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
Applicant's arguments filed 27 July 2026 have been fully considered but they are not persuasive. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Please see response to arguments below in the present Office action.
Applicant’s arguments with respect to claim(s) 1, and 3-7 have been considered but are moot because the new ground of rejection does not rely on the same reference(s) applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to the applicant's argument that "37 C.F.R. § 1.83(a) itself provides that conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention…See specification at paragraphs [0092] and [0108]. Detailed illustration of these conventional components is not essential to an understanding of the claimed invention," the Examiner traverses. Examiner reminds the applicant that, pursuant 37 CFR 1.83(a), the drawings must show every feature of the invention specified in the claims and that “the requirement for an adequate disclosure ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent.” See MPEP § 608. Examiner submits that the claimed elements and their claimed relationships are not adequately depicted, for if the applicant claims multiple physical elements as parts of an invention, then the drawings should depict those elements. A generic label cannot be used to avoid illustrating a claimed feature merely by characterizing it as conventional, for the omitted structural details are necessary for understanding the claimed subject matter. “The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented. Since corrections are the responsibility of the applicant, the original drawing(s) should be retained by the applicant for any necessary future correction.” See MPEP § 608.02. See drawing objections below in the present Office action for further guidance.
In response to the applicant's argument that "The position at which a focusing point of the focused light beam is formed is shown in Fig. 1, which illustrates focusing points formed on the light focusing surface Pc downstream of the scattering medium 21, and in (e) of Fig. 6 and (b) through (g) of Fig. 7, which are images of focusing points formed at varying positions… Applicant respectfully requests withdrawal of the objection," the Examiner traverses. The recited figures do not appear to disclose the claimed relationship of “a focusing point of the focused light beam is formed at a position that varies for each of the columns of the cell group.” Examiner submits that the figure(s) do not illustrate the modulation amounts being correlated with particular columns, the varying positions for each column, or each column producing a corresponding focusing position. A graph showing frame-rate dependency and images showing focusing points at different frame rates do not expressly illustrate nor provide support for the cells being set so that the focusing point is formed at a position that varies for each column of the cell group being claimed. See drawing objections below in the present Office action for further guidance.
In response to the applicant's argument that "Amended independent claim 7 is a method claim in which each recited step now expressly recites the act performed: the first conversion step comprises converting, the modulation step comprises directing, and the second conversion step comprises converting. Because each step recites the acts for performing it, § 112(f) is not invoked, and the metes and bounds of the claim are clear…Applicant respectfully requests withdrawal of this rejection," the Examiner traverses. Examine reminds the applicant that the recitation of an act does not, by itself, avoid § 112(f) being invoked. The proper inquiry is whether the claim recites sufficient structure or a sufficiently definite algorithm for performing the claimed function(s). For example, “said light modulation method comprising: repeatedly carrying out a first conversion step, a modulation step, and a second conversion step while changing a column of the cell group…the second conversion step comprises converting the spatially modulated one-dimensional beam obtained in the modulation step into a two-dimensional beam” merely state the desired functions and/or results without identifying the structure or specific process that performs these conversions. Merely reciting something as a step or describing what it accomplishes does not supply missing structure. Examiner reminds the applicant that “If applicant does not intend to have 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 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 them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.” In response to “In any event, even if any limitation were interpreted under § 112(f), the specification discloses the corresponding structure and acts at least at paragraphs [0028]-[0030], [0032]-[0041], [0045], and [0048]-[0052], so the claims would be definite under that interpretation as well,” the Examiner reminds the applicant that, 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). See § 112(f) invoke below in the present Office action for further guidance.
In response to the applicant's argument that "Yun discloses no element that moves the incoming linear beam relative to the actuating cells, and no operation in which the beam enters different portions of the cell array at different times," the Examiner traverses. Examiner notes that Yun also expressly discloses a conventional laser scanning scheme wherein the collimated light is converted into linear light parallel to a scanning direction by a cylindrical lens 30, and the linear light is incident on a polygon mirror 40 ([0006]; fig. 1). 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 (i.e., "which the beam enters different portions of the cell array at different times") 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).
