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 Amendment
The present office action is made in response to the pre-amendment filed by applicant on 03/21/2024. It is noted that in the pre-amendment, applicant has made changes to the abstract, the specification and the claims.
2A) Regarding the abstract and the specification, applicant has submitted a substitute abstract in a separated sheet and a substitute specification with marked-up copies showing the changes to the abstract and the specification, and a statement that the substitute abstract and the substitute speciation each does not contain any new matter, see pre-amendment in pages 2 and 7; and
2B) Regarding the claims, applicant has amended claims 1-10 and added a new set of claims, i.e., claims 11-20, into the application. There is not any claim being canceled. As newly-added, the pending claims are claims 1-20.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. 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).
It is noted that the specification discloses that there is a figure to illustrate the space telescope of the invention, see the substitute specification in page 2; however, applicant has not provided any sheet of drawings with the application was filed on 03/21/2024, see also the “Electronic Acknowledgement Receipt” mailed to applicant on 05/10/2024. Applicant needs to provide a drawings having figure(s) stated in the substitute specification in response to the present office action.
For the purpose of examination, the figure in the drawings section of the Germany reference No. DE 10 2021 210 970.5 is used in the examination of the US application at this time.
Specification
The substitute abstract and the substitute specification filed on 03/21/2024 have been entered.
The lengthy specification which was amended by the pre-amendment of 03/21/2024 has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 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 limitations are
a) “an image field corrector”, “an evaluation unit”, “one actuating unit”, and “one further actuating unit” as recited in claim 1;
b) “a test structure” as recited in each of claims 2 and 7;
c) “a piezo-controlled hexapod” as recited in each of claims 4, 6, 12, 14, 16;
d) “a control unit” as recited in claim 7; and
e) “a line rate” as recited in each of claims 9 and 18.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/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 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 avoid it/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 it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1-20 are objected to because of the following informalities. Appropriate correction is required.
a) Claim 1 is objected to due to an inconsistent use in claimed language, see the claim on lines 5 and 7. In particular, applicant recites a feature with claimed language thereof “a focal plane is assigned at least one actuating unit” on line 5; however, applicant also recites a feature with claimed language thereof “the secondary mirror being assigned at least one further actuating unit” on lines 7-8. Should “being assigned” appeared on line 7 be changed to --is assigned--?
b) The remaining claims are dependent upon the objected base claim and thus inherit the deficiency thereof.
Claim Rejections - 35 USC § 112
12. 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.
13. Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the following reasons.
a) Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claim is rejected because the disclosure does not provide support/teaching for a telescope having a primary mirror, a secondary mirror, an image field corrector and a focal plane having at least one optical sensor wherein the focal plane having at least one optical sensor is moved in a X direction and a Y direction by at least one actuating unit and the secondary mirror is moved at least in a Z direction by at least one actuating unit to ensure a reproducible adjustment of at least 1 nm over at least one pixel length of the optical sensor as recited in the claim on lines 9-11 by the features thereof “the focal length … the Z direction, the actuating unit furthermore being configured in such a way as to ensure a reproducible adjustment of at least 1 nm over at least one pixel length of the optical sensor” (examiner’s emphasis).
Applicant is respectfully invited to review the specification, in particular, in paragraphs [0004] and [0015], which discloses that the actuating unit (5) is used to displace the secondary mirror (2) along a Z direction so that “the actuating unit furthermore being configured in such a way as to ensure a reproducible adjustment of less than or equal to 1 nm over at least one pixel length of the optical sensor”, see paragraph [0004] on lines 6-8 of the paragraph, or “a displacement in the Z direction is carried out, the readjustment ensuring a reproducible adjustment of less than or equal to 1nm over at least one pixel length” in paragraph [0015] on lines 11-13 of the paragraph (examiner’s emphasis). Thus, the specification does not support/disclose that the secondary mirror is moved to ensure a reproducible adjustment of at least 1 nm over at least one pixel length of the optical sensor as recited in the claim on lines 9-11.
For the purpose of examination, the feature regarding the reproducible adjustment caused by the movement of the secondary mirror in the Z direction is understood as “less than or equal to 1nm over at least one pixel length of the optical sensor.
b) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiency thereof.
14. 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.
15. Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a1) each of the features thereof “the data” (line 3), “the X and Y directions” (line 7), “the Z direction” (line 9), and “the optical axis” (line 11) lacks a proper antecedent basis;
a2) the feature thereof “the actuating unit furthermore being configured … the optical sensor” (lines 9-11) makes the claim indefinite for the following reasons:
a21) it is unclear about “the actuating unit” to which the mentioned feature refer. Applicant is respectfully invited to review the claim which recites two actuating units in which one is assigned to the focal plane, see the claim on online 5, and the other one is assigned to the second mirror, see the claim on line 7. Thus, which one is “the actuating unit” used to ensure a reproducible adjustment as recited in the mentioned feature? and
a22) the mentioned feature recites that the so-called “the actuating unit” furthermore being configured in such a way as to ensure a reproducible adjustment of at least 1 nm over at least one pixel length of the optical sensor”. However, it is unclear about the so-called “in such a way” which the actuating unit is configured to warrant the claimed function, i.e., a reproducible adjustment of at least 1 nm over at least one pixel length of the optical sensor”; and
a23) what does applicant mean by “a reproducible adjustment” of an actuating unit? Does applicant intend to means that the actuating unit displaces the secondary mirror by a distance? and
a3) the feature thereof “the focal plane … the space telescope” (lines 5-12) makes the claim indefinite because it is unclear about the structural relationships among the X, Y and Z directions recited in the claim. While the claim recites that the Z direction is parallel to the optical axis of the telescope; however, there is not any feature/limitation regarding the structural relationships among the X direction and the Y direction with respect to the Z direction (or the optical axis of the telescope).
b) Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
b1) the feature thereof “the beam path” (line 3) lacks a proper antecedent basis; and
b2) it is unclear about the structural relationship between the secondary mirror and the test structure as recited in the claim by the feature thereof “a test structure which is configured in such a way as to be switchable into the beam path in front of the secondary mirror” (lines 2-3). Does applicant intend to mean that the test structure is switchable into a position between the secondary mirror and the primary mirror? If that is the case then the mentioned feature misdescriptive of the invention as disclosed in the specification in pages 3-4 which discloses that the test structure is located/positioned at the entrance of the telescope, not between the primary and secondary mirrors.
c) Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
c1) each of the features thereof “the beam path” (line 4), “the control unit” (line 5), “the imaging quality” (line 6), “the Z position” (line 7), “the best imaging quality” (lines 7-8) and “the X-Y position” (line 10) lacks a proper antecedent basis;
c2) what is/are the structural relationship(s) between the “at least one actuating unit” assigned to displace the secondary mirror, see claim 1 on lines 7-8, and the so-called “the control unit” to displace the secondary mirror as recited in the claim on lines 5-6?
c3) each of the features thereof “the imaging quality” (line 6) and “the best imaging quality” (lines 7-8) is indefinite. What does applicant mean by each of the mentioned features? and
c4) the similar reason as set forth in element b2) above.
d) Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
d1) each of the features thereof “the marginal zones” (line 2), “the center” (line 2), “the event” (line 4), “the position” (line 4) and “the least deviation” (line 4) lacks a proper antecedent basis; and
d2) the features thereof “the marginal zones of the imaging are compared with those of the center” (line 2) makes the claim indefinite. What does applicant mean by “the marginal zones of the imaging” and “the center” (line 2)?
e) Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
e1) each of the features thereof “the best symmetry” (line 3) and “the spatial frequencies” (line 3) lacks a proper antecedent basis;
e2) the claim is indefinite because it is unclear about the so-called “a line rate” of the optical sensor as recited in the feature thereof “a line rate or … is varied” (line 2); and
e3) the features thereof “an adjustment in relation to the best symmetry with regard to the spatial frequencies” (line 3) makes the claim indefinite. What does applicant mean by “the best symmetry with regard to the spatial frequencies”? Which “spatial frequencies” doe applicant imply here? Which component(s)/system(s)/unit(s) provide(s) the so-called “spatial frequencies”? and what “symmetry” is considered as “the best symmetry”?
f) Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the adjustments” (line 2) lacks a proper antecedent basis.
g) Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reasons as set forth in elements e1) – e3) above.
h) Each of claims 19-20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element f) above.
i) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 103
16. 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.
17. 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.
18. Claims 1, 3, 5, 7-10 and 18-20, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al (US Patent No. 4,471,447, submitted by applicant).
Williams et al discloses an optical system installed in a space telescope.
a) Regarding present claim 1, the optical system as described in columns 5-7 and 9-10 and shown in figs. 1, 3 and 7-9 comprises the following features:
a1) a primary mirror (20), a secondary mirror (40), an image field correcting system (50, 60, 70), and a focal plane (80) having an array of optical sensors, see columns 6 and 10 and figs. 1, 3 and 5, and an evaluation unit receiving data from the array of optical sensors, see columns 10-11 and 15 and figs. 6-8;
a2) the focal plane (80) having an array of optical sensors is assigned at least one actuating unit for displacing the focal plane (80) in a X direction (83) and in a Y direction (82), see column 6 on lines 35-38; and
a3) the secondary mirror (40) is assigned at least one actuating unit for displacing the secondary mirror in a Z direction (41) which Z direction is parallel to the optical axis of the optical system as defined by beam path from a distance object which beam path extending from the pointing mirror (10) to the focal pane (80), see column 6 on lines 10-14 and columns 9-10 and figs. 1 and 3.
