the spectrometer of claim 1, in which this claim depends on.
Tearney does not explicitly teach wherein the rotating mirror assembly comprises a multi-faceted, multi-angled mirror assembly.
However, Aleksov does teach in an analogous art of scanning across a surface wherein the rotating mirror assembly comprises a multi-faceted, multi-angled mirror assembly. (See ¶0003 Lines 5-9)
Therefore, it would be obvious for one with ordinary skills in the art before the effective filing date of the claimed invention to include in the spectrometer of Tearney wherein the rotating mirror assembly comprises a multi-faceted, multi-angled mirror assembly.
The advantage of this inclusion is to provide a larger patterning surface with each pass.
Claim(s) 10, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tearney and Kessler, and further in view of Carron (US 2009/0135417 A1).
As to claims 10, 17, Tearney teaches the spectrometer of claims 1 and 16 in which these claims depend on.
Tearney does not explicitly teach wherein the spectrometer and method averages a plurality of signals received from the sample.
However, Carron does teach in an analogous art a spectroscopic system (10) and method wherein the spectrometer averages a plurality of signals received from the sample. (See ¶0003, ¶0006, ¶0027; Fig 2)
Therefore, it would be obvious for one with ordinary skills in the art before the effective filing date of the claimed invention to include the spectrometer and method of Tearney wherein the spectrometer and method averages a plurality of signals received from the sample.
The advantage of this inclusion is to achieve a high level of spectroscopic resolution imaged onto a spectroscopic detector of a sample under test. (See ¶0002)
Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tearney and Kessler, and further in view of McGlynn (US 5,825,493).
As to claim 11, Tearney teaches spectrometer of claim 1 in which this claim depends.
Tearney does not explicitly teach a spectrometer wherein the actuator assembly comprises a second rotary motor coupled to a second rotating mirror assembly, wherein the incident beam is directed from the rotating mirror assembly to the second rotating mirror assembly.
However, McGlynn does teach in an analogous art a spectrometer (10) wherein the actuator assembly comprises a second motor (11) coupled to a second mirror assembly (27) in motion, wherein the incident beam is directed from the mirror assembly (21,22) to the second mirror assembly. (See Abstract Cols 2 Lines 45-67; Col 3 Lines 6-14; Fig 1)
Therefore, it would have been obvious to one with ordinary skills in the art at the time the invention was made to include in the spectrometer of Tearney wherein the actuator assembly comprises a second rotary motor coupled to a second rotating mirror assembly, wherein the incident beam is directed from the rotating mirror assembly to the second rotating mirror assembly.
The advantage of this inclusion is to make the drive mechanism reactionless, thereby imparting near zero torques on the actuator and reduce the large optical path difference motion.
Claims 19 and 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tearney and Kessler, and further in view of Dazzi et al (US 2009/0249521 Al)
As to claims 19, 20, Tearney teaches the method of claim 16 in which these claims depend on.
Tearney does not explicitly teach a method wherein the operation of detecting comprises detecting a tag at the sample.
wherein the operation of detecting comprises detecting a concentration of a tag at the sample. (Claim 20)
However, Dazzi does teach in an analogous art a method wherein the operation of detecting a concentration of a tag at the sample. (See ¶0022 & ¶0164; Lines 12-17 respectively; Fig 21)
Therefore, it would have been obvious to one with ordinary skill of the art at the time the invention was made to modify the spectrometer and method of Tearney to include the operation of detecting a concentration of a tag at the sample and wherein the operation of detecting comprises detecting a concentration of a tag at the sample.
The advantage of this inclusion is to identify taggants in a sample by spectrum resolutions.
ALLOWABLE IF REWRITTEN
Claims 21-25 would be allowable if rewritten or amended to overcome the Double Patent rejection(s), set forth in this Office action.
As for claim 21, none of the prior arts alone or in combination discloses A spectrometer comprising: an excitation source for providing an excitation signal; a detector for detecting a spectroscopy signal; an optical system for directing an incident beam of the excitation signal toward a sample, receiving the spectroscopy signal from the sample, and providing the spectroscopy signal to the detector, wherein the optical system comprises: a moveable mirror; and an actuator assembly for controlling the moveable mirror to move a focused incident beam across a surface of the sample, wherein the optical system is adapted to direct the excitation signal off-center to a surface of the moveable mirror; and a magnetic positioning system comprising a magnet and a second element adapted to magnetically couple to the magnet, the magnetic positioning system configured to position the moveable mirror in a predetermined position by magnetically coupling the magnet to the a-second element, wherein one of the magnet and the second element is physically coupled to the actuator assembly and the other one of the magnet and the second element is fixed to the spectrometer adjacent to the actuator assembly.
The closest prior art, Tearney et al (US 6,501,551 B1) discloses optical imaging and more specifically to the field of medical imaging with interferometric detection. Tearney does not alone or in combination with any other prior art references disclose the missing limitations listed above in reference to claim 21; such as,
Claim 21, “a magnetic positioning system comprising a magnet and a second element adapted to magnetically couple to the magnet, the magnetic positioning system configured to position the moveable mirror in a predetermined position by magnetically coupling at least one magnet to a second element, wherein one of the magnet and the second element is physically coupled to the actuator assembly and the other one of the magnet and the second element is fixed to the spectrometer adjacent to the actuator assembly.”
Therefore, it will not be proper to combine this prior art with another because the deficiencies of the missing limitations would not be cured; such as,
Claims 22-25 are allowed due to their dependency of claim 21.
Claim Objection for Dependent Claims
Claims 4, 13, 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As to claim 4, Even though Tearney teaches the spectrometer of claims 1, it does not teach alone or in combination the spectrometer wherein the flexible mount comprises at least one spring
As to claim 13, Even though Tearney when modified by Odhner teaches the spectrometer of claim 12, it does not teach alone or in combination wherein the fixed element of the spectrometer comprises a second magnet.
As to claim 14, Even though Tearney when modified by Odhner teaches the spectrometer of claim 12, it does not teach alone or in combination wherein the magnet comprises at least one of a permanent magnet and an electromagnet.
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 ROBERTO FABIAN JR whose telephone number is (571)272-3632. The examiner can normally be reached M-F (8-12, 1-5).
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/ROBERTO FABIAN JR/Examiner, Art Unit 2877
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877
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