In response to the applicant's argument that "First, Yun contains no scanning mirror and no other element capable of changing which column of the cell array the linear beam enters," the Examiner traverses. Examiner notes that Yun also expressly discloses a conventional laser scanning scheme wherein the collimated light is converted into linear light parallel to a scanning direction by a cylindrical lens 30, and the linear light is incident on a polygon mirror 40 ([0006]; fig. 1). Applicant’s argument improperly assumes that a scanning mirror itself must physically alter a cell array or beam. A scanning mirror can change the direction or path of an incident linear beam, thereby causing a beam to enter different columns of a cell array at different mirror positions. The proper inquiry is not whether a mirror directly changes an array, for it is whether its scanning operation is capable of redirecting a beam to successive columns. Thus, if a mirror’s angular movement produces the beam displacement across an array, then the claimed capability is taught. Examiner reminds the applicant that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2111. See § 103 rejection(s) below in the present Office action for further guidance.
In response to the applicant's argument that "Adjusting the level of the step heights changes the intensity of the diffracted beams; that is Yun's grayscale control. It does not, and cannot, change which column of the cell array the beam enters," the Examiner traverses. Examiner reminds the applicant that arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP § 2145. Adjusting the step height between neighboring actuating cells may control the intensity of a diffracted beam, but that does not establish that the device is incapable for redirecting an incident beam to different columns. Unless applicant provides evidence that the optical configuration of Yun’s device physically prevents the beam from being redirected between columns, the fact that step-height adjustment provides grayscale control does not negate the claimed capability of columns changing. See § 103 rejection(s) below in the present Office action for further guidance.
In response to the applicant's argument that "In the claimed device, by contrast, the one-dimensional beam enters the columns of the cell group in sequence, one column at a time, which is what allows the device to obtain up to N modulation patterns within a single frame of the two-dimensional light modulator and thereby to be driven at a frame rate higher than the frame rate of the modulator itself," the Examiner traverses. Examiner reminds the applicant that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). 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 (i.e., "the one-dimensional beam enters the columns of the cell group in sequence, one column at a time, which is what allows the device to obtain up to N modulation patterns within a single frame of the two-dimensional light modulator") 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).
In response to the applicant's argument that "Yun's apparatus, which lacks any scanning mirror or other element for redirecting the incoming beam among columns of the cell array, is not capable of sequentially changing the column of the cell group that the one-dimensional beam enters…" the Examiner traverses. See response to previous arguments above and § 103 rejection(s) below in the present Office action for further guidance.
In response to the applicant's argument that "The Office Action relied on an inherency rationale under In re King, reasoning that Yun's device in its normal and usual operation would necessarily perform the claimed method. It would not. In Yun's normal operation, the linear beam remains incident on the actuating cells of the light modulation means, and modulation is effected temporally by turning the cells on and off and by adjusting step heights; the column that the beam enters is never changed, and the diffracted beams are scanned simultaneously. Because Yun's apparatus in its normal and usual operation does not perform the recited changing of the column that the one-dimensional beam enters, the inherency rationale fails, and amended claim 7 is not anticipated by Yun," the Examiner traverses. Examiner reminds the applicant that arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP § 2145. Furthermore, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP § 2112. Examiner notes that applicant’s argument limits the claimed capability to one particular mode of operation. Applicant’s argument does not establish that the device of Yun cannot be operated so that an incident beam is redirected to successive columns. Furthermore, simultaneous scanning of diffracted beams does not preclude sequentially changing the column(s) into which an incident beam enters. See response to previous arguments above and § 103 rejection(s) below in the present Office action for further guidance.
In response to the applicant's argument that "Yun's drive power controls the on and off states and step heights of the actuating cells; it is not a control section configured to reset the modulation amounts upon completion of a sequential pass of the beam through all of the columns of the cell group, because Yun has no sequential column entry at all," the Examiner traverses. See response to previous arguments above and § 103 rejection(s) below in the present Office action for further guidance.
In response to the applicant's argument that "None of this teaches or suggests the arrangement of amended claim 1, in which a cylindrical lens converts a two-dimensional beam into a one-dimensional beam…Shchegrov's "resonant mirror 325" is an intra-cavity, wavelength-selective mirror inside a laser; it scans nothing and has no relation…they do not select which column of a two-dimensional modulator a one-dimensional beam enters," the Examiner traverses. Examiner reminds the applicant that arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP § 2145. Furthermore, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP § 2112. Examiner further reminds the applicant that “a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396. See MPEP § 2141. Also, 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).
