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 .
Response to Amendment
The amendment filed 8/14/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
In claim 1: “wherein the stream of light is a combined light source, wherein the laser module separates the combined light source into specific colors, wherein the combined light source is a constant stream of light” and “wherein the diffractive optical element produces a long, narrow beam of light, wherein said long, narrow beam of light extends from the ground surface to a top surface of a rail car” (newly introduced on page 9 lines 4-19 of the Specification submitted 8/14/2025).
Lines 4-25 on page 9 of the Specification submitted 8/14/2025.
Applicant is required to cancel the new matter in the reply to this Office Action.
Response to Arguments
Applicant's arguments filed 08/14/2025 have been fully considered but they are not persuasive.
The Applicant’s first point (page 2 of remarks) amends claim 1 to properly overcome the 112 rejection. The rejection is therefore withdrawn.
The Applicant’s second point (page 3 of remarks) regarding array of lights, Claim 1 recites “a combined light source” and “laser module separates the combined light source into specific colors”, it is unclear how this is being performed as a laser module would not “separate the combined light source into specific colors”, rather it appears that the laser modules emit specific colors which form “the combined light source”, i.e. an array of lights is used. Tsikos uses a plurality of lasers i.e. “an array of lights” which can be of different colors, thus forming a “combined light source”.
The Applicant’s third point (page 3-4 of remarks) regarding diffractive optical elements, Tsikos teaches a diffractive optical element (16 Fig. 1I-10A), wherein the diffractive optical element bends the light as it exits the collimator ([0046] teaches cylindrical-concave lens to converge beam linearly to project a laser line), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “an intense beam of light that is both narrow and long with shadows on the side of the light stream”, “the snachions”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The Applicant’s fourth point (page 3-4 of remarks) regarding color applications, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., color applications) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Additionally, in response to applicant's argument that “the use of red will detect the presence of oil or rust”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 6 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.
Claim 1 recites the following: “wherein the stream of light is a combined light source, wherein the laser module separates the combined light source into specific colors, wherein the combined light source is a constant stream of light”, this language is not described in the Specification and it is unclear how this would be executed.
Claims 2-4, 6 are rejected for their dependency on base claim 1.
Claims 1-4 and 6 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.
As to claims 1-4 and 6, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).
Claims 1-4, 6 are directed to “A device” AND “method to use", which creates confusion as to if direct infringement occurs when one creates a system that captures high resolution images of a moving train using laser light or when one actually uses the system to perform the capturing of high resolution images of a moving train using laser light.
As to claims 4 and 6, it is unclear how the speed of the train is being calculated, as there is no element tied to performing this action.
Claim 1 recites “wherein the stream of light is a combined light source, wherein the laser module separates the combined light source into specific colors, wherein the combined light source is a constant stream of light”. It is unclear what is meant by this as the laser module does not appear to “separate the combined light into specific colors” rather it appears that there are multiple lasers that emit different colors. Further “a constant stream of light” is confusing as it is not understood if this means a continuous wave light source, a source that does not pulse or some other type of light source.
Claim 1 recites “the ground surface”, this claim limitation lacks antecedent basis.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20030042303 A1 (Tsikos).
As to claim 1, Tsikos teaches a device to capture high resolution images of a moving train using laser light for rail car inspection ([0003] teaches a device to capture images of moving objects, [1963] teaches trains running on tracks passing through laser scanning tunnel), and method to use (Abstract teaches methods and systems), which is comprised of:
a laser module ([0368] teaches laser illumination arrays), wherein the laser module produces a stream of light (Fig. 1D),
wherein the stream of light is a combined light source (Abstract teaches each PLIM are combined to produce composite laser beam),
wherein the laser module separates the combined light source into specific colors ([0290] teaches visible laser diodes of different color producing wavelengths),
wherein the combined light source is a constant stream of light ([0150] teaches the VLDs are continually operated),
fiber optic cable ([1082] teaches fiber optic array, Fig. 1I-17D & E), wherein the laser module is connected to fiber optic couplers ([1082], Fig. 1I-17D & E)),
fiber optic cable couplers ([1082] teaches cylindrical lens array optically interfaced with fiber optic array 811 Figs. 1I-17C),
collimator (Fig. 1D collimating lens 15) , wherein the collimator narrows the beam of light that is produced by the laser module [0880] (Fig. 1D, 1E1),
diffractive optical element (16 Fig. 1I-10A), wherein the diffractive optical element bends the light as it exits the collimator ([0046] teaches cylindrical-concave lens to converge beam linearly to project a laser line),
wherein the diffractive optical element produces a long, narrow beam of light ([0046] teaches cylindrical-concave lens to converge beam linearly to project a laser line),
wherein said long, narrow beam of light extends from the ground surface to a top surface of a rail car (a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The device of Tsikos is capable of being positioned in such a way that the beam of light would extend from the ground surface to a top surface of a rail car.),
a plurality of cameras (Fig. 28 shows plurality of cameras), wherein the plurality of cameras capture the images of the moving train ([0054] teaches camera is used for image formation and detection of object, [1963] teaches trains).
