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 August 11th, 2026 has been entered. Claims 7 and 14 have been canceled. Claim 20 has been added. The amendments were sufficient to overcome the 112(b) rejection previously set forth in the Non-Final Office Action mailed May 12th, 2026.
Response to Arguments
Applicant's arguments filed August 11th, 2026 have been fully considered but they are not persuasive.
Regarding the 103 rejections, applicant’s arguments have been fully considered and are appreciated. However, the examiner respectfully disagrees.
Applicant argues the “arc surface” is not disclosed or suggested because the arc surface enables the contact point to vary with the first adjustment element, which would not be within the level of ordinary skill in the art. However, examiner disagrees. "The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below)." There are many reasons one would modify the shape of the supporting frame to have an arc surface. For example, if the optical device had a circular shape, one could change the change of the supporting frame to accommodate the circular shape by having the supporting frame also have a circular shape, resulting in the supporting frame having an arc surface. Shimizu discloses the optical device can have different shapes and the supporting frame would conform to the shape of the optical device, see Figs. 7 and 12. Further, Blanding teaches a supporting frame with an arc surface to hold a circular optical device.
Applicant argues “the center of the optical device is spaced apart from where the first axis and the second axis meet” is not disclosed or suggested because Shimizu does not disclose this relationship in words and the drawings should not be relied upon in forming a basis for rejection. However, examiner disagrees. It has been held the drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979), see MPEP 2125. It has been held that “the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art.” In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977). See MPEP 2125. The drawings in Shimizu are not being relied upon to teach the scale or any numerical values or ranges. The drawings in Shimizu reasonably suggest the relative positions of each element to each other. Referring to Fig. 7 of Shimizu, the second and third adjusting elements 14c and 14e, are not positioned at the center of the optical device, which is made clear by the relative positions of 14d and 14f to the second and third adjusting elements and the optical device 14c, 14e, and 11. From Fig. 7 and ¶0036-¶0037, it is clear that the second and third axes do not pas through the center of the optical device. Therefore, the place where the first axis and the second axis meet must necessarily be spaced apart from the optical center of the device.
Applicant argues the currently applied prior art does not disclose all the limitations of new independent claim 20; specifically, applicant argues “the second axis and the third axis are coaxial” is not disclosed or suggested. However, examiner disagrees. The second axis and the third axis being coaxial is disclosed by Shimizu, see rejection below. Examiner additionally notes the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
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) 10-13, 15-16, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al. (JP H1028233 A), hereinafter Shimizu, in view of McHale et al. (US 20190353455 A1), hereinafter McHale, and further in view of Blanding et al. (US 20100110570 A1), hereinafter Blanding.
Regarding independent claim 10, Shimizu discloses an adjusting device (Fig. 7) for adjusting a location of a center of an optical device (11; Fig. 7), comprising:
a first adjusting element (14a; Fig. 7; ¶0018) which is movable along a first axis and is propped against the optical device (11) (Fig. 7);
a second adjusting element (14c; Fig. 7; ¶0018) which is movable along a second axis and is propped against the optical device (11) (Fig. 7);
a third adjusting element (14e; Fig. 7; ¶0018) which is movable along a third axis and is propped against the optical device (11) (Fig. 7);
wherein the optical device (11) comprises a supporting frame (12; Fig. 7; ¶0016) supporting the optical device (Fig. 7);
the first adjusting element (14a), the second adjusting element (14c) and the third adjusting element (14e) are propped against the supporting frame (12) to adjust the location of the center of the optical device (11) (Fig. 7);
a third tangent plane is tangent to the first adjusting element (14a) (third tangent plane would be a vertical line in Fig. 7 where 14a meets 12);
the third tangent plane and the first axis have a first included angle which is about ninety degrees (Fig. 7)
wherein the first axis passes through the center of the optical device (11) (Fig. 7);
wherein the center of the optical device (11) is spaced apart from where the first axis and the second axis meet (Fig. 7); and/or where the first axis and the third axis meet (Fig. 7).
Shimizu does not disclose the optical device comprises a transmissive display; the supporting frame comprises an arc surface against which the first adjusting element is propped; and the third tangent plane is tangent to the arc surface.
McHale teaches a similar optical system comprising a plurality of optical elements (506, 518, 520; Fig. 10; ¶0060) comprising an optical axis (Fig. 10) and an optical device (510; Fig. 10; ¶0072), wherein the optical device (510) comprises a transmissive display (510; Fig. 10; ¶0072) and a supporting frame supporting the transmissive display (510) (inherent that there is some kind of frame to hold the transmissive display). One would be motivated to use the adjustment device of Shimizu to adjust the transmissive display of McHale for the purpose of performing adjustment to align the transmissive display with the optical axis of the optical system (¶0004, ¶0009-¶0010 of Shimizu).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the adjustment device of Shimizu in the optical system of McHale for the purpose of performing adjustment to align the transmissive display with the optical axis of the optical system (¶0004, ¶0009-¶0010 of Shimizu).
