1DETAILED 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 .
Election/Restrictions
Applicant’s election without traverse of group 1 in the reply filed on 08/15/2022 is acknowledged. Claims 18-25 are withdrawn from consideration.
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”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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:
“active device” in claim 15 which utilizes the generic term “device” with the function of being “active”. The limitation is interpreted in light of instant specification ¶62.
“emission device” in claim 12 which utilizes the generic term “device” with the function of emitting. The limitation is interpreted in light of instant specification ¶9.
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 § 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.
Claim(s) 1-6 and 8-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Evke WO2020102527 A1.
Regarding claim 1, Evke WO2020102527 A1 discloses a device comprising:
a support structure having a plurality of concentric cuts through the support structure that define a set of structure sections (Fig. 29 and Fig. 3, 302);
an insert assembly supported by the support structure at an inner structure section of the set of structure sections (Fig. 29, sensors 2906),
the inner structure being disposed between two outer structure sections of the set of structure sections (seen in Fig. 29),
wherein the inner structure section is configured to tilt the insert assembly at a tilt angle in accordance with a displacement of a first outer structure section of the two outer structure sections (Seen in Fig 3, the structure is such that it is capable of tilting, ¶59 discusses tracking angular position).
Regarding claim 2, Evke further discloses the device of claim 1, wherein the first outer structure section is configured to be displaced in one or more lateral directions, wherein the inner structure section is configured to be deformed based on a displacement of the first outer structure section, and wherein the insert assembly is configured to tilt along one or more axes based on a deformation of the inner structure section (seen in Fig. 29 the structure is such that it is capable of deforming in the described fashion).
Regarding claim 3, Evke further discloses the device of claim 2, wherein the first outer structure section is planar shaped and wherein the one or more lateral directions are along a plane of the first outer structure section (seen in Fig. 29).
Regarding claim 4, Evke further discloses the device of claim 1, further comprising a second outer structure section of the set of structure sections parallel to the first outer structure section (seen in Fig. 29).
Regarding claim 5, Evke further discloses the device of claim 4, wherein the first or second outer structure section is a fixed outer structure section and the other outer structure section of the first or second outer structure section is configured to be displaced in one or more lateral directions relative to the fixed outer structure section (seen in Fig. 29 the structure is such that it is capable of deforming in the described fashion)
Regarding claim 6, Evke further discloses the device of claim 1, wherein the insert assembly is configured to tilt to perform optical tracking (seen in Fig. 3 the structure is such that it is capable of deforming in the described fashion. Evke is teaches tracking and optical sensors ¶112).
Regarding claim 8, Evke further discloses the device of claim 1, wherein the plurality of concentric cuts defines a cut pattern, the cut pattern being defined by one or more cut parameters (Evke, Fig. 1, ¶23, ¶62)
Regarding claim 9, Evke further discloses the device of claim 8, wherein the one or more cut parameters include radial spacing, cut phase angle, cut phase shift, number of cuts, geometry of cuts, or combinations thereof (Evke, Fig. 1, Fig. 26, ¶23).
Regarding claim 10, Evke further discloses the device of claim 8, wherein the displacement of the first outer structure section of the two outer structure sections is based on the cut pattern (Evke Fig. 26, Fig. 27, inter alia, the displacement is necessarily based on the cut patterns).
Regarding claim 11, Evke further discloses the device of claim 1, wherein the support structure comprises a compliant mechanism having a collapsible cone-like spring structure (Evke, at least seen in Fig. 3, Fig. 26).
Claim(s) 1-6, 8-11, 15, 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mhatre et al. US20200231430.
Regarding claim 1, Mhatre et al. US20200231430 discloses a device comprising:
a support structure having a plurality of concentric cuts through the support structure that define a set of structure sections (Fig. 52-54, kiriform 10);
an insert assembly supported by the support structure at an inner structure section of the set of structure sections (Fig. 52-54, at least lens 54),
the inner structure being disposed between two outer structure sections of the set of structure sections (seen in Fig. 52-54),
wherein the inner structure section is configured to tilt the insert assembly at a tilt angle in accordance with a displacement of a first outer structure section of the two outer structure sections (Seen in Fig. 52-54, the structure is such that it is capable of tilting ¶15, tilting).
Regarding claim 2, Mhatre further discloses the device of claim 1, wherein the first outer structure section is configured to be displaced in one or more lateral directions, wherein the inner structure section is configured to be deformed based on a displacement of the first outer structure section, and wherein the insert assembly is configured to tilt along one or more axes based on a deformation of the inner structure section (Seen in Fig. 52-54, the structure is such that it is capable of deforming in the described fashion).
Regarding claim 3, Mhatre further discloses the device of claim 2, wherein the first outer structure section is planar shaped and wherein the one or more lateral directions are along a plane of the first outer structure section (Seen in Fig. 52-54).
Regarding claim 4, Mhatre further discloses the device of claim 1, further comprising a second outer structure section of the set of structure sections parallel to the first outer structure section (Seen in Fig. 52-54).