It is noted that while Williams et al discloses that the secondary mirror is displaced along the Z direction for adjusting the focus of light on the focal plane (80) which has an array of optical sensors such as an array of 100 x 100 charged coupled device, CCD, see column 10, lines 30-35; Williams et al does not clearly disclose that the actuating unit used to displace the secondary mirror to ensure a reproducible adjustment of less than or equal to 1 nm over at least one pixel length of the optical sensor as claimed. However, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the optical system provided by Williams et al by displacing the secondary mirror along the Z direction which direction is parallel to the optical axis of the beam path to ensure a reproducible adjustment less than 1 nm or any suitable amount to warrant the focus of the light beam still inside the pixels of the optical sensor during the movement of the focal plane having such optical sensors in the X-Y plane to obtain best imaginary/system performance.
b) Regarding present claim 3, the actuating unit used to displace the focal plane is able to displace the focal plane in the Z direction, see column 6, lines 36-38 and fig. 1, the direction with number of (81).
c) Regarding present claim 5, the actuating unit used to displace the secondary mirror is able to displace the secondary mirror in the X direction and the Y direction, see column 10, lines 61-67.
d) Regarding present claim 7, the method steps are implicitly met by the structural limitations of the optical system provided by Williams et al.
e) Regarding present claims 8 and 19, the marginal zones of the imaging are compared to the zones of the center for purpose of realignment is disclosed by Williams et al as can be seen in columns 14-17.
f) Regarding present claims 9 and 18, the displacement of the focal plane (80) having an array of optical sensor in the X direction and in the Y direction is controlled by the control system with variable speed/amount of displacement for the purpose of providing an optimal system performance is provide by Williams et al in columns 14-17.
g) Regarding present claims 10 and 20, the result of focusing and the data recorded by the optical sensors are saved and used for the purpose of realignment is disclosed by Williams et al in columns 14-17.
19. Claims 4, 6 and 12-13, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al in view of Hennessey (US Publication No. 2003/0106230).
It is noted that while Williams et al discloses the use of micrometers for displacing the secondary mirror and the focal plane having optical sensors, see Williams et al in column 6, lines 61-63; however, Williams et al does not positive disclose the micrometers are piezo-controlled hexapods as claimed in each of claims 4, 6 and 12. However, the use of actuating unit in the form of piezo-controlled hexapod for the purpose of displacing an element with precision in a small amounts is known to one skill in the art as can be seen in the micromanipulator provided by Hennessey, see paragraph [001] and figs. 3-5, for example. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the actuating unit used to displace the secondary mirror and the focal plane having optical sensors provided by Williams et al by using actuating unit in the form of piezo-controlled hexapod as suggested by Hennessey for the purpose of displacing an element with precision in a small amounts.
Regarding present claim 13, the feature of displacing the secondary mirror in the X direction and the Y direction is disclosed by Williams et al.
Allowable Subject Matter
20. Claims 2, 11 and 14-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. It is noted that the claims needs to be amended to overcome the rejections of those claims under 35 U.S.C. 112 set forth in the present office action.
21. The following is a statement of reasons for the indication of allowable subject matter:
The space telescope having a primary mirror, a secondary mirror, an image field correcting system, a focal plane having an array of optical sensors and an evaluation unit receiving data from the array of optical sensors wherein the focal plane having the array of optical sensors is assigned at least one actuating unit for displacing the focal plane in a X direction and in a Y direction, and the secondary mirror is assigned at least one actuating unit for displacing the secondary mirror in a Z direction parallel to the optical axis of the space telescope to ensure a reproducible adjustment as recited in the dependent claim 2 is allowable with respect to the prior art, in particular, the US Patent No. 4,471,447 and the article titled thereof “Optical telescope refocusing mechanism concept design on remote sensing satellite” by the feature regarding a test structure switchable onto an entrance of the space telescope at a position in front of the secondary mirror with respect to the entrance as recited in the claim on lines 1-3. Such feature regarding a test structure and its structural relationship with other components as recited in present claim 2 in a space telescope with structure of its base claim 1 is not disclosed in the prior art.
Conclusion
22. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
23. The Chinese reference No. CN 1987547 B and the Germany reference No. DE 10 2014 212 213 B3 are cited as of interest in that each discloses a space telescope having a secondary movable along the optical axis of the telescope for the purpose of providing a reproducible adjustment.
24. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571)272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
Prosecution Insights