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
Claim Rejections - 35 USC § 101
Applicant argues amended claim 1 is not directed to abstract data handling because the trained model is applied to physical parameters or design decision, the characterization phase being performed prior to assembly, and deciding manufacture the optical objective, and thus integrate the abstract idea into practical application. The Examiner is not persuaded. Performing the abstract idea prior to assembling the optical elements is not found to be a practical application because the assembling is not required to be performed. The same applies to the decision to proceed with manufacturing. The manufacturing is not required to be performed.
Claim Rejections - 35 USC § 102
Applicant argues Tao performs measurement on an existing lens. The Examiner agrees that a measurement is performed on an existing lens; however, Tao uses the measurement results to provide correction on the lens or the subsequent produced lens. For example, the measurement is used to determine which glass type to be used for the corrected lens. See step 880 of Fig. 20. Tao teaches "Characterization of physical lens parameters leads to more accurate optical simulations and has benefits in optical design and lens manufacturing." See para. [0055] and "FIG. 7B is an enlargement of the red box shown in (FIG. 7A) that shows the optimal glass types." (emphasis added). This suggests that there is a subsequent target optical element that is manufactured with the optimal glass type.
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 limitation(s) is/are:
means for determining…. and geometric characterization model in claim 10.
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
Applicant is advised that should claims 4 or 8 be found allowable, claim 15 or 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9 and 11, as interpreted by the Examiner, are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception, abstract idea, without significantly more.
Step 2A:
A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
Examiner notes that independent claim 1 is drawn to a process and recites the step of –“determining a set…,” “providing…a data set,” and "determining, based on the geometric dataset…" all fall under the grouping of Mental Process and/or Certain Methods of Organizing Human Activity.
The step of "determining a data set…" can be performing in the human mind as there is no limit to how small and simple the data set is. The step of "providing a data set" can be done in the human mind by thinking, or can be a human activity such as verbally providing the data set or by giving a sheet a paper with the data. The step of "determining, based on the estimated geometric dataset…." can be done in the human mind as it encompasses simple decision making.
Hence under Prong One of Step 2A, claims 15-20 recite a judicial exception.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP § 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine – see MPEP § 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP § 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP § 2106.05(e)
Limitations that are not indicative of integration into a practical application include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP § 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP § 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use –see MPEP 2106.05(h)
Claim 1 recites that the geometric dataset is provided by a trained model. In the alternative where the step of “determining a set” is taken to be a mental process while the step of “providing, as a function of said assembly set, a data set…” is to be an application of the abstract mental process, the act of “providing…” does not amount to be significantly more as it is merely an insignificant extra-solution activity.
Hence, under Prong Two of PEG 2019, the independent claims do not integrate the abstract idea into a practical application.
For the above reasons, claims are ineligible under Step 2A.
Step 2B:
In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed above, there are no additional elements.
Claims 2-8 recite where the data sets originated, however, the origination it does not alter the data sets themselves.
Claim 8 recites details of the geometrical characterization model; however, the listed details are not recited with a particular use or application of the details. The claim still merely requires providing a set of data and only the details are a generic use of a computer.
Claim 9 recites a step of training a model; however this is merely an application of generic/conventional computer process.
Claim 10 recites all the limitations as discussed for claim 1 but adds a "device" which does not amount to significantly more since a "device" is limited to any particular structure and the claim is limited effectively by the abstract idea, not the device itself.
Claim 11 recite additional steps that can be performed in the human mind and thus do not amount to significantly more.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to a judicial exception without significantly more.
Claim 10, as interpreted by the Examiner, is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because although the preamble states it is directed to a device, the “at least one means for…” and the “geometrical characterization model” broadly covers simply mathematical equations or computer algorithms.