In response to the applicant's argument that "Substituting a digital-mirror or liquid crystal light valve for Yun's piezoelectric actuating cells, or adding Shchegrov's intra-cavity resonant mirror or output-scanning galvanometer mirrors to Yun's printer, would still leave the combination without any sequential…only through impermissible hindsight derived from the present application. Applicant respectfully requests withdrawal of the rejection of claims 3 and 4," the Examiner traverses. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Examiner further reminds the applicant that 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).
In response to the applicant's argument that "A substitution rationale based on art-recognized equivalence requires evidence that the prior art recognized the two elements as equivalents for the relevant purpose. The only evidence cited is Yun itself, and Yun nowhere mentions a scattering medium…Yun's grayscale control varies the intensity of its spots, not their positions. The proposed substitution therefore neither is supported by the record nor would produce the claimed device. Applicant respectfully requests withdrawal of the rejection of claim 6," the Examiner traverses. 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 (i.e., "what claim 6 recites and what enables the focusing point to be formed at a position that varies for each of the columns and to be moved at a MHz-class rate...Yun has no wavefront solution...") 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). Examiner further reminds the applicant that 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). See response to previous arguments above and § 103 rejection(s) below in the present Office action for further guidance.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the a focusing point of the focused light beam is formed at a position that varies for each of the columns of the cell group must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “11” has been used to designate both a digital mirror device and a liquid . Examiner submits that using one character for different structures or species creates ambiguity as to which structure is actually depicted and/or claimed.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “16” has been used to designate both resonator mirror and galvanometer mirror. Examiner submits that using one character for different structures or species creates ambiguity as to which structure is actually depicted and/or claimed.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation - 35 USC § 112(f)
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) are: “a light modulation method using a two-dimensional light modulator that includes a cell group in which cells are arranged in a matrix manner in a plurality of rows and a plurality of columns, the two-dimensional light modulator being configured such that modulation amounts of the respective cells are independently settable, said light modulation method comprising: repeatedly carrying out a first conversion step, a modulation step, and a second conversion step while changing a column of the cell group that a one-dimensional beam is enters in the modulation step, wherein: the first conversion step comprises converting a two-dimensional beam into a the one-dimensional beam; the modulation step comprises directing the one-dimensional beam obtained in the first conversion step into any one of the plurality of columns of the cell group to such that the one-dimensional beam is spatially modulated by the cells in the one column so as to generate a spatially modulated one-dimensional beam; and the second conversion step comprises converting the spatially modulated one-dimensional beam obtained in the modulation step into a two-dimensional beam” in Claim 7.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 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 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 them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
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.
Claim 6 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.
With respect to Claim 6, “a scattering medium configured to convert the spatially modulated two-dimensional beam into a focused light beam, wherein the modulation amounts of the respective cells are set such that a focusing point of the focused light beam is formed at a position that varies for each of the columns of the cell group” is indefinite, for the recited conversion does not clearly define the operation of the scattering medium in producing the focused light beam and it is unclear what spatial characteristic is varying. The claim limitation does not adequately define the structural or functional characteristics of the scattering medium that produces the claimed focusing, and thus, leaves the scope of the claim(s) unclear. Furthermore, the claim does not specify what positional parameter of the focusing point must vary, nor how the modulation amounts of the cells in a particular column are required to correspond to the said variation. Since it is unclear what relationship between the columns, the cell modulation amounts, and the resulting focusing points is required to satisfy the claim, a person having ordinary skill in the art would not be able to reasonably ascertain the scope of the recited limitations.
For the prosecution on merits, examiner interprets the claimed subject matter described above as encompassing arrangements and wavefront shaping techniques in which the scattering medium merely scatters the beam while some other optical effect produces the focusing aspect at any selected position.
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed.
If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
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.
Claims 1, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yun et al. US 20050105154 A1 (herein after "Yun") in view of An et al. US 20050270954 A1 (herein after "An").
