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 with traverse of Invention I in the reply filed on 12/19/2025 is acknowledged and found persuasive.
Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement between Invention III and Inventions I and II, the election has been treated as an election without traverse (MPEP § 818.01(a)). The requirement is still deemed proper and is therefore made FINAL.
Claims 1-8 are examined herein.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/16/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1-8 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.
Claims 1 and 8 recite “a system controller configured to … select one of the first oscillator structure or the second oscillator structure as the master oscillator structure having the lower frequency indicated by the comparison result, and select one of the first oscillator structure or the second oscillator structure as the slave oscillator structure having a higher frequency indicated by the comparison result”. The specification does not disclose the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function (i.e. selection the oscillator structure as the master oscillator structure and as the slave oscillator structure) in sufficient detail. One of ordinary skill in the art cannot reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) The specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention and thus the claimed invention corresponds to a lack of written description.
In the Specification [0106], Applicant discloses:
“Selection of which MEMS mirror should be the master and which should be the slave in any arbitrary pair of MEMS mirrors could be done with the following procedure: at first run both MEMS mirrors in the amplitude control mode and select the master MEMS as the one with a lower frequency. This will automatically guarantee that the slave MEMS will have lower amplitude at the same frequency if when running in sync mode with the master due to a linear frequency-amplitude response curve.”
Applicant has clearly disclosed the first steps of selecting an oscillator as a slave/master oscillator (i.e. running mirrors, detecting frequencies, comparing frequencies) but then uses the self-referential and unclear step of “selecting” to define the selecting process. In both terms of the algorithm and the structure of the system controller, it is unclear what step or steps compose “selecting”. In [0111], Applicant discloses adjusting a phase error signal PE based on a determination “which of the two position signals has a zero-crossing earlier or more often (e.g. which has a higher frequency)”. Applicant discloses that the phase-frequency detector may increments a value of the phase error signal indicating the phase/frequency should be increased, for example. This process, however, is associated with a “slave oscillator” that may have a faster or slower frequency than the master oscillator and thus it does not appear to correspond to the claimed invention in which a system controller selects which oscillator is a slave oscillator. In other words, it does not appear that “select” in the claimed invention corresponds to the algorithmic steps of incrementing values of the phase error signal to increase phase/frequency as disclosed. In summary, the structural and algorithmic solution to the claimed selection is not disclosed with sufficient detail to evidence possession of the claimed apparatus at the time of invention.
Claims 2-7 are rejected as dependent claims failing to cure the deficiencies of the base claim.
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 recites “wherein a first one of the first oscillator structure and the second oscillator structure is configured as a master oscillator structure and a second one of the first oscillator structure and the second oscillator structure is configured as a slave oscillator structure that follows the master oscillator structure” and “select one of the first oscillator structure or the second oscillator structure as the master oscillator structure having the lower frequency indicated by the comparison result, and select one of the first oscillator structure or the second oscillator structure as the slave oscillator structure having a higher frequency indicated by the comparison result”. These limitations are mutually exclusive as an element “configured as” something does not require selection as that something. A person having ordinary skill in the art would understand if either of two oscillators is capable of being master or slave and the system controller determines which of the two oscillators is master and slave, though the invention is not so-limited. A person having ordinary skill in the art would understand if one of the oscillators is at first a master oscillator and subsequently determined to have a lower frequency and thus effectively becomes a slave oscillator for still further phase and/or frequency adjustment, though the invention is not so-limited. A person having ordinary skill in the art would understand if one of the oscillators is and will always be a master oscillator and the system controller has no a prior knowledge of which oscillator is the master and so subsequently determines which of the two oscillators is master, though the invention is not so-limited. The claim language defines that one of the oscillators is configured as the master and while, as stated above, an artisan would understand measuring frequencies and determining a lower frequency, the metes and bounds of selecting one of the oscillators as master and selecting the other oscillator as slave are not clear. It is noted that the metes and bounds of “select” alone is indefinite, as discussed below, and may obfuscate the metes and bounds of interpreting the claimed invention in light of both recitations (e.g. configured an oscillator as master and selecting an oscillator as a master). Claim 8 recites analogous language regarding “master oscillation” and “slave oscillation”, as opposed to “master oscillator” and “slave oscillator”, and is indefinite for analogous reasoning.
