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 4-1-2026 have been fully considered but they are not persuasive.
The applicant argues that the lens shown in Tao is not a stack of several optical elements. The applicant supports this argument by pointing to figures 1 & 9a where it is drawn as a single lens. The applicant then goes on to state the lens, which is presented as an achromatic doublet lens which is used as a sample to validate the lens characterization method, is a single lens. This is not found persuasive. First of all, it’s shown as two separate optics formed together in figure 4. Second of all an achromatic doublet lens is a lens formed of two separate optics of different dispersions and usually of one concave and one convex lens. Thus, it most definitely qualifies as a “stack of several optical elements”. Lastly, the exact composition of a sample is immaterial to the structure of an apparatus for testing it so long as the apparatus is capable of performing the function of testing it.
The applicant argues that because Tao discloses a solution for identifying the glass material used for manufacturing a lens based on the propagation characteristics of a light wave through said lens (cites paragraphs 87 & 90) that it means the limitation, “providing, based on said at least one measured optical set, a data set, called estimated performance set, comprising estimated data relating to the performance of said target objective, by a characterization model previously trained with a database, called training database, of training sets constituted based on optical objectives with an architecture identical to that of said target objective” is not met because it does not describe at any point a model previously trained on objectives of identical architecture and enabling the estimation/simulation of the performance of a target optical objective. However, it is noted that in Paragraph 87 it states that “A computational ray-trace model of propagation through lens elements was then created (FIG. 14B) to exhaustively simulate RCM measurements (FIG. 15A) through each glass material,” which seems to counter the applicant’s point. Further, the model is based on optical objectives with similar architecture. As far as “training” goes the applicant seems to put a lot of meaning into the word that is not in the claims. The examiner would argue that a traditional algorithm for modeling a lens system is trained on the known parameters of such a system that were discovered through measurements and study. The applicant appears to be attempting to claim the disclosed Neural Network (A machine learning algorithm) without actually stating that is what it is in the claims. 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 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). Thus, these arguments are not convincing.
The applicant then goes on to argue the different between “pretrained model” aka their Neural Network vs. empirical measurements. The examiner notes as he’s already shown they do use a model in the disclosure to do the estimation thus this argument is not valid. Further, the applicant states that paragraphs 134-140 relates to determination of a corrected vertex radius of the sample under test which is a geometrical parameter and not an optical performance parameter. The examiner disagrees because this geometrical parameter directly affects the optical performance of the system. Thus, knowing these parameters being disclosed in figs. 18-20 tells one how the LUT will perform.
Thus, for these reasons the examiner will maintain this rejection.
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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-9, 11, & 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In Claim 7, the applicant claims “at least one optical dataset, called a training optical dataset” and “at least one performance dataset, called a training performance dataset” but it is not clear what this limitations scope is. It’s not clear if this limitation is drawn to a broader “optical dataset” or to a narrower “training optical dataset”. The same applies to “at least one performance dataset” and “a training performance dataset”. This is confusing because the applicant gives the sets two names. Further, the applicant successfully fixed this issue in claim 1 but somehow persisted in this language in the dependent claims when it was clearly rejected for this structure.
Claims 8 & 9 are rejected based on their dependency.
In Claim 11, the applicant claims “at least one measured optical dataset, called an estimated performance dataset.” This limitation is also rejected for the same reasons and in 112 rejection of claim 7.
In Claim 14, the applicant claims “measuring, by optical interferometry on said stack of optical elements, at least one dataset, called a measured optical dataset, comprising data relating to at least one geometric parameter of at least one optical interface of said target objective,” but it is not clear what this limitations scope is. It’s not clear if this limitation is drawn to a broader “dataset” or to a narrower “measured optical dataset”. The same applies to “a dataset” and “estimated performance dataset”; and “database” and “training database”.
Additionally, it is not clear if “at least one dataset” as mentioned in the measuring limitation is the same or different from “a data set” in the providing limitation.
In Claim 13, the applicant claims “a first manufacture phase, prior to the second manufacture phase, comprising several iterations of a step of manufacture of an optical objective of the batch of objectives comprising the following operations:
stacking the optical elements forming said optical objective. As shown the lenses are stacked thus this limitation is met;
measuring, by optical interferometry, at least one training optical dataset on said optical objective,
measuring at least one training performance dataset; and
storing, in a training database, a training dataset formed by:
■ said at least one training optical dataset; and
■ said at least one training performance dataset.”