With respect to Claim 1, Yun discloses a spatial light modulation device (light modulator utilized, light modulation means including a plurality of actuating cells; [0016]), comprising:
a two-dimensional light modulator (light modulation means 300 including actuating cells 310 arranged in two dimensions; [0034]; fig. 6) that includes a cell group (actuating cells 310; [0034]) in which cells are arranged in a matrix manner (lower and upper electrode layers 312 and 314 vertically or horizontally varied, thus varying each actuating cell 310; [0043]; figs. 7b and 8b) in a plurality of rows (each of actuating cells 310 constituting light modulation means 300 includes multiple rows of a lower electrode layer 312, a piezoelectric/electrostrictive layer 313 and an upper electrode layer 314; [0041]; fig. 7b) and a plurality of columns (plurality of actuating cells 310; [0039] columns as seen in figs. 7b-8b), the two-dimensional light modulator (light modulation means 300 including actuating cells 310 arranged in two dimensions; [0034]; fig. 6) being configured such that modulation amounts of the respective cells are independently settable (step height and intensity of diffracted beams controlled per cell by finely adjusting drive voltage applied to actuating cells 310; [0053] and [0057]); and
a scanning optical system (scanning apparatus comprising first lens unit 200 and second lens unit 500; [0034], [0060-61], and [0073]) that includes a cylindrical lens (cylindrical lens 220; [0036-38]) and an objective lens (second lens unit 500, a projection lens; [0059]), wherein:
the cylindrical lens is configured to convert (cylindrical lens 220 converts collimated light into parallel linear light; [0036-38]) a two-dimensional beam (plurality of diffracted beams; [0017]) into a one-dimensional beam (single beam; focus the linear light onto the light modulation means 300, can form one-dimensional or two-dimensional diffracted beams; [0036-39], [0067]);
the objective lens (second lens unit 500, a projection lens horizontally scans incident diffracted beams onto photosensitive member 700 in one dimension or two dimensions, thus simultaneously scanning diffracted beams onto photosensitive member 700 along one line or a plurality of lines; [0059]) is configured to guide (via light modulation means 300 simultaneously and horizontally scans the diffracted beams onto the photosensitive member 700; [0039] and [0064-67]) the one-dimensional beam (single beam; [0039]) to any one of the plurality of columns (plurality of actuating cells 310; [0039]; columns seen in figs. 7b-8b) of the cell group (actuating cells 310; [0034]) such that the one-dimensional beam is spatially modulated by the cells in the one column so as to generate a spatially modulated one-dimensional beam (since the actuating cells 310, constituting light modulation means 300, are arranged in one dimension or two dimensions, they can form one-dimensional or two-dimensional diffracted beams having a predetermined diffraction coefficient; [0067]; e.g., light modulation means 300 includes plurality of actuating cells 310 arranged in one dimension, so that it horizontally scans plurality of diffracted beams onto photosensitive member 700 in one dimension, thus simultaneously performing one-dimensional scanning; [0046]);
Yun does not appear to explicitly teach the following limitation(s): the scanning optical system includes a scanning mirror that is configured to sequentially change the column of the cell group that the one-dimensional beam enters; and the cylindrical lens is further configured to convert the spatially modulated one-dimensional beam into a spatially modulated two-dimensional beam.
However, in the same field of endeavor, An teaches an optical recording apparatus using a scanning mirror for generating two-dimensional beam ([0020]), wherein a two-dimensional signal beam radiation unit 250 includes a scanning mirror 251 for reflecting the one-dimensional signal beam radiated from the one-dimensional signal beam generation unit 240 in two directions on the same horizontal plane, and radiating a two-dimensional signal beam, and a focusing lens 252 for focusing the two-dimensional signal beam reflected from the scanning mirror 251 and radiating the focused signal beam onto the holographic recording medium 220 ([0048-50]). An further teaches the scanning mirror/Galvano mirror 251 being fastened to an electronic device performing a horizontal turning operation according to a preset program, and thus, enabling the one-dimensional signal beam incident on the scanning mirror 251 to be reflected in two directions on the same horizontal plane ([0048-50]). Through such a reflecting process, the one-dimensional signal beam is converted into the two-dimensional signal beam by the scanning mirror 251 ([0048-50]). Furthermore, An teaches that the one-dimensional diffractive light modulator 241 diffracts and modulates the beams radiated through the cylindrical lens 215 to generate the one-dimensional signal beam, and at this time, the one-dimensional diffractive light modulator 241 generates the one-dimensional signal beam comprised of one or more signal arrays ([0052-59]). In this case, one signal array generates a two-dimensional signal beam in association with the scanning mirror ([0059]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the spatial light modulation device of Yun to further include the technical feature(s) of utilizing converted movement and horizontal turning operation of a scanning mirror or Galvano mirror to perform column-by-column scanning and providing a cylindrical lens within the process of converting a spatially modulated one-dimensional beam into a spatially modulated two-dimensional beam, for the purpose of minimizing the number of circuit devices required to manufacture products, greatly reducing required manufacturing processes when manufacturing a spatial light modulator, and reducing manufacturing costs thereof, as taught by An ([0020-22]).