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 10 and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 is drawn to the structure of a device and recites that the "device is configured to perform the geometric characterization prior to assembly of the optical elements" and it is not clear if the limitation is merely stating how the device is intended to be used or if it has some particular configuration or structure to correspond to this limitation. Accordingly, it would not be clear to one of ordinary skill what is and what is not covered by the claim. In addition, if the claim is to be covering particular structure, it would not be clear to one of ordinary skill in the art, what the structure is. Claims 17-20 are rejected for the same reasons. In addition, claim 18 recites that the device is configured to determine and it is not clear for the same reasons as claim 10. See MPEP 2173.05(g) for more information.
Claim Rejections - 35 USC § 102
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 Rejections - 35 USC § 103
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.
Claim(s) 1-20, as interpreted by the Examiner, is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tao et al. (US 2021/0088327).
Tao shows:
1. A method for geometric characterization of a target optical objective to be manufactured by stacking several optical elements (abstract; figure4; paras. [0073] and [0099]), said method comprising a characterization phase (para. [0006]) comprising the following steps:
- determining a set, called assembly set, comprising, for at least one optical element, a set, called individual set, comprising at least one parameter characteristic (e.g. group index, thickness, glass type. Abstract. See also parameters in Fig. 4) of said optical element; and
- providing, as a function of said assembly set, a data set, called estimated geometric set, comprising data relating to at least one geometric parameter of at least one optical interface of said stack, by a geometric characterization model trained (para. [0087]) beforehand with a database, called training database, of training sets constituted with optical objectives with architecture identical to that of said target objective (paras. [0087], [0134]-[0140]) wherein said characterization phase is performed prior to assembly of the optical elements forming the target optical objective (obvious if not implicit. See below); and
- determining, based on the estimated geometric dataset, at least one of:
(i) whether the target optical objective is to be manufactured; or
(ii) a modification to a design of the target optical objective prior to manufacturing (obvious if not implicit. See below).
As to the limitation of performing the characterization phase before assembly of the optical elements, it is implicit that this is performed because Tao teaches the characterization while the optical elements are assembled, after which correction is performed on the inner surfaces, and then assembled again. This is because Tao states:
In the present disclosure, corrections are made for distortions of internal lens geometries in post-processing by using optical properties of the respective lens glass material.
This implies that the distorted internal lens geometries are corrected after the distortion measurement. As such, the correction is done (e.g. grinding/polishing) with the lens separated and then re-assembled. In the alternative, the correction is done in the design and produced again for the next manufactured and assembled lens ("Characterization of physical lens parameters leads to more accurate optical simulations and has benefits in optical design and lens manufacturing" para. [0055]). In either case, the characterization is performed before the final re-assembly or the assembly of the design-corrected lens assembly. In the alternative, it would be obvious to perform the characterization prior to assembling the optical elements in order to grind/polish the inaccessible inner surfaces and then reassemble the optical elements. It would also be obvious to characterization before assembling the next iteration of the target optical objective in order to correct and improve the manufactured optical objective.
As to the limitation of determining whether the target optical objective is to be manufactured modifying the design, the decision is made to manufacture the target optical objective and the design is corrected as discussed above.
2. The method
- at least one optical parameter of said optical element (see citation above for claim 1 para. [0087]);
- at least one geometric parameter of said optical element; and
- at least one manufacturing parameter of said optical element.
3. The method according to claim 1, characterized in that at least one parameter of an optical element is:
- provided by a supplier of said optical element (para. [0087]),
- measured by a measurement device (see Fig. 1), or
- calculated based on a digital modelling of said optical element.
4. The method according to claim 1, characterized in that the estimated geometric set comprises the estimated value of at least one geometric parameter of an optical interface of the target objective (para. [0058]).
5. The method according to claim 1, characterized in that the estimated geometric set comprises estimated data of a part, or all, of the raw optical measurement values obtained from the stack of optical elements of said target optical objective (para. [0058]).
