DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s response dated 05/27/2026 has been received and entered. Claims 1-17 are remain pending in the application.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Sanghera et al., US 2010/0271719 A1.
Claim 1 is anticipated by Sanghera et al. figures 1-5 and accompanying text which discloses a Risley prism assembly (RPA) 2 comprising:
. a first prism element 10
. a second prism element 20
. each of the first and second prism elements 10, 20 having an angular orientation about a common central rotation axis that is variable by causing respective first and second Risley prism assembly motors (RPA motors)(rotors 33, 37) to rotate the first and second prism elements about the central rotation axis 6
. wherein light entering the RPA along the central rotation axis and passing through both of the first and second prism elements 10, 20 is refracted away from the central rotation axis 6 at a maximum refraction angle γmax when an angular orientation difference Δθ between the angular orientation θ1 of the first prism element 10 and the angular orientation θ2 of the second prism element 20 is zero (fig. 3) and at a minimum refraction angle γmin when Δθ = 1800 (fig. 4)
. a controller 30
It is noted that the functional of the controller (e.g., apply an iterative root finding method of false position (MFP), direct the first and second RPA motors to adjust the angular orientations of the first and second prism elements) recites a one-step process which does not further limit the structure of the device claims. Therefore, this limitation has not been given patentable weight.
Re claim 2, wherein γmin = 0 (fig. 4).
Re claims 3-6 and 8-9, those claims recite the one-step process limitation(s) of the controller functional that does not further limit the structure of the device claims and those limitation(s) have not been given patentable weight.
Re claim 7, wherein the RPA is achromatic ([0022]).
Allowable Subject Matter
Claims 10-17 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
None of the prior art of record discloses or suggests alone or in combination that a non-transitory computer readable storage medium comprising a computer program product with instructions configured for processing scanning instructions for an optical assembly by causing a controller to comprising a combination of various limitations as claimed more specifically applying an iterative root finding method of false position (MFP) to approximate a value Δθd of the angular orientation difference Δθ at which the light will be refracted at a desired refraction angle γd formed between a desired pointing direction and the central rotation axis, and directing the first and second RPA motors to adjust the angular orientations of the first and second prism elements to cause the light to emerge from the RPA in the desired pointing direction when the light enters the RPA along the central rotation axis, or causing the light to emerge from the RPA along the central rotation axis when the light enters the RPA along the desired pointing direction as set forth in claim 10.
Claims 11-17 are allowed by virtue of their dependency.
Response to Arguments
Applicant's arguments filed 05/27/2026, with respect to claim 1, have been fully considered but they are not persuasive.
Applicant respectfully submits that such an assertion is contrary to the court’s rulings in Verdegaal, Net MoneyIn, and MPEP §2131. It is noted that the MPEP§2131 and Court’s ruling of Net MoneyIN, Inc. v. Verisign, Inc are about anticipation rather patentable weight matter. In addition, the controller functional/product processing recitation in the device claim(s) would not been given patentable weight because it is narrative in form. In re Fuller, 1929 C.D. 172; 388 O.G. 279; as well as, the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Accordingly, claims 1-7 stand rejected as stated above
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/DUNG T NGUYEN/Primary Examiner, Art Unit 2871
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