McHale does not teach the supporting frame comprises an arc surface against which the first adjusting element is propped; and the third tangent plane is tangent to the arc surface.
However, Blanding teaches a similar optical system comprising an optical device (A; Fig. 5; ¶0030) which comprises a supporting frame (22; Fig. 4; ¶0030) and a transmissive display (it is implicit from ¶0030 “can be used to hold a lens, mirror, prism, film, diffraction grating, or other optical element along optical axis O” that it can hold a transmissive display), and further teaches adjusting elements (34; Fig. 5; ¶0031), wherein the supporting frame (22) comprises an arc surface against which the adjusting elements (34) are propped, tangent planes are tangent to the arc surface and the adjusting elements (34) (Fig. 5).
It has been held that a mere change in shape of an element is generally recognized as being with in the level of ordinary skill in the art when the change in shape is not significant to the function of the combination. In re Dailey 149 USPQ 47 (CCPA 1966). Shimizu additionally discloses the optical device can have different shapes and the supporting frame being the same shape as the optical device (for example see 11/12 in Fig. 7 vs. 31/32 in Fig. 12 and additionally see ¶0043 in which the optical device can have a circular shape). One would be motivated to have the supporting frame have an arc surface for the purpose of accommodating an optical device with a circular shape. This would then result in the third tangent plane being tangent to the arc surface.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shimizu in view of McHale to incorporate the supporting frame comprising an arc surface against which the first adjusting element is propped as suggested by Blanding for the purpose of accommodating an optical device with a circular shape (Figs. 4-5 of Blanding).
Regarding claim 11, Shimizu in view of McHale and further in view of Blanding discloses the adjusting device as claimed in claim 10, as set forth above. Shimizu further discloses: the first axis is a horizontal1 line (Fig. 7); the center of the optical device (11) is disposed apart from the second axis which is a vertical line (Fig. 7); the second adjusting element (14c) and the third adjusting element (14e) are movable in same direction or in opposite directions (Fig. 7; ¶0021).
Regarding claim 12, Shimizu in view of McHale and further in view of Blanding discloses the adjusting device as claimed in claim 10, as set forth above. Shimizu further discloses: the second axis and the third axis are coaxial (Fig. 7); the center of the optical device (11) is disposed apart from the second axis and the third axis (Fig. 7); the second axis and the third axis are vertical lines (Fig. 7).
Regarding claim 13, Shimizu in view of McHale and further in view of Blanding discloses the adjusting device as claimed in claim 10, as set forth above. Shimizu further discloses an optical system (1; Fig. 1; ¶0014), comprising: a plurality of optical elements (2, 4; Fig. 1; ¶0014) comprising an optical axis; the optical device as claimed in claim 10; and wherein the first adjusting element (14a), the second adjusting element (14c) and the third adjusting element (14e) are respectively moved along the first axis, the second axis and the third axis (Fig. 7; Fig. 3; ¶0021), so that the optical device (11) and the optical elements (2, 4) can be coaxial (¶0004, ¶0009).
Regarding claim 15, Shimizu in view of McHale and further in view of Blanding discloses the optical system as claimed in claim 13, as set forth above. Neither Shimizu nor McHale disclose the supporting frame further comprises a first cylindrical element and a second cylindrical element, central axes of the first cylindrical element and the second cylindrical element are parallel to the optical axis, and the second adjusting element and the third adjusting element are respectively propped against the first cylindrical element and the second cylindrical element.
Blanding further teaches a second and a third adjusting element (34; Fig. 5; ¶0031) and a first bearing element (48a; Figs. 4-5; ¶0032) and a second bearing element (48a; Figs. 4-5; ¶0032), and the second adjusting element (34) and the third adjusting element (34) are respectively propped against the first bearing element (48a) and the second bearing element (48a) (Figs. 4-5; ¶0032).
Blanding does not teach the bearing element is a cylindrical element and central axes of the first cylindrical element and the second cylindrical element are parallel to the optical axis. However, there are a only a few possibilities as to the shape of the bearing – a ball bearing or a cylindrical bearing. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007). Whether to use a ball bearing or a cylindrical bearing is a design choice and are functionally equivalent. Although a ball bearing is shown in Fig. 5 to perform x-y translation of the optical device, a cylindrical bearing with a central axis that is parallel to the optical axis would be able to perform the same x-y translation just as well.
