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
Applicant’s election without traverse of claims 1-5 and 14-17 in the reply filed on 5/20/2026 is acknowledged.
Claim Interpretation
Regarding claims 5 and 14-17, a claimed apparatus must be distinguished from the prior art apparatus on the basis of structure. Therefore, the patentability of an apparatus claim depends only on the claimed structure, not on the use or the purpose of that structure, Catalina Marketing Int’l., Inc. v. Coolsavings.com Inc., 289 F.3d 801, 809 (Fed. Cir. 2002), or the function or result of that structure. See In re Schrieber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Gardiner, 171.F2d 313, 315-16 (CCPA 1948).
Language in an apparatus claim directed to the function, operation, intent of use, and materials upon which these apparatus components work that does not structurally limit the apparatus components or patentably differentiate the claimed apparatus from an otherwise identical prior art apparatus will not support patentability. See, e.g. In re Rishoi, 107 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 940 (CCPA 1963); In re Ludtke, 441 F.2d 660,663-64 (CCPA 1971); In re Yanush, 477 F.2d 958, 959 (CCPA 1973).
A limitation of “the capsule is configured to maintain a substantially constant pressure within the cavity over a range of operating temperatures of the optical lens” is directed to intended use, function, and/or operation of the “optical element” and “capsule” Claims 5 and 14.
The limitation is given patentable weight insomuch as the language requires the structure be capable of performing the use, function, and/or operation. Since the applied reference(s) teach identical structures to those claimed, the structures are presumed to be capable of the intended use, function, and/or operation.
The burden shifts to the Applicant to rebut the presumption that the structure of the applied reference(s) is not capable of the intended use, function, and/or operation.
In this instance, the configuration of the capsule to maintain cavity pressure over a temperature range is not restricted to the embodiment(s) disclosed by Applicant. The prior art structures with capsules providing fluid communication into the cavity are necessarily capable of the claimed maintenance of pressure over a temperature range as the control of the amount of liquid within the cavity provides the capability. In [0045]-[0047], Applicant discloses a specific structure for performing the claimed function that is absent an electrical control system. With a lens formed of a rigid material, changes to the liquid volume from changes in temperature are accommodated by the flexible capsule. In Task, the reservoir 30 is in fluid communication with the lens and pump 31 provides the structure capable of accommodating volume changes based on temperature. Depicted as a plunger 31 or otherwise described as a “squeezable flexible bulb” (col. 3, ll. 11-26), the reservoir and pump are “configured to maintain a substantially constant pressure within the cavity over a range of operating temperatures of the optical lens”.
Further, it is noted that Applicant has not provided an embodiment that would be understood by a person having ordinary skill in the art to “maintain a constant pressure” in an absolute sense. In addition to the inherent work to move liquids having a specific gravity relative to the lens within a gravitational field, the elasticity of the disclose capsule wall will necessarily limit the degree to which pressure change is nearly zero. For this reason, the phrase “maintain a constant pressure” will be understood to require a near-zero change in pressure as would be reasonable to a person having ordinary skill in the art.
Claim Rejections - 35 USC § 112
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 3 is 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.
Claim 3 recites the limitation "the second end" in Line 2. There is insufficient antecedent basis for this limitation in the claim.
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 1-5 and 14-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 5,973,852 to Task (hereinafter Task).
Regarding claim 1, Task discloses an optical lens (Figs. 1-4), comprising: an aspheric-shaped shell (“membrane 15 of FIGS. 1-4 or one or both of membranes 53,55 of FIGS. 5,6 may be replaced with a multiple elastic membrane stack including one or more annularly shaped disks in the form of a membrane assembly that expands (bulges) in a non-spherical manner to produce an aspheric adjustable lens”, Figs. 1-4; col. 4, ll. 31-59) formed of an optical material (membrane 15, Figs. 1-4; col. 4, ll. 31-59); an optical plate (plate 13, Figs. 1-4; col. 4, ll. 31-59) connected to the aspheric-shaped shell (Figs. 1-4); and a viscous fluid fluidically sealed in a cavity between the aspheric-shaped shell and the optical plate (“Fluid 19 may comprise any suitable substantially transparent fluid having known index of refraction”, Figs. 1-4; col. 2, ln. 49-4, ln. 7 & col. 4, ll. 31-59).
Regarding claim 2, Task discloses the optical plate is bonded to a circumferential region of the aspheric-shaped shell (Figs. 1-4; col. 4, ll. 31-59) and wherein a portion of the circumferential region of the aspheric-shaped shell is spaced apart from the optical plate by a spacing (Figs. 1-4).
Regarding claim 3, Task discloses a capsule (conduit 29, reservoir 30, Figs. 1a-1) attached to the second end of the aspheric shell within the spacing (Figs. 1a-1), wherein the capsule is in fluid communication with the viscous fluid (Fig. 1a-1).