Claims 2-7 are rejected as dependent claims failing to cure the deficiencies of the base claim.
Claims 1 and 8 recite “a system controller configured to … select one of the first oscillator structure or the second oscillator structure as the master oscillator structure having the lower frequency indicated by the comparison result, and select one of the first oscillator structure or the second oscillator structure as the slave oscillator structure having a higher frequency indicated by the comparison result”. The specification does not disclose the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function (i.e. selection the oscillator structure as the master oscillator structure and as the slave oscillator structure) in sufficient detail. One of ordinary skill in the art cannot reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015). The specification does not provide a disclosure of sufficient corresponding structure, materials, or acts that perform the entire claimed function of the system controller and therefore the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the 35 U.S.C. 112(b).
In the Specification [0106], Applicant discloses:
“Selection of which MEMS mirror should be the master and which should be the slave in any arbitrary pair of MEMS mirrors could be done with the following procedure: at first run both MEMS mirrors in the amplitude control mode and select the master MEMS as the one with a lower frequency. This will automatically guarantee that the slave MEMS will have lower amplitude at the same frequency if when running in sync mode with the master due to a linear frequency-amplitude response curve.”
Applicant has clearly disclosed the first steps of selecting an oscillator as a slave/master oscillator (i.e. running mirrors, detecting frequencies, comparing frequencies) but then uses the self-referential and unclear step of “selecting” to define the selecting process. In both terms of the algorithm and the structure of the system controller, it is unclear what step or steps compose “selecting”. In [0111], Applicant discloses adjusting a phase error signal PE based on a determination “which of the two position signals has a zero-crossing earlier or more often (e.g. which has a higher frequency)”. Applicant discloses that the phase-frequency detector may increments a value of the phase error signal indicating the phase/frequency should be increased, for example. This process, however, is associated with a “slave oscillator” that may have a faster or slower frequency than the master oscillator and thus it does not appear to correspond to the claimed invention in which a system controller selects which oscillator is a slave oscillator. In other words, it does not appear that “select” in the claimed invention corresponds to the algorithmic steps of incrementing values of the phase error signal to increase phase/frequency as disclosed. In summary, the structural and algorithmic solution to the claimed selection is not disclosed with sufficient detail (i.e. corresponding structure, materials, or acts that perform the entire claimed function of the system controller) and therefore the applicant has in effect failed to particularly point out and distinctly claim the invention.
Claims 2-7 are rejected as dependent claims failing to cure the deficiencies of the base claim.
Additionally, Claims 6 and 7 recite “the frequency of the oscillation of the master oscillator structure has a predefined fractional relationship with the frequency of the oscillation of the slave oscillator structure, and wherein the predefined fractional relationship is not equal to 1”. A person having ordinary skill in the art would understand the language to have mutually exclusive interpretations, one of which is inconsistent with the limitations of the base claim 1. The claimed “fractional relationship” does not clearly associate the fractional factor to either the master oscillator or the slave oscillator, and thus the claim appears to either permit that (1) the master oscillator frequency is a fraction of the slave oscillator frequency or (2) the slave oscillator frequency is a fraction of the master oscillator frequency. Base Claim 1 requires the slave oscillator frequency to be the lower of two frequencies, and as frequency may only be represented as a positive number, Claim 1 requires the slave oscillator frequency to be a fraction of the master oscillator frequency. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As noted in the 35 U.S.C. 112(b) rejection above, Claims 6 and 7 do not further limit the base claim as the only interpretation consistent with the base claim is redundant and already required in Claim 1. Therefore Claims 6 and 7 cannot be said to further limit the base claim. 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.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US PG Pub. 2009/0256829, US Pat. No. 8,218,214, US Pat. No. 9,523,909, and US Pat. No. 10,122,979 each disclose multi-axis oscillation systems in which frequency and/or phase detection is relied upon for synchronization of oscillations to effectuate mirror control.
Examiner Comments
The above-raised issues pre-empt further examination on the merits as the metes and bounds of the claim cannot be ascertained for a determination of allowability.
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.
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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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/CHRISTOPHER STANFORD/Primary Examiner, Art Unit 2872