Therefore, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shimizu in view of McHale and further in view of Blanding to incorporate the bearing element as taught by Blanding for the purpose of having a translation apparatus that exhibits reduced friction (¶0032 of Blanding) and to have the bearing be a cylindrical bearing with a central axis that is parallel to the optical axis since it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp.
Regarding claim 16, Shimizu in view of McHale and further in view of Blanding discloses the optical system as claimed as claims 5 and 15, as set forth above. Shimizu further discloses the second adjusting element (14c) and the third adjusting element (14e) are adjustment screws (¶0018). Neither Shimizu nor McHale disclose the first cylindrical element and the second cylindrical element are pins.
However, Blanding further teaches the first cylindrical element (48a) and the second cylindrical element (48a) are pins (as stated in the rejection for claim 15, the bearing 48a can be a cylindrical bearing, which can also be called a pin).
Therefore, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shimizu in view of McHale and further in view of Blanding to incorporate the bearing element as taught by Blanding for the purpose of having a translation apparatus that exhibits reduced friction (¶0032 of Blanding) and to have the bearing be a cylindrical bearing with a central axis that is parallel to the optical axis since it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp.
Regarding claim 19, Shimizu in view of McHale and further in view of Blanding discloses the optical system as claimed in claim 13, as set forth above. Shimizu further discloses: the optical elements (2, 4) comprise an objective lens group (4; Fig. 1; ¶0014) and an eyepiece group (2; Fig. 1; ¶0014) (implicit that the imaging optical system and the eyepiece would comprise lenses), an intersection of the first axis and the second axis is disposed within the optical device (11) (Fig. 7); another intersection of the first axis and the third axis is also disposed within the optical device (11) (Fig. 7).
Shimizu does not disclose the optical device comprises a transmissive display, and the objective lens group, the transmissive display and the eyepiece group are sequentially arranged along the optical axis.
However, McHale teaches the optical elements comprise an objective lens group (506; Fig. 10; ¶0060) and an eyepiece group (518, 520; Fig. 10; ¶0060), the optical device (510) comprises a transmissive display (510; Fig. 10; ¶0072), and the objective lens group (506), the transmissive display (510) and the eyepiece group (518, 520) are sequentially arranged along the optical axis (Fig. 10; ¶0072).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shimizu in view of McHale and further in view of Blanding to have incorporated the adjustment device of Shimizu in the optical system of McHale for the purpose of performing adjustment to align the transmissive display with the optical axis of the optical system (¶0004, ¶0009-¶0010 of Shimizu).
Regarding independent claim 20, Shimizu discloses an optical system (1; Fig. 1; ¶0014), comprising: a plurality of optical elements (2, 4; Fig. 1; ¶0014) comprising an optical axis; an optical device (11; Fig. 7). an adjusting device (Fig. 7) for adjusting a location of a center of an optical device (11; Fig. 7), comprising:
a first adjusting element (14a; Fig. 7; ¶0018) which is movable along a first axis and is propped against the optical device (11) (Fig. 7);
a second adjusting element (14c; Fig. 7; ¶0018) which is movable along a second axis and is propped against the optical device (11) (Fig. 7);
a third adjusting element (14e; Fig. 7; ¶0018) which is movable along a third axis and is propped against the optical device (11) (Fig. 7);
wherein the first axis passes through the center of the optical device (11) (Fig. 7);
wherein the center of the optical device (11) is spaced apart from where the first axis and the second axis meet (Fig. 7); and/or where the first axis and the third axis meet (Fig. 7);
wherein the first adjusting element (14a), the second adjusting element (14c) and the third adjusting element (14e) are respectively moved along the first axis, the second axis and the third axis (Fig. 7; Fig. 3; ¶0021), so that the optical device (11) and the optical elements (2, 4) can be coaxial (¶0004, ¶0009);
the optical device (11) comprises a supporting frame (12; Fig. 7; ¶0016) supporting the optical device (Fig. 7); the first adjusting element (14a), the second adjusting element (14c) and the third adjusting element (14e) are propped against the supporting frame (12) to adjust the location of the center of the optical device (11) (Fig. 7);
the second axis and the third axis are vertical lines (Fig. 7).
Shimizu does not disclose the optical device comprises a transmissive display; the supporting frame further comprises a first cylindrical element and a second cylindrical element, central axes of the first cylindrical element and the second cylindrical element are parallel to the optical axis, and the second adjusting element and the third adjusting element are respectively propped against the first cylindrical element and the second cylindrical element.
However, McHale teaches a similar optical system comprising a plurality of optical elements (506, 518, 520; Fig. 10; ¶0060) comprising an optical axis (Fig. 10) and an optical device (510; Fig. 10; ¶0072), wherein the optical device (510) comprises a transmissive display (510; Fig. 10; ¶0072) and a supporting frame supporting the transmissive display (510) (inherent that there is some kind of frame to hold the transmissive display).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the adjustment device of Shimizu in the optical system of McHale for the purpose of performing adjustment to align the transmissive display with the optical axis of the optical system (¶0004, ¶0009-¶0010 of Shimizu).