Examiner reminds the applicant that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim, for “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). See MPEP § 2114. Examiner notes a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d - 164 7 (1987).
With respect to Claim 5, Yun in view of An teaches the spatial light modulation device (light modulator utilized, light modulation means including a plurality of actuating cells; [0016]) as set forth in claim 1, further comprising:
a control section (drive power applied and adjusted from external power source, controlling printing strength; [0053] and [0057]) configured to reset (on/off in response to drive power; [0016]) the modulation amounts (step height and intensity of diffracted beams controlled per cell by finely adjusting drive voltage applied to actuating cells 310; [0053] and [0057]) of the respective cells in the cell group (actuating cells 310; [0034]) after the one-dimensional beam (single beam; [0039]) has sequentially entered each of all the columns (level of step heights formed between actuating cells 310; [0068]) of the cell group (actuating cells 310, light modulation means 300 simultaneously and horizontally scans the diffracted beams onto the photosensitive member 700; [0034-39], [0064-67]; Yun).
With respect to Claim 7, Yun discloses a light modulation method (operation of the scanning apparatus using a light modulator; [0060]) using a two-dimensional light modulator (light modulation means 300 including actuating cells 310 arranged in two dimensions; [0034]; fig. 6) that includes a cell group (actuating cells 310; [0034]) in which cells are arranged in a matrix manner (lower and upper electrode layers 312 and 314 vertically or horizontally varied, thus varying each actuating cell 310; [0043]; figs. 7b and 8b) in a plurality of rows (each of actuating cells 310 constituting light modulation means 300 includes multiple rows of a lower electrode layer 312, a piezoelectric/electrostrictive layer 313 and an upper electrode layer 314; [0041]; fig. 7b) and a plurality of columns (plurality of actuating cells 310; [0039] columns as seen in fig. 7b), the two-dimensional light modulator (light modulation means 300 including actuating cells 310 arranged in two dimensions; [0034]; fig. 6) being configured such that modulation amounts of the respective cells are independently settable (step height and intensity of diffracted beams controlled per cell by finely adjusting drive voltage applied to actuating cells 310; [0053] and [0057]),
said light modulation method (operation of the scanning apparatus using a light modulator; [0060]) comprising:
repeatedly carrying out a first conversion step (first lens unit 200 functions to convert beam into linear light; [0036]), a modulation step (light modulation means 300 simultaneously and horizontally scans the diffracted beams onto the photosensitive member 700; [0039] and [0064-67]), and a second conversion step (second lens unit 500 horizontally scans incident diffracted beams onto photosensitive member 700 in one dimension or two dimensions, thus simultaneously scanning diffracted beams; [0067] and [0073]), wherein:
the first conversion step (first lens unit 200 functions to convert beam into linear light; [0036]) comprises converting (cylindrical lens 220 converts collimated light into parallel linear light; [0036] and [0038]) the two-dimensional beam (plurality of diffracted beams; [0017]) into a one-dimensional beam (light modulation means 300 arranged in one dimension or two dimensions, can form one-dimensional or two-dimensional diffracted beams; [0067]),
the modulation step (light modulation means 300 simultaneously and horizontally scans the diffracted beams onto the photosensitive member 700; [0039] and [0064-67]) comprises directing the one-dimensional beam (single beam; [0039]) obtained in the first conversion step (first lens unit 200 functions to convert beam into linear light; [0036]) into any one of the plurality of columns (plurality of actuating cells 310; [0039]; columns seen in figs. 7b-8b) of the cell group (actuating cells 310; [0034]) such that the one-dimensional beam is spatially modulated by the cells in the one column (linear beam incident on actuating cells 310 and diffracted, cells arranged in matrix for spatial modulation; [0039] and [0064-67]; figs. 8a-b) so as to generate a spatially modulated one-dimensional beam (since the actuating cells 310, constituting light modulation means 300, are arranged in one dimension or two dimensions, they can form one-dimensional or two-dimensional diffracted beams having a predetermined diffraction coefficient; [0067]; e.g., light modulation means 300 includes plurality of actuating cells 310 arranged in one dimension, so that it horizontally scans plurality of diffracted beams onto photosensitive member 700 in one dimension, thus simultaneously performing one-dimensional scanning; [0046]); and
Yun does not appear to explicitly teach the following limitation(s): changing a column of the cell group that a one-dimensional beam enters in the modulation step, and converting the spatially modulated one-dimensional beam obtained in the modulation step into a two-dimensional beam.
