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 Arguments
In view of the modification of the claims from method claims to system claims, the previous Double Patenting Rejections are withdrawn and an updated Double Patenting rejection is set forth below with respect to 12,004,842.
In view of the amendments made to the claims, the previous 112(b) rejection is withdrawn and a modified 112(b) Rejection is set forth below.
In view of the amendments, the previous 103 Rejection is withdrawn.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “means, coupled to the means for generating, for receiving” in claim 1. Additionally, the claim recites “means for generating a plurality of image frames” and then recites “the rotary junction” in line 6. Based on the specification, the “rotary junction” is the structure for the “means for generating a plurality of image frames”. Therefore, claims 1-4 recite sufficient structure, materials, or acts to entirely perform the recited function and therefore cannot be interpreted under 112(f). Claim 5 recites “means for determining” and then recites “signal from one or more sensors” and therefore provide sufficient structure. It is not clear from claim 6 if “mean for initiating acquisition of the image to align orientation” is referring to the same “means…to receive rotational position signals and align an orientation” (from claim 1). From the specification, the DAQ can align the image data received from the optical engine [0026]. Therefore, it is not clear if claim 6 is referring to a different structure from claim 1 to align the image data. Claims 2-8 also recite sufficient structure with respect to the “means for generating comprises a fiber optic rotating junction” and therefore cannot be interpreted under 112(f).
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-8 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.
Claim 1 limitation “means, coupled to the means for generating, for receiving” has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because there two “means” terms that are combined together or double “means” structures that are combined. The claim limitation uses the word “means” or a generic placeholder coupled with functional language, but it is modified by some structure or material that is ambiguous regarding whether that structure or material is sufficient for performing the claimed function. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
It is suggested claim language be modified appropriately with respect to the “means” plus function limitation to properly invoke 112(f). Claims 2-8 stand rejected due to lack of additional clarity with respect to the indefinite language in claim 1.
Claim 1 recites the limitation "the rotary junction" in line 6. Claim 1 makes no reference to “a rotary junction” as the language is directed to “means for generating a plurality of image frames” There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites “means….for receiving the image frames” in lines 9-10 and recites “means…for receiving the rotational position signals” in lines 12-13. There are 2 references to “means…for receiving”. It is not clear from the claim language if the claim is directed to two different “means” or structures for receiving or the same structure. Claim 4 makes reference to “means for receiving” and therefore it is not clear which receiving structure is the claim referring to with respect to claim 1. Upon reviewing the specification, the “optical engine” is the structure used to receive the image frames and the ”data acquisition system” is the structure used to receive the rotational position signals. Therefore, it is suggested claim language be clarified with respect to the “means…for receiving” in line 9 and line 12 of claim 1.
Claim 6 recites “mean for initiating…to align orientation…”. It is not clear from claim 6 if “mean for initiating acquisition of the image to align orientation” is referring to the same “means…to receive rotational position signals and align an orientation” (from claim 1). From the specification, the DAQ can align the image data received from the optical engine [0026]. Therefore, it is not clear if claim 6 is referring to a different structure from claim 1 to align the image data.
Claims 7 and 8 recite “method of claim 1” and “method of claim 7”. Claim 1 is a “system” claim and therefore claim 7 and 8 should not be directed to “method” claims.
Claim 6 includes the term “mean for initiating acquisition of the image”. It is suggested “mean” be modified to “means”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,004,842. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are directed to a “rotary imaging system for imaging a sample, the system comprising: a rotary junction that during operation generates a plurality of image frames of the sample and angular rotational position signals, wherein each angular rotational position signal corresponds to an image frame within a plurality of the image frames and each rotational position signal is generated based on a known position of the rotary junction such that acquisition of each image frame is synchronized to the corresponding known position of the rotary junction; an optical engine coupled to the rotary junction to receive the image frames acquired using the rotary junction of the rotary imaging system; a data acquisition system coupled to the rotary junction to receive the rotational position signals and align an orientation of the image frames based on the angular rotational position signals, wherein synchronizing acquisition comprises synchronizing acquisition of a first one of the plurality of image frames with a first one of the rotational position signals and synchronizing acquisition of a second one of the plurality of image frames with a second one of the rotational position signals” (similar to claim 1 of current application). The current application is directed to “means-plus-function” language while the patented claim 1 is specific to a “rotary junction”, “an optical engine”, and “data acquisition system”. Claim 2 of the patent is directed to “the rotary junction is a fiber optic rotating junction (FORJ) and (ii) the image is acquired using the FORJ, and (iii) the data acquisition system is capable of determining a measure of angular rotation corresponding to the image from an indication of a rotation speed of the FOR” (similar to claim 2 of current application). Claim 3 of the patent is directed to “the rotary junction is a fiber optic rotating junction (FORJ) and (ii) the image is acquired using the FORJ, and the set of determining a measure of the angular rotation corresponding to the image comprises receiving an indication of a position of the FORJ” (similar to claim 3 of current application). Claim 4 of the patent is directed to “the image is acquired using a fiber optic rotating junction (FORJ), and (iii) the data acquisition system is capable of determining a measure of the angular rotation corresponding to the image from an indication of a rotational speed and a position of the FORJ” (similar to claim 4 of current application). Claim 5 of the patent is directed to “the data acquisition system is capable of determining an indication of the rotation speed and the position of the FORJ from a signal from one or more sensors operably coupled to the FORJ, the signal corresponding to a fixed point of the rotation of the FORJ” (similar to claim 5 of current application). Claim 6 of the patent is directed to “initiating acquisition of the image, wherein to align orientation of the image comprises to synchronize initiating acquisition of each of the images based on respective determined measures of angular rotation” (similar to claim 6 of current application). Claim 7 of the patent is directed to “ the signal is an optical signal and the rotary imaging system is an optical coherence tomography (OCT) system” (similar to claim 7 of current application). Claim 8 of the patent is directed to “the OCT system is a frequency-domain OCT system” (similar to claim 8 of current application).
The patented claims are more specific to a “rotary junction”, “an optical engine”, and “data acquisition system” and therefore anticipates the claims of current application.
An updated search has not resulted in additional relevant prior art.
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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BR
/BAISAKHI ROY/ Primary Examiner, Art Unit 3797