6. The method according to claim 1, characterized in that at least one training set comprises:
- at least one assembly set, called training assembly set, obtained from an optical objective, called training optical objective, with architecture identical to the architecture of the target objective (para. [0064], e.g. reference sphere); and
- at least one geometric set, called training geometric set, obtained from said training optical objective (para. [0058]).
7. The method according to claim 1, characterized in that the training database comprises at least one training set obtained from a training objective forming part of one and the same batch of objectives as the target objective, during the manufacture of said batch of objectives (See citation for claim 1. Please note that “training” is not limited to the use of a neural network, but also encompasses conventional programming of a processor).
8. The method according to claim 1, characterized in that the geometric characterization model comprises:
- a neural network,
- a polynomial linear regression model (para. [0139]),
- a Gaussian equation, obtained by a least squares method, or
- a statistical analysis method (Table 3).
9. The method according to claim 1, characterized in that it comprises a phase of training the geometric characterization model with the training database (See citation for claim 1. Please note that “training” is not limited to the use of a neural network, but also encompasses conventional programming of a processor).
With respect to claim 10, please see the citations for claim 1 above.
With respect to claim 11, see para. [0105] and discussion of claim 1 above.
12. The method according to claim 11, characterized in that it also comprises a first manufacture phase (para. [0055]), prior to the second manufacture phase, comprising several iterations of a step of manufacture of an optical objective from the batch of objectives (see discussion of claim 1 above) comprising the following operations:
- determining an assembly set for said optical objective, based on individual sets of the optical elements of said optical objective, and
- stacking the optical elements forming said optical objective,
-measuring a geometric set on said optical objective (paras. [0044], [0065]),
- storing, in a training database, a training set formed by:
- said assembly set, and
- said measured geometric set (para. [0117]).
13. The method according to claim 1, wherein the assembly dataset is determined based on data obtained for the optical elements prior to assembly of the optical elements forming the target optical objective (Para. [0055]: "Characterization of physical lens parameters leads to more accurate optical simulations and has benefits in optical design and lens manufacturing").
14. The method according to claim 1, wherein the determining comprises determining whether the target optical objective is to be manufactured based on the estimated geometric dataset (see discussion of claim 1).
15. The method according to claim 1, wherein the estimated geometric dataset comprises estimated values of at least one geometric parameter of at least one optical interface of the target optical objective (para. [0058]).
16. The method according to claim 1, wherein the estimated geometric dataset comprises estimated data corresponding to raw optical measurement values obtainable from the stack of optical elements (para. [0058]).
17. The device according to claim 10, wherein the at least one means for determining an assembly dataset is configured to determine the assembly dataset based on data obtained for the optical elements prior to assembly of the optical elements forming the target optical objective (Para. [0055]: "Characterization of physical lens parameters leads to more accurate optical simulations and has benefits in optical design and lens manufacturing").
18. The device according to claim 10, wherein the device is configured to determine whether the target optical objective is to be manufactured based on the estimated geometric dataset (Tao does not show that the device is automated to determine whether to manufacture the target optical objective. Tao does now show if a person or the system performs the correction discussed for claim 1. Before the effective filing date of the claimed invention, it would have been obvious automate the decision to correct the parameters of the lens in order to reduce the amount of work required of the system operator. In deciding to correct the lens parameter, the automated system has decided not to manufacture the lens unless the parameters are corrected).
19. The device according to claim 10, herein a training database comprises at least one training assembly dataset (para. [0064], e.g. reference sphere) and at least one training geometric dataset (para. [0058]) obtained from an optical objective having an architecture identical to that of the target optical objective.
20. The device according to claim 10, wherein the geometric characterization model comprises at least one of: a neural network, a regression model, or a statistical analysis model (Table 3).
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 Hwa Andrew S Lee whose telephone number is (571)272-2419. The examiner can normally be reached Mon-Fri 9am-5:30pm.
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, Michelle Iacoletti can be reached at (571) 270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hwa Andrew Lee/Primary Examiner, Art Unit 2877
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