However, in the same field of endeavor, An teaches an optical recording apparatus using a scanning mirror for generating two-dimensional beam ([0020]), wherein a two-dimensional signal beam radiation unit 250 includes a scanning mirror 251 for reflecting the one-dimensional signal beam radiated from the one-dimensional signal beam generation unit 240 in two directions on the same horizontal plane, and radiating a two-dimensional signal beam, and a focusing lens 252 for focusing the two-dimensional signal beam reflected from the scanning mirror 251 and radiating the focused signal beam onto the holographic recording medium 220 ([0048-50]). An further teaches the scanning mirror 251 being fastened to an electronic device performing a horizontal turning operation according to a preset program, and thus, enabling the one-dimensional signal beam incident on the scanning mirror 251 to be reflected in two directions on the same horizontal plane ([0048-50]). Through such a reflecting process, the one-dimensional signal beam is converted into the two-dimensional signal beam by the scanning mirror 251 ([0048-50]). Furthermore, An teaches that the one-dimensional diffractive light modulator 241 diffracts and modulates the beams radiated through the cylindrical lens 215 to generate the one-dimensional signal beam, and at this time, the one-dimensional diffractive light modulator 241 generates the one-dimensional signal beam comprised of one or more signal arrays ([0052-59]). In this case, one signal array generates a two-dimensional signal beam in association with the scanning mirror ([0059]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the light modulation method of Yun to further include the technical feature(s) of utilizing converted movement and horizontal turning operation of a scanning mirror to perform column-by-column scanning and providing a process of converting a spatially modulated one-dimensional beam into a spatially modulated two-dimensional beam, for the purpose of minimizing the number of circuit devices required to manufacture products, greatly reducing required manufacturing processes when manufacturing a spatial light modulator, and reducing manufacturing costs thereof, as taught by An ([0020-22]).
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). See also MPEP § 2112.02. See § 102 claim 1 rejection above in the present Office action.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Yun et al. US 20050105154 A1 (herein after "Yun") in view of An et al. US 20050270954 A1 (herein after "An") and Shchegrov US 20060280219 A1.
With respect to Claim 3, Yun in view of An teaches the spatial light modulation device (light modulator utilized, light modulation means including a plurality of actuating cells; [0016]) as set forth in claim 1.
Yun in view of An does not appear to explicitly teach the following limitations wherein the two-dimensional light modulator is a digital mirror device; and the scanning mirror is a resonator mirror.
However, in another field of endeavor, Shchegrov teaches frequency stabilized vertical extended cavity surface emitting lasers (fig. 1-35) comprising a micro-mirror of a digital light valve, wherein a pulse repetition rate of each laser in a light source is adjusted ([0062] and [0084-85]), and a resonant mirror (325; [0074]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the spatial light modulation device of Yun in view of An to further include the technical feature of a digital mirror device functioning as a two-dimensional spatial light modulator and a resonant mirror to perform scanning, for the purpose of switching fast enough to allow a spatial modulator to be utilized in a projection system, sufficient synchronization, optimizing optical response, and controlling output wavelength within an SLM device, as taught by Shchegrov ([0004], [0074] and [0085]).