Regarding claim 5, Mhatre further discloses the device of claim 4, wherein the first or second outer structure section is a fixed outer structure section and the other outer structure section of the first or second outer structure section is configured to be displaced in one or more lateral directions relative to the fixed outer structure section (Seen in Fig. 52-54, the structure is such that it is capable of deforming in the described fashion)
Regarding claim 6, Mhatre further discloses the device of claim 1, wherein the insert assembly is configured to tilt to perform optical tracking (Seen in Fig. 52-54, the structure is such that it is capable of deforming in the described fashion. Examiner interprets the optical tracking limitation as intended use).
Regarding claim 8, Mhatre further discloses the device of claim 1, wherein the plurality of concentric cuts defines a cut pattern, the cut pattern being defined by one or more cut parameters (Mhatre, Fig. 52-54, ¶3)
Regarding claim 9, Mhatre further discloses the device of claim 8, wherein the one or more cut parameters include radial spacing, cut phase angle, cut phase shift, number of cuts, geometry of cuts, or combinations thereof (Mhatre Fig. 52-54, ¶3, teaches at least a number of cuts).
Regarding claim 10, Mhatre further discloses the device of claim 8, wherein the displacement of the first outer structure section of the two outer structure sections is based on the cut pattern (Mhatre Fig. 52-54, ¶3, the displacement is necessarily based on the cut patterns).
Regarding claim 11, Mhatre further discloses the device of claim 1, wherein the support structure comprises a compliant mechanism having a collapsible cone-like spring structure (Seen in Fig. 52-54).
Regarding claim 15, Mhatre further discloses the device of claim 1, wherein the insert assembly comprises a lens (lens 54), the lens being configured to focus emissions from a source to a focal area (seen in Fig. 52-54, the lens focuses on the camera of a cell phone ¶80).
Regarding claim 16, Mhatre further discloses the device of claim 15, further comprising an active device positioned at the focal area and configured to capture the focused emissions (seen in Fig. 52-54, the lens focuses on the camera of a cell phone ¶80).
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) 7, is/are rejected under 35 U.S.C. 103 as being unpatentable over Evke WO2020102527 A1 in view of Forrest et al. US20160285410.
Regarding claim 7, Evke does not expressly disclose the device of claim 6, wherein the optical tracking is solar tracking.
Evke teaches adapting the sensor devices to a variety of non-wearable applications, including, for instance, usage scenarios involving interactive surfaces (e.g., industrial controls and other user interfaces), machine interfaces (¶37).
Forrest et al. US20160285410 teaches utilizing Kirigami inspired support structures for solar tracking (abstract) and that such Kirigami structures can decrease costs (¶7). Forrest further teaches that such structures are usable in a wide range of optical and mechanical operations (¶8).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to adapt the support structure of Evke to perform solar tracking, as taught by Forrest, since doing so would reduce costs of solar tracking.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mhatre et al. US20200231430.
Regarding claim 17, Mhatre et al. US20200231430 does not expressly disclose wherein the focal area is positioned on the first outer structure section.
However, Mhatre does disclose displacing the lens in order to achieve a desired focus or magnification (¶80).
The positioning of the lens and its respective focal area is a results effective variable which yields a desired focus or magnification. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 214405.II.
Thus, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify the prior art device such that the focal area is in the claimed location since doing so amounts to a routine optimization of focal length or are in the art with the known predictable result of achieving a desired focus or magnification.
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.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11831272 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 of US11831272B2 teach all the limitations of instant claims 1-17 and are narrower in scope than the presently pending claims.
With respect to instant claims 8 and 9, the plurality of cuts of claim 1 of US11831272B2 necessarily defines a cut pattern which necessarily has a parameter including a number of cuts. Regarding instant claim 10, the claims of US11831272B2 would necessitate a device wherein the displacement is based on the cut pattern.
Allowable Subject Matter
Notwithstanding the above double patenting rejections,
Claims 12-14 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.
Regarding claim 12, the prior art teaches kirigami base support structures (Evke) and
Forrest et al. US20160285410 teaches utilizing Kirigami inspired support structures for solar tracking (abstract) and that such Kirigami structures can decrease costs (¶7). Wherein an active device (photovoltaic cell) is mounted to the support structure (abstract) and is provided with a concentrator, the concentrator being a reflective device configured to concentrate emissions from a source to a focal point (Winston collector, ¶50)
Forrest is silent to an emissive device or a particular alignment or arrangement required by the claims. There is insufficient teaching, suggestion, or motivation to modify a prior art device to reach the combination of features required by Claims 12-14.
US20200025618 and US20200386892 teach the use of Kirigami based structures in optical devices in combination with emitting devices. However, the principle embodiment does not support the emitting device with a kirigami based support. As seen in Fig. 1 of US20200386892, the Kirigami structure acts as a beam steering element 106 and does not provide support for the emitting device 102. While the use of kirigami elements in combination with emitting devices is suggested, there is insufficient teaching, suggestion, or motivation to modify a prior art device to reach the combination of features required by claim 12. Claims 13-14 are allowable by virtue of dependency.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Deepak Deean whose telephone number is (571)270-3347. The examiner can normally be reached M-Th 10-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hoang can be reached at 517-272-6460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEEPAK A DEEAN/Examiner, Art Unit 3762 /MICHAEL G HOANG/Supervisory Patent Examiner, Art Unit 3762
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