As to claim 2, a device to capture high resolution images of a moving train using laser light for rail car inspection and method to use as described in Claim 1,
wherein the plurality of cameras are line scan cameras ([0884] teaches line scan cameras).
As to claim 3, a device to capture high resolution images of a moving train using laser light for rail car inspection and method to use as described in Claim 1 wherein the plurality of cameras are area scan cameras ([209] teaches 2-D (area-type) image detection array).
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.
Claim(s) 4, 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 20030042303 A1 (Tsikos).
As to claim 4, Tsikos teaches a device to capture high resolution images of a moving train using laser light for rail car inspection and method to use as described in Claim 1 which is comprised of the following steps:
determining the speed of a train ([0285] teaches velocity data),
calibrating the shutter speed of a plurality of cameras ([0102] teaches the planar laser illumination beam is temporal intensity modulated prior to target object illumination employing high-speed beam gating/shutter principles, [0203] teaches shutters for detection array).
emitting the light from a single laser module (Fig. 1F shows microcontroller 720 controlling the VLD drivers, [1058] teaches programmable current source for each VLD, i.e. one laser module could be operated at a time),
passing the light through a collimator (Fig. 1D collimating lens 15),
passing the light through a diffractive optical element (16 Fig. 1I-10A), wherein the diffractive optical element bends the light as it exits the collimator ([0046] teaches cylindrical-concave lens to converge beam linearly to project a laser line),
capturing the image of the moving train as it passes through a portal ([1963] teaches trains running on tracks passing through laser scanning tunnel).
Tsikos is silent to: calibrating the shutter speed of a plurality of cameras based on the speed of the train.
However, Tsikos teaches controlling the ouput optical power of the VLDs based on the speed of the objects [0155], therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Tsikos to include calibrating the shutter speed of the cameras based on the speed of the objects to ensure clear, sharp images are obtained.
As to claim 6, Tsikos teaches a device to capture high resolution images of a moving train using laser light for rail car inspection and method to use as described in claim 1 which is comprised of the following steps: ([0003] teaches a device to capture images of moving objects, [1963] teaches trains running on tracks passing through laser scanning tunnel) which is comprised of the following steps :
determining the speed of a train ([0285] teaches velocity data),
calibrating the shutter speed of a plurality of cameras ([0102] teaches the planar laser illumination beam is temporal intensity modulated prior to target object illumination employing high-speed beam gating/shutter principles, [0203] teaches shutters for detection array).
emitting the light from multiple laser modules ([0368] teaches laser illumination, Fig. 1F shows plurality of laser modules 11),
passing the light stream from the individual laser modules through a collimator (Fig. 1E2, focusing lens 15),
passing the light from each of the collimators through a diffractive optical element (Fig. 1E2 shows focusing lens 15 and cylindrical lens 16, [896]),
capturing the image of the moving train as it passes through a portal ([1963] teaches trains running on tracks passing through laser scanning tunnel).
Tsikos is silent to: calibrating the shutter speed of a plurality of cameras based on the speed of the train.
However, Tsikos teaches controlling the ouput optical power of the VLDs based on the speed of the objects [0155], therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Tsikos to include calibrating the shutter speed of the cameras based on the speed of the objects to ensure clear, sharp images are obtained.
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 Maya Hendija whose telephone number is (571)272-0269. The examiner can normally be reached M-F 08:00-16:00 (PST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached at (571) 272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAYA HENDIJA/Examiner, Art Unit 2877
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877