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 .
Election/Restrictions
Newly submitted claims 26-28 are directed to an invention that lacks unity of invention with the invention originally claimed for the following reasons:
Claims 26-28 require the probe array, lighting system, and objective lens of the invention originally claimed; however, they lack the collector lens of the invention originally claimed.
As was found in the both the restriction of 1/23/26 and the Non-final rejection of 4/9/26, the claimed probe array, lighting system, and objective lens of claim 1, and now of claims 26-28, is anticipated by Ng. As such, the collection of technical features shared between claim 1 and claims 26-28 is not a special technical feature.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 26-28 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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:
“the lighting system is configured to modulate a power of the actuation light beams to actuate the probes, and the lighting system is configured to modulate the power of some or all of the actuation light beams independently” in claim 2. The specification provides at least three structures that correspond to such a function: Acousto-optic modulators, electro-optic modulators, and power modulation integrated into the lasers.
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 § 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 8, 19, 24 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0117163 A1 [Ng] in view of US 6,884,981 B2 [Proksch].
Regarding Claim 1:
Ng teaches a probe microscope (Fig. 7, abstract) comprising:
a probe array comprising an array of probes, each probe comprising a cantilever and a probe tip (as shown in Fig. 7b below);
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a lighting system comprising a plurality of light sources, wherein each light source is configured to output a respective light beam (as shown in Fig. 7a below);
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and an objective lens configured to receive the light beams (Fig. 7 (44)) and focus each light beam onto the cantilever of a respective one of the probes (para 28).
However, Ng fails to teach a collector lens upstream of the objective lens and configured to collect the light beams from the light sources
Proksch teaches a probe microscope (abstract) comprising a collector lens arrangement (Fig. 2 (14, 15)) upstream of an objective lens (Fig. 2 (5)) and configured to collect multiple light beams (as shown in Fig. 2) in order to adjust and optimize angular displacement and widths of the beams (4:57-66). It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the lens arrangement of Proksch upstream of the objective lens of Ng. One would have been motivated to do so in order to adjust and optimize angular displacement and widths of the beams (Proksch 4:57-66).
Regarding Claim 8:
The modified invention of claim 1 teaches the probe microscope according to claim 1, wherein the light beams are detection light beams, the light sources are detection light sources (as shown in Ng Fig. 7 and described in Ng paras 30-33),
the probes are configured to reflect the detection light beams to generate sensing light beams (as shown in Ng Fig. 7 and described in Ng paras 30-33), and
the probe microscope further comprises a sensing system configured to receive the sensing light beams and determine positions of the probes from the sensing light beams (Ng paras 33-34).
Regarding Claim 19:
The modified invention of claim 1 teaches the probe microscope according to claim 1, wherein each light source comprises a light generator configured to generate and emit light. Ng paras 28, 50.
Regarding Claim 24:
Ng teaches a probe microscope (Fig. 7, abstract) comprising:
a probe array comprising an array of probes, each probe comprising a cantilever and a probe tip (as shown in Fig. 7b above);
a light generator array comprising an array of light generators, wherein each light generator is configured to generate and output a respective light beam (as shown in Fig. 7a above);
and an objective lens configured to receive the light beams (Fig. 7 (44)) and focus each light beam onto the cantilever of a respective one of the probes (para 28).
However, Ng fails to teach a collector lens upstream of the objective lens and configured to collect the light beams from the light sources
Proksch teaches a probe microscope (abstract) comprising a collector lens arrangement (Fig. 2 (14, 15)) upstream of an objective lens (Fig. 2 (5)) and configured to collect multiple light beams (as shown in Fig. 2) in order to adjust and optimize angular displacement and widths of the beams (4:57-66). It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the lens arrangement of Proksch upstream of the objective lens of Ng. One would have been motivated to do so in order to adjust and optimize angular displacement and widths of the beams (Proksch 4:57-66).
Allowable Subject Matter
Claims 2, 4-7, 9, and 25 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.
Response to Arguments
Applicant argues that Ng in view of Proksch fails to teach a collector lens, because Proksch fails to teach a lens that converts parallel beams into angularly separated beams. This is not persuasive. 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 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 claim describes the collector lens as “configured to collect light beams.” Simply looking at Fig. 2 of Proksch, it is clear that it achieves the function that is actually claimed.
Applicant argues that the lenses of Proksch serve a fundamentally different function than that of the claimed collector lens. This is not persuasive. Again, the claims describe the collector lens as “configured to collect light beams,” the lenses of Proksch clearly achieve this function.
Applciant argues that the lenses of Proksch are not configured to collect light beams from light source/generators because they are described as receiving light that was split into multiple beams by a DOE. This is not persuasive. There is no difference between light beams that originated separately and light beams that originated from splitting a single light beam. Applicant’s contention is purely rhetorical, and has no relationship with optical physics.
Applicant argues that one of ordinary skill in the art would not have been motivated to add the collector of Proksch to Ng because this would be contrary to Ng’s design philosophy. This is not persuasive. The addition of Proksch would not only improve Ng by allowing for the optimization of the beams, but also would do so within the confines of Ng’s design philosophy by doing so with minimal additional parts all while maintaining distinct beam paths.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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