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 § 112
The rejection of claims under 35 U.S.C. § 112(b) has been withdrawn.
Claim Rejections - 35 USC § 101
The rejection of claims 1-11 under 35 U.S.C. § 101 has been maintained as applicant's arguments have not be found persuasive. The recitation that a "computing unit" performs the steps is not found to be sufficient to render the claims patent eligible because the limitation is merely the use of a computer as a tool to perform an abstract idea – see MPEP § 2106.05(f)
Claim Rejections - 35 USC § 102
The rejection of claims under 35 U.S.C. § 102 has been maintained as Applicant's arguments have not been found persuasive. Applicant argues Tao does not determine geometric parameters of a stack of multiple optical elements and quotes "lens-under-test 122_ and asserts Fig. 4 shows a single lens 200. The Examiner respectfully disagrees. Tao discloses:
lens 200 to be a "cemented achromatic doublet lens" para. [0048].
"A method for full characterization of compound lenses using OCT and RCM is presented." para. [0055]
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 a 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:
computing unit in claims 1-9;
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 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…” and “providing…a data set” all fall under the grouping of Mental Process and/or Certain Methods of Organizing Human Activity.
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. 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 "providing" step does not require any particular calculation to be performed, but only that an estimated geometric data set be provided by the computing unit. The "geometric characterization model…" is not required to be an element of the computing unit and may be a remotely located computer that relays the data to the computing unit.
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 method is implemented by a "computerized unit". This falls under using a computer as a tool to perform an abstract idea. The "computerized unit" is not found to be a particular machine, but rather a highly generic computer. – see MPEP § 2106.05(f)
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.
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 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 § 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(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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; figure 4; paras. [0073] and [0099]), said method being implemented by a computerized unit (522) and comprising a characterization phase (para. [0006]) comprising the following steps which are executed by the computerized unit:
- determining an assembly dataset, comprising, for each of at least two of said optical elements, an individual dataset, comprising at least one physical parameter characteristic (e.g. group index, thickness, glass type. Abstract; para. [0048]: " Glass types (G) of the lens 200 are referred to as G1 216 and G2 218"; See also parameters in Fig. 4) of said optical element; and
- providing, as a function of said assembly dataset, an estimated geometric dataset comprising data relating to at least one geometric parameter for at least two optical interfaces (S1, S2, S3, radii or focal position, optical axis, thickness) of said stack, by a geometric characterization model (para. [0087]) trained (para. [0087]) beforehand with a training database, comprising several training datasets constituted with optical objectives with architecture identical to that of said target objective (paras. [0087], [0134]-[0140]; Please note that the claimed computing unit only needs to have the capability of providing, e.g. displaying, the estimated geometric dataset. The "geometric characterization model" may be present on a different computer rather than within the claimed computing unit).
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 dataset 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 dataset 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 dataset comprises:
- at least one training assembly dataset, 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 training geometric dataset, 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 dataset 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 repeating a step of manufacture of an optical objective from a batch of objectives comprising the following operations:
- determining an assembly dataset for said optical objective, based on individual datasets of the optical elements of said optical objective, and
- stacking the optical elements forming said optical objective,
-measuring a geometric dataset on said optical objective (paras. [0044], [0065]),
- storing, in a training database, a training dataset formed by:
- said assembly dataset, and
- said measured geometric dataset (para. [0117]).
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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