With respect to Claim 4, Yun in view of An teaches the spatial light modulation device (light modulator utilized, light modulation means including a plurality of actuating cells; [0016]; Yun) as set forth in claim 1, and the scanning mirror (scanning mirror 251; [0048-50]; An) is a galvanometer mirror (scanning mirror 251 implemented with a polygon mirror or Galvano mirror; [0050]; see claim 1).
Yun in view of An does not appear to explicitly teach the following limitations wherein the two-dimensional light modulator is a liquid crystal spatial light modulator.
However, in another field of endeavor, Shchegrov teaches frequency stabilized vertical extended cavity surface emitting lasers (fig. 1-35) comprising a light valve formed from an array of liquid crystal elements, or a liquid crystal on silicon (LCOS) spatial modulator ([0062]) and a fast beam scanner, such as a pair of mirrors mounted on galvanometers ([0118]).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the spatial light modulation device of Yun in view of An to further include the technical feature of a liquid crystal spatial light modulator functioning as a two-dimensional spatial light modulator and mirrors mounted on galvanometers, for the purpose of modulating the intensity of reflected light across an array, being able to adjust near zero reflectivity (full-off) to a much higher reflectivity (full-on), maintaining image fidelity, and accurately producing a given intensity modulation level, as taught by Shchegrov ([0004], [0113], and [0118]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yun et al. US 20050105154 A1 (herein after "Yun") in view of An et al. US 20050270954 A1 (herein after "An") and Xu et al. "Focusing light through scattering media by transmission matrix inversion" (herein after "Xu").
With respect to Claim 6, Yun discloses a light focusing device (fig. 6), comprising:
the spatial light modulation device (light modulator utilized, light modulation means including a plurality of actuating cells; [0016]) recited in claim 1, and
a scattering medium (e.g., light modulation means 300 acts as a variable diffraction grating for generating diffracted beams having 0th, +1st and -1st order diffraction coefficients; [0049]), conversion of the two-dimensional beam obtained in the second conversion step (second lens unit 500 horizontally scans incident diffracted beams onto photosensitive member 700 in one dimension or two dimensions, thus simultaneously scanning diffracted beams; [0067] and [0073]),
wherein the modulation amounts of the respective cells are set (step height and intensity of diffracted beams controlled per cell by finely adjusting drive voltage applied to actuating cells 310; [0053] and [0057]), that varies for each of the columns of the cell group (lower and upper electrode layers 312 and 314 vertically or horizontally varied, thus varying each actuating cell 310; [0043]; figs. 7b and 8b).
Yun in view of An does not appear to explicitly teach the following limitation(s): wherein the scattering medium is configured to convert the spatially modulated two-dimensional beam into a focused light beam and a focusing point of the focused light beam is formed at a position that varies for each of the columns of the cell group.
However, in the same field of endeavor, Xu teaches focusing light through scattering media by transmission matrix inversion (pg. 1, para. 1), wherein a scattering medium (made of ground glass DG10-120, Thorlabs; pg. 7, para. 2) converts spatially modulated light (via phase-only-modulation SLM; pg. 7, para. 2) into a focused light beam (focus light through scattering media; pg. 7, para. 2) via a transmission matrix inversion (used the transmission matrix inversion method to realize the desired focusing patterns; pg. 7, para. 2) and a focusing point of the focused light beam is formed at multiple target locations (pg. 9, para. 1) while controlling more output optical modes (pg. 10, para. 1). The positions of the foci with equal focal light intensity are first selected, then at each focus position, the background associated with the other focus is automatically set to zero (pg. 6, para. 2). Xu further teaches the transmission matrix inversion method projecting a light pattern through scattering media to darken a speckle field in a FOV without creating any focal spots and utilizing this principle to find the wavefront solution to darken speckles in a FOV (pg. 11, para. 1).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to modify the spatial light modulation device of Yun in view of An to further include the technical feature(s) of utilizing a transmission matrix inversion method for focusing light and projecting patterns through scattering media at multiple target locations within an SLM device, for the purpose of improving fidelity of focusing light to multiple locations through scattering media and achieving speckle darkening, as taught by Xu (pg. 11, para. 2). Examiner notes a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d - 164 7 (1987).
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.
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/K MUHAMMAD/Examiner, Art Unit 2872 01 October 2026
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872
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