However, the applicant has failed to define what a “a training optical dataset”, and “a training performance dataset” are. Thus, this claim is left with an indefinite meaning since it would appear that it is merely stacking the elements, measuring the elements with interferometry, then measuring them again in some form or fashion, and storing that data. The examiner notes these steps echo those in claim 1 and further it is unclear if the interferometry of claim 1 is the same as what’s being claimed in claim 13. Further, in the preamble, “a first manufacture phase, prior to the second manufacture phase, the first manufacture phase comprising several iterations of a step of manufacture of an optical objective of the batch of objectives” leaves unclear which manufacturing phase the “the first manufacture phase comprising several iterations of a step of manufacture of an optical objective of the back of objectives” takes place.
Thus, because of the undefined terms clarity issues the interpretation of the scope is left indefinite.
Further, Claim 14 brings in the apparatus of claim 11 with “a device for characterizing said optical objective according to claim 11” but also claims “configured to implement a method for manufacturing a batch of object objectives including a second manufacture phase comprising at least one iteration of a step of manufacture of an optical objective of said batch comprising the following operations:
stacking the optical elements forming said optical objective: and
characterizing said objective by a characterization method comprising a phase of
characterization of a target optical objective comprising the following steps and
performed after stacking said optical elements:
measuring, by optical interferometry on said stack of optical elements, at least one data set, called measured optical set, comprising data relating to at least one geometric parameter of at least one optical interface of said target objective; and
providing, based on said at least one measured optical set, a data set, called estimated performance set, comprising estimated data relating to the performance of said target objective, by a characterization model previously trained with a database, called training database, of training sets constituted based on optical objectives with an architecture identical to that of said target objective.”
This provides a whole slew of problems. First, it is unclear if this is an apparatus or a method claim. The interpretations of which are slightly different in terms of examination. For purposes of interpretation the examiner will construe this to be an apparatus claim. Second, much of the scope of the method is already in the apparatus claim 11. Thus, it is indefinite because one is left confused as to whether the overlapping scopes are just being repeated or are separate and should be considered separately or are somehow interrelated. Further, the formatting such is the “and” after the measuring by optical interferometry step implies the providing step is next and part of the characterization step but the formatting implies it is not part of the characterization step. Also, the applicant claims a second manufacture phase but has not limitation for a first manufacture phase. Thus, it implies there is a first manufacture phase of an unknown scope.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8, & 10-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tao et al (PGPub 2021/0088327) (Tao).
Regarding Claim 1, Tao discloses a method for functional characterization, during manufacture or after manufacture, of a target optical objective comprising several
optical elements (Fig. 4), said method comprising a characterization phase of characterization of said target optical objective comprising the following steps and performed after stacking said optical elements:
measuring, by optical interferometry (Fig. 1, OCT) on said stack of optical elements, at least one measured optical dataset, said at least one measured optical dataset comprising measured data relating to at least one geometric parameter (radius of curvature) of at least one optical interface each of at least two optical elements of said target objective (Paragraphs 38 & 39); and
providing, based on said at least one measured optical dataset an estimated performance dataset, comprising estimated data relating to the performance of said target objective, said estimation being carried out by a characterization model previously trained with a training database comprising, training sets constituted based on optical objectives with an architecture identical to that of said target objective (Figs. 15A-15D, & 19, Paragraphs 93, 134-140).
Regarding Claim 2, Tao discloses the aforementioned. Further, Tao discloses the measuring step (fig. 19, 710) performs several optical interferometry measurements (Paragraph 135), providing one or more measured optical sets.
Regarding Claim 3, Tao discloses the aforementioned. Further, Tao discloses at least one measured optical dataset comprises, partially or wholly, raw measurement values provided by at least one optical interferometry measurement (Fig. 6A, Paragraph 50).
Regarding Claim 4, Tao discloses the aforementioned. Further, Tao discloses at least one measured optical dataset comprises at least one geometric value (Paragraph 50, radius of curvature) relating to at least one optical interface of said target objective, the measurement step comprising the following steps:
at least one optical interferometry measurement each providing raw data (Paragraph 51); and
calculating said at least one geometric value by processing of said raw
data (Fig. 6B, Paragraph 50).
Regarding Claim 5, Tao discloses the aforementioned. Further, Tao discloses:
a neural network, in particular a regression neural network, and even more
particularly a deep learning convolutional neural network, CNN;
a polynomial linear regression model (Paragraph 139);
a Gaussian equation, obtained by a least squares method (Paragraph 39); or
a statistical analysis method (Figs. 7a-7d, Paragraph 52).
Regarding Claim 6, Tao discloses the aforementioned. Further, Tao discloses
that the training database comprises at least one training set obtained based on an objective forming part of a same batch of objectives as the target objective (Paragraphs 91 & 93, Fig. 15a-b, black-box lens model), during the manufacture of said batch of objectives.
