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 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 1, 3, 5-6, 8, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yasumoto (JP 2016161398) in view of Knobel et al (United States Patent Application Publication 20090068620).
As to claim 1, Yasumoto teaches a defect sample for surface inspection (paragraph 4 “a defect sample includes a defect sample formation process of pressing an instrument onto a surface of a transparent optical member 11, concentrating a plurality of impressions, and forming a first defect sample 13.”) comprising:
a substrate (Figure 1, paragraph 63 “transparent optical member 11”) that has at least one protruded and/or recessed pseudo defect formed on a surface thereof (paragraph 63 “first defect sample 13”, with Figure 3b showing a cross-section of a defect formed of multiple impressions, see paragraph 68 “the first defect sample 13 is configured by concentrating a plurality of indentations 17”).
While Yasumoto teaches a substrate that is malleable (the process of forming indentations indicates the substrate is not brittle, e.g. glass), Yasumoto does not teach a substrate that is flexible. However, it is known in the art as taught by Knobel. Knobel teaches an optical tracking target (paragraph 0003 “The reflectors and marks are are arranged on the body parts to be treated and on the surgical instruments in such a fashion that their localization is unproblematically possible with a computer and camera unit” and is deemed relevant prior art as Knobel, Yasumoto and the instant claims are directed to an optical target that is used to calibrate and/or monitor the operation of an optical system) comprising a pattern (Figure 9, paragraph 0162 “pattern 520”) on a substrate (Figure 9, paragraph 0162 “Implant 565”)
wherein the substrate is flexible (paragraph 0163 “Implant 565 can be deformed and measured by a mobile tracking system until it has a desired shape.”). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have a substrate that is flexible, in order to provide better localization for a non-planar target.
As to claim 3, Yasumoto in view of Knobel teaches everything claimed, as applied above in claim 1, in addition Yasumoto teaches the substrate is colorless and transparent (Figure 1, paragraph 65 “The transparent optical member 11 is made of optical glass, optical resin, or the like”).
As to claim 5, Yasumoto in view of Knobel teaches everything claimed, as applied above in claim 1, in addition Knobel teaches the substrate is deformable (paragraph 0163 “Implant 565 can be deformed and measured by a mobile tracking system until it has a desired shape.”). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have a substrate that is flexible, in order to provide better localization for a non-planar target.
Yasumoto in view of Knobel does not teach the substrate is deformable along a convex curved surface having a curvature radius R of 30 mm or more or a concave curved surface having the curvature radius R of -30 mm or less. However, Knobel teaches deformation of a substrate (paragraph 0163 “can be deformed … until it has a desired shape”) to better conform to a bone (Figures 10-11, paragraph 0057 “If locators, structures, patterns, and/or secondary patterns are attached to a person's body parts, like bones or joints, the former can be identified by at least the mobile tracking system.”), bones obviously have both large & small curves and it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to include the capability to conform to the claimed curvatures, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges (amounts, proportions, etc) involves only routine skill in the art. See MPEP 2144.05(I).
As to claims 6, 8, 10, the method would flow from claims 1, 3, 5 respectively.
Claims 2, 4, 7, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yasumoto in view of Knobel, and further in view of Takao (JP 07146247).
As to claim 2, Yasumoto in view of Knobel teaches everything claimed, as applied above in claim 1, with the exception of the substrate is made of a connected body of a first member having the pseudo defect and a second member on a back surface side of the first member. However, it is known in the art as taught by Takao. Takao teaches a test standard for an optical inspection system (Figure 6, paragraph 47) comprising a substrate and simulated defects (paragraph 53 “a pseudo foreign substance (12) onto the substrate (11)”), where the substrate is made of a connected body of a first member having the pseudo defect and a second member on a back surface side of the first member (Figure 3, the substrate is interpreted as elements 12 and 11, with layer 12 being the “first member” having pseudo defects 13 on it, and layer 11 being the “second member”). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have the substrate is made of a connected body of a first member having the pseudo defect and a second member on a back surface side of the first member, in order to provide support and improve the inspection accuracy of the operation inspection.
Yasumoto in view of Knobel as modified by Takao above does not teach the first member is made of a material having a smaller elastic modulus than a material which the second member is made of. However, Knobel teaches a flexible surface (paragraph 0163 “Implant 565 can be deformed and measured by a mobile tracking system until it has a desired shape.”) and it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to choose materials with the claimed respective elastic modulus’, as the applicant has not disclosed a new or unexpected result and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering choice. See MPEP 2144.07.
As to claim 4, Yasumoto in view of Knobel in view of Takao teaches everything claimed, as applied above in claim 2, in addition Yasumoto teaches the first member and the second member are colorless and transparent (Figure 1, paragraph 65 “The transparent optical member 11 is made of optical glass, optical resin, or the like”).
Yasumoto in view of Knobel in view of Takao does not teach a difference in refractive index between the first member and the second member is 15% or less. However, it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to choose materials with the claimed refractive indices, as the applicant has not disclosed a new or unexpected result and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering choice. See MPEP 2144.07.
As to claims 7, 9, the method would flow from claims 2, 4 respectively.
Conclusion
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/J.C.U/Examiner, Art Unit 2877
/MICHELLE M IACOLETTI/Supervisory Patent Examiner, Art Unit 2877