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 amendment filed by applicant on 06/05/2026. It is noted that in the amendment, applicant has made changes to the claims. It is also noted that applicant has submitted a drawings having one sheet contained Figure 1.
Regarding the claims, applicant has amended claims 1, 7-8, 10-11, 16 and 19 and canceled claims 2, 9, 18 and 20.
Response to Arguments
The submission of the drawings and the amendments to the claims as provided in the amendment of 06/05/2026, and applicant's arguments provided in the mentioned amendment, pages 6-12, have been fully considered and resulted the following conclusions.
A) Regarding the claims, because applicant has canceled claims 2, 9, 18 and 20 and has not added any claim into the application, thus the pending claims are claims 1, 3-8, 10-17 and 19 which claims are examined in the present office action.
B) Regarding the objection(s) to the drawings set forth in the office action of 04/23/2026, the submission of the drawings which contains one sheet of figure 1 on 06/05/2026, and applicant’s arguments provided in the amendment of 06/05/2026, page 7, have been fully considered and are sufficient to overcome the objection of the drawings set forth in the mentioned office action.
C) Regarding the Claim Interpretation set forth in the office action of 04/23/2026, the amendments to the claims as provided in the amendment of 06/05/2026, and applicant’s arguments provided in the mentioned amendment, page 7, have been fully considered and are sufficient to overcome the Claim Interpretation of the generic placeholders thereof “a control unit” and “a line rate” set forth in the mentioned office action.
The Claim Interpretation of the generic placeholders thereof “a test structure” and “a piezo-controlled hexapod” recited in present claims 1, 4, 6-7, 12, 14 and 16 is repeated in the present office action because applicant has not amended the claims and/or provide any arguments to overcome the Claim Interpretation of the mentioned generic placeholders in the amendment of 06/05/2026.
D) Regarding the objections of claims 1-20 set forth in the office action of 04/23/2026, the amendments to the claims as provided in the amendment of 06/05/2026, and applicant’s arguments provided in the mentioned amendment, page 7, have been fully considered and are sufficient to overcome the objections of claims 1-20 set forth in the mentioned office action.
E) Regarding the rejections of claims 1-20 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, set forth in the office action of 04/23/2026, the amendments to the claims as provided in the amendment of 06/05/2026, and applicant’s arguments provided in the mentioned amendment, page 8, have been fully considered and are sufficient to overcome the rejections of claims 1-20 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, set forth in the mentioned office action.
F) Regarding the rejections of claims 1-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 04/23/2026, the amendments to the claims as provided in the amendment of 06/05/2026, and applicant’s arguments provided in the mentioned amendment, pages 8-12, have been fully considered and not sufficient to overcome the rejections of claims 1-20, now applied to claims 1, 3-8, 10-17 and 19, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the mentioned office action.
In particular, applicant has not amended the claim 1, which comprises the features of now canceled claim 2, to overcome the rejection of the claim for the reason numbered as b2) set forth in the mentioned office action. Applicant’s arguments provided in the amendment, page 9, have been fully considered but they are not persuasive.
Drawings
The drawings contain one sheet of figure 1 was received on 06/05/2026 These drawings are approved by the examiner.
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”, “one further actuating unit” and “a test structure” as recited in claim 1; and
b) “a piezo-controlled hexapod” as recited in each of claims 4, 6, 12, 14, 16;
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, 3-8, 10-17 and 19 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.
a1) the claim recites the feature thereof “at least one optical sensor” on line 2; however, the claim also recites “the optical sensor” on lines 3 and 10. Thus, it is unclear what “the optical sensor” recited in each of claims 3 and 10. Should “the optical sensor” appeared on each lines 3 and 10 be changed to --the at least one optical sensor--? and
a2) the feature thereof “the mirror” appeared on line 11 should be changed to --the secondary mirror--, see the use of claimed language on each of lines 6, 7, 8 and 14.
b) In each of claims 3-4, 11-12, 14 and 17: on lines 1-2 of each claim, the feature thereof “the actuating unit” should be changed to --the at least one actuating unit--, see its base claim 1 on lines 4-5.
c) In each of claims 5, 13, and 15: on lines 1-2, “the actuating unit for the secondary mirror” should be changed to --the at last one (further) actuating unit of the secondary mirror-, see the use of similar claimed language in its base claim 1 on line 6 and each of claims 6 and 16.
d) In each of claims 6 and 16: on lines 1-2 of each claim, the feature thereof “the actuating unit” should be changed to --the at least one (further) actuating unit--, see its base claim 1 on line 6.
e) In claim 7: the following corrections are suggested to the claim.
e1) on lines 5 and 7, “the actuating unit” should be changed to --the at least one (further) actuating unit--;
e2) the feature thereof “the best focal sharpness’ (lines 7-8) should be changed to --best focal sharpness-- because the mentioned feature lacks a proper antecedent basis; and
e3) “the actuating unit” (line 9) should be changed to --the at least one actuating unit of the focal length--.
f) The remaining claims are dependent upon the objected base claim and thus inherit the deficiency thereof.
Claim Rejections - 35 USC § 112
10. 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.
11. Claims 1, 3-8, 10-17 and 19 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 because it is unclear about the structural relationship between the secondary mirror and the test structure as recited in the claim by the feature thereof “wherein the space telescope comprises a test structure, which is configured in such a way as to be switchable into a beam path in front of the secondary mirror” (lines 13-14). 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.
Should --at an entrance position of the space telescope-- be added between “path” and “in front of” on line 14 of the claim or other suitable technical terms to make clear the structure of a specie telescope with a test structure.
b) 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.
b1) the feature thereof “the least deviation” (line 5) lacks a proper antecedent basis; and
b2) the features thereof “focal sharpness at marginal zones … the center of the image” (lines 1-6) makes the claim indefinite due to the use of term of “when” (line 3). Applicant should note that the term “when” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
c) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Allowable Subject Matter
12. Claims 1, 3-8, 10-17 and 19 would be allowable if rewritten/amended to overcome the rejections of those claims under 35 U.S.C. 112 set forth in the present office action.
13. 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 independent claim 1 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 13-14. Such feature regarding a test structure and its structural relationship with other components as recited in the present independent claim 1 is not disclosed in the prior art.
Conclusion
14. 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.
15. 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.
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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
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