McHale is silent regarding the supporting frame, specifically McHale does not teach the supporting frame further comprises a first cylindrical element and a second cylindrical element, central axes of the first cylindrical element and the second cylindrical element are parallel to the optical axis, and the second adjusting element and the third adjusting element are respectively propped against the first cylindrical element and the second cylindrical element.
However, Blanding teaches a similar optical system comprising an optical device (A; Fig. 5; ¶0030) which comprises a supporting frame (22; Fig. 4; ¶0030) and a transmissive display (it is implicit from ¶0030 “can be used to hold a lens, mirror, prism, film, diffraction grating, or other optical element along optical axis O” that it can hold a transmissive display), and further comprises a second and a third adjusting element (34; Fig. 5; ¶0031) and a first bearing element (48a; Figs. 4-5; ¶0032) and a second bearing element (48a; Figs. 4-5; ¶0032), and the second adjusting element (34) and the third adjusting element (34) are respectively propped against the first bearing element (48a) and the second bearing element (48a) (Figs. 4-5; ¶0032).
Blanding does not teach the bearing element is a cylindrical element and central axes of the first cylindrical element and the second cylindrical element are parallel to the optical axis. However, there are a only a few possibilities as to the shape of the bearing – a ball bearing or a cylindrical bearing. It has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp. KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (2007). Whether to use a ball bearing or a cylindrical bearing is a design choice and are functionally equivalent. Although a ball bearing is shown in Fig. 5 to perform x-y translation of the optical device, a cylindrical bearing with a central axis that is parallel to the optical axis would be able to perform the same x-y translation just as well.
Therefore, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shimizu in view of McHale to incorporate the bearing element as taught by Blanding for the purpose of having a translation apparatus that exhibits reduced friction (¶0032 of Blanding) and to have the bearing be a cylindrical bearing with a central axis that is parallel to the optical axis since it has been held that where there are only a finite number of predictable identifiable solutions, it would have been obvious to a person of ordinary skill in the art to try the known options within his or her technical grasp.
Allowable Subject Matter
Claims 1-6 and 8-9 are allowed.
Claims 17-18 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art taken either singly or in combination fails to anticipate or fairly suggest the features/limitations of applicant's independent claims, in such a manner that a rejection under 35 U.S.C. § 102 or § 103 would be proper.
Regarding independent claim 1, the closest prior art taken either singly or in combination fails to anticipate or fairly suggest the adjusting device as claimed. Specifically, none of the prior art either alone or in combination disclose or teach of an adjusting device specifically including, as the distinguishing features in combination with the other limitations, a first adjusting element movable along a first axis, a second adjusting element movable along a second axis, a third adjusting element movable along a third axis, a supporting frame comprises a first cylindrical element and a second cylindrical element, central axes of the first cylindrical and second cylindrical elements are parallel to an optical axis of the optical elements, a first tangent plane is tangent to the first cylindrical element and the second adjusting element, a second tangent plane is tangent to the second cylindrical element and the third adjusting element, and the first, second, and third adjusting elements are respectively moved along the first, second, and third axes, so that normal lines of the first tangent plane and the second tangent plane intersect the first axis at the center of the optical device. Specifically, the limitations of claim 7, previously indicated as having allowable subject matter, and all of the relevant limitations of the claims upon which claim 7 was dependent have been incorporated into independent claim 1; examiner agrees with the reasons set forth in the remarks of August 11th, 2026 on page 12 last paragraph – page 13 third paragraph.
Regarding claim 17, the closest prior art taken either singly or in combination fails to anticipate or fairly suggest the adjusting device as claimed. Specifically, none of the prior art either alone or in combination disclose or teach of an adjusting device specifically including, as the distinguishing features in combination with the other limitations, a first tangent plane is tangent to the first cylindrical element and the second adjusting element, a second tangent plane is tangent to the second cylindrical element and the third adjusting element; the first adjusting element, the second adjusting element and the third adjusting element are respectively moved along the first axis, the second axis and the third axis, so that normal lines of the first tangent plane and the second tangent plane intersect the first axis at the center of the optical device, as noted previously in the Non-Final Office Action mailed May 12th, 2026. Claim 18 is dependent on claim 17.
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 NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATASHA NIGAM/Examiner, Art Unit 2872 September 16th, 2026
/George G. King/Primary Examiner, Art Unit 2872
1 Regarding the terms “horizontal” and “vertical” it is not interpreted to mean a particular direction since no frame of reference is established, however they are interpreted to be perpendicular to each other.
Prosecution Insights