Regarding claim 4, Task discloses the capsule is configured to transport the viscous fluid into and out of the cavity based upon a temperature change of the optical lens (Figs. 1a-1; col. 3, ll. 11-43). Note: The language “based upon a temperature change of the optical lens” neither requires an automated function/structure for transporting fluid nor a particular algorithmic solution governing a controller in performing the step. This language is interpreted merely as a intended use of the capsule and as such, the claimed structure is anticipated by an identical structure capable of performing the recited function. Examiner recommends limiting the claimed invention to only the specific structure or operation disclosed in the Specifications.
Regarding claim 5, Task discloses the capsule is configured to maintain a substantially constant pressure within the cavity over a range of operating temperatures of the optical lens (Figs. 1a-1; col. 3, ll. 11-43). Note: The language “configured to maintain a substantially constant pressure within the cavity over a range of operating temperatures of the optical lens” neither requires an automated function/structure for transporting fluid nor a particular algorithmic solution governing a controller in performing the step. This language is interpreted merely as a intended use of the capsule and as such, the claimed structure is anticipated by an identical structure capable of performing the recited function. Examiner recommends limiting the claimed invention to only the specific structure or operation disclosed in the Specifications.
Regarding claim 14, Task discloses a system for maintaining pressure within an optical element, comprising: an optical lens (Figs. 1-4) comprising: an aspheric-shaped shell (“membrane 15 of FIGS. 1-4 or one or both of membranes 53,55 of FIGS. 5,6 may be replaced with a multiple elastic membrane stack including one or more annularly shaped disks in the form of a membrane assembly that expands (bulges) in a non-spherical manner to produce an aspheric adjustable lens”, Figs. 1-4; col. 4, ll. 31-59) formed of an optical material (membrane 15, Figs. 1-4; col. 4, ll. 31-59); an optical plate (plate 13, Figs. 1-4; col. 4, ll. 31-59) connected to the aspheric-shaped shell; and a viscous fluid (“Fluid 19 may comprise any suitable substantially transparent fluid having known index of refraction”, Figs. 1-4; col. 2, ln. 49-4, ln. 7 & col. 4, ll. 31-59) fluidically sealed in a cavity between the aspheric-shaped shell and the optical plate; and a capsule (conduit 29, reservoir 30, Figs. 1a-1) attached to the optical lens, the capsule includes the viscous fluid, wherein the capsule is configured to maintain a constant pressure within the cavity between the aspheric-shaped shell and the optical plate over a range of operating temperatures of the optical lens (Figs. 1a-1; col. 3, ll. 11-43). Note: The language “based upon a temperature change of the optical lens” neither requires an automated function/structure for transporting fluid nor a particular algorithmic solution governing a controller in performing the step. This language is interpreted merely as a intended use of the capsule and as such, the claimed structure is anticipated by an identical structure capable of performing the recited function. Examiner recommends limiting the claimed invention to only the specific structure or operation disclosed in the Specifications.
Regarding claim 15, Task discloses the capsule is configured to maintain a constant pressure within the cavity between the aspheric-shaped shell and the optical plate by transport of the viscous fluid into and out of the cavity based upon a temperature change of the optical lens (Figs. 1a-1; col. 3, ll. 11-43). Note: The language “configured to maintain a substantially constant pressure within the cavity over a range of operating temperatures of the optical lens” neither requires an automated function/structure for transporting fluid nor a particular algorithmic solution governing a controller in performing the step. This language is interpreted merely as a intended use of the capsule and as such, the claimed structure is anticipated by an identical structure capable of performing the recited function. Examiner recommends limiting the claimed invention to only the specific structure or operation disclosed in the Specifications.
Regarding claim 16, Task discloses the optical plate is bonded to a circumferential region of the aspheric-shaped shell, and wherein a portion of the circumferential region of the aspheric-shaped shell is spaced apart from the optical plate by a spacing comprising a portion of the capsule (Figs. 1A-1).
Regarding claim 17, Task discloses the optical lens comprises a spacer (“Inlet opening 27 is defined in a wall of housing 11”, Figs. 1a-1) disposed between the circumferential region of the aspheric-shaped shell and the optical plate, and wherein a portion of the capsule is disposed within a channel (conduit 29, reservoir 30, Figs. 1a-1) formed in the spacer.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pat. No. 6,188,526 to Sasaya discloses a liquid-filled lens having an optical plate and convex shell in which reservoirs in fluid communication such that pressure control is automatedly activated based on temperature changes (Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J STANFORD whose telephone number is (571)270-3337. The examiner can normally be reached 8AM-4PM PST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/CHRISTOPHER STANFORD/Primary Examiner, Art Unit 2872
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