Regarding Claim 7, Tao discloses the aforementioned. Further, Tao discloses that at least one training set comprises:
at least one optical dataset, called a training optical dataset, relating to an optical
objective with an architecture identical to the architecture of the target
objective (Paragraphs 91 & 93, Figs. 15a-b, black-box lens model). The black-box model is based on an lens with an identical architecture of the target; and
at least one performance dataset, called training performance dataset, comprising data
relating to the performance of said optical objective (Paragraph 93, Figs. 15c-d).
Regarding Claim 8, Tao discloses the aforementioned. Further, Tao discloses that, for at least one training set:
the training optical set is obtained by simulation; or
the training performance set is obtained by simulation (Paragraph 93). The ray-trace is a simulation.
Regarding Claim 10, Tao discloses the aforementioned. Further, Tao discloses that prior to the characterization phase, a phase of obtaining the characterization model with the training database. This simply means that one would have to have the algorithm to characterize the lenses before characterizing the lens being measured which is a statement of fact and thus is met by the disclosure.
Regarding Claim 12, Tao discloses the aforementioned. Further, Tao discloses a method for manufacturing a batch of optical objectives including a second manufacture phase comprising at least one iteration of a step of manufacture of an optical objective of the batch comprising the following operations:
stacking the optical elements forming said optical objective (fig. 4). As shown the lenses are stacked thus this limitation is met; and
characterizing said objective by the characterization method according to claim 1. This limitation is met since claim 1 stands rejected above.
Regarding Claim 13, Tao discloses the aforementioned. Further, Tao discloses a first manufacture phase, prior to the second manufacture phase, the first manufacture phase comprising several iterations of a step of manufacture of an optical objective of the batch of objectives (Paragraph 55, a manufacturing setting implies there will be several iterations as claimed) comprising the following operations:
stacking the optical elements forming said optical objective (fig. 4). As shown the lenses are stacked thus this limitation is met;
measuring, by optical interferometry (Fig. 1, OCT), at least one training optical set on said optical objective (Paragraphs 38 & 39),
measuring at least one training performance set (Figs. 15A-15D, & 19, Paragraphs 93, 134-140); and
storing, in a training database, a training set formed by (Paragraph 125):
■ said at least one training optical set; and
■ said at least one training performance set.
Regarding Claim 14 Tao discloses the aforementioned. Further, Tao discloses at least one means of stacking the optical elements forming an optical objective (fig. 4). As shown the lenses are stacked thus this limitation is met;
; and
a device for characterizing said optical objective according to claim
11. This has been shown in the rejection of claim 11 above;
configured to implement a method for manufacturing a batch of optical objectives including a second manufacture phase (Paragraph 55) comprising at least one iteration of a step of manufacture of an optical objective of said batch comprising the following operations:
stacking the optical elements forming said optical objective (fig. 4). As shown the lenses are stacked thus this limitation is met; and
characterizing said objective by a characterization method comprising a phase of
characterization of a target optical objective comprising the following steps and
performed after stacking said optical elements:
measuring, by optical interferometry (Fig. 1, OCT) on said stack of optical elements, at least one dataset, called a measured optical dataset, comprising data relating to at least one geometric parameter of at least one optical interface of said target
objective (Paragraphs 38 & 39); and
providing, based on said at least one measured optical dataset, a dataset, called an estimated performance dataset, comprising estimated data relating to the performance of said target objective, by a characterization model previously trained with a database, called training database, of training sets constituted based on optical objectives with an architecture identical to that of said target objective (Figs. 15A-15D, & 19, Paragraphs 93, 134-140).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tao.
Regarding Claim 9, Tao discloses the aforementioned but fails to explicitly disclose at least one estimated performance set, respectively at
least one training performance set, comprises:
at least one wavefront characterization measurement value, or
at least one modulation transfer function, MTF, value for at least one position on the optical objective;
However, the examiner takes official notice that using at least one modulation transfer function, MTF, value for at least one position on the optical objective in lens characterization would have been known to one of ordinary skill in the art at the time of filing;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Tao with at least one wavefront characterization measurement value, or at least one modulation transfer function, MTF, value for at least one position on the optical objective because a MTF is a commonly known value for judging the performance of a lens or lens stack that details how a lens performs in terms of sharpness and clarity as the image becomes finer thus providing important information for judging a newly manufactured lens group.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHON COOK whose telephone number is (571)270-1323. The examiner can normally be reached 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached at 571-272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHON COOK/Examiner, Art Unit 2877 June 11, 2026
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877
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