DETAILED ACTION
This office action is in response to the application and claims filed on July 17, 2024. This application is a 371 of PCT / EP2023 / 051068.
Claims 1-20 are pending, with claim 1 as the sole independent claim.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The prior art documents submitted by Applicant in the Information Disclosure Statements filed on July 17, 2024, have been considered and made of record (note attached copy of forms PTO-1449).
Drawings
The original drawings (twenty-one (21) pages) were received on July 17, 2024. These drawings are acknowledged.
Claim Objections
Claims 1-20 are objected to because of the following informalities: regarding claims 1-20, these claims appear to be direct translations from a foreign (German) patent document into English. Therefore, there are numerous typos, informalities, and awkward phrases in the English language. Applicant’s cooperation is respectfully requested to carefully review all claims 1-20 for issues that come to their attention (due to the translation). Appropriate correction is required.
Further, claims 1-20 are objected to for the following specific reasons:
-Claim 1: the term “each of which” is not clear if referring to the “core” or the “plurality of glass fibers.” Next, using the term “optical element” (which is a broad, generic term) and then a “lens” / “beam splitter” / or “prism” should be re-drafted to make clear if these are a set of “optical element(s)”, or if another claimed term could be used from the prior art (that which is not a “lens” / “beam splitter” / “prism”). The terms “preferably” (four instances in claim 1) and “substantially” (two instances in claim 1) and “loosely guided” and “comparatively low” should be reviewed for proper clarity and description (note the 35 U.S.C. 112(b) rejections below for at least claim 1). As a note, the term “the optical element” is recited which is not necessarily positively claimed, unless this is a generic term (note the 35 U.S.C. 112(b) rejection below). Finally, the phrase “and to emit same outwards” is awkward and should be re-drafted.
-Dependent claims 3, 5, 6, 7 (three instances), 8 (three instances), 10, 11 (four instances), 13, 14 (seven instances), 15, 16 (two instances), 17 (two instances), 18 (two instances), 19, and 20 (five instances) include the term “preferably” to describe features of the claim(s). Using “preferably” in these claims is objectionable, and also note the 35 U.S.C. 112(b) rejections below.
-Dependent claims 7-9, 12-15, and 17-19: the term “the optical element” is also used again, although it is not clear that this feature is positively claimed by independent claim 1. Claim 1 should be reviewed accordingly.
-Dependent claim 11: the term “comparatively low thermal expansion” should be reviewed, also noting the 35 U.S.C. 112(b) rejection below.
-Dependent claim 18: the term “comparatively good thermal conductivity” should be reviewed, also noting the 35 U.S.C. 112(b) rejection below.
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 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 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 1 is rejected, and claims 2-20 are also rejected at least as being in dependent claim form. However, some dependent claims also have vagueness issues themselves.
Regarding independent claim 1, and dependent claims 3, 5, 6, 7 (three instances), 8 (three instances), 10, 11 (four instances), 13, 14 (seven instances), 15, 16 (two instances), 17 (two instances), 18 (two instances), 19, and 20 (five instances), the term “preferably” is used to define later features in the claim(s). Additionally, at least in independent claim 1, the feature “optical element” (which is a broad, generic term) is used but also the narrower version of a “lens” / “beam splitter” / or “prism” is also used. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation before the “preferably” clauses (four instances in claim 1), and the numerous dependent instances, and the claim also recites “further to an open end of the cladding” / “vertically in a loosely guided…” / “the first housing” / “consists/consist thereof” which is/are the narrower statement(s) of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Further regarding claim 1, the terms “comparatively low thermal expansion” and “loosely guide” in the claim body are relative terms which renders the claim indefinite. The terms “comparatively low” (to defined TE), and “loosely” (for guiding) are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Further, it is unclear if the term “at least one optical element” is the larger generic term of the group to follow (the “lens” / “beam splitter” / “prism”), or if this is simply an additional example for the optical feature. For these combined reasons (also with the “preferably” language above), claim 1 is found vague and indefinite under the meaning of 35 U.S.C. 112(b).
Noting dependent claims 11 and 18, the feature “comparatively low thermal expansion” and “comparatively good thermal conductivity” are also vague and indefinite for being relative terms which yield indefinite claim scope. The features claimed are also not clear as to what is being compared, or what is being referred by such comparison(s). Claims 11 and 18 are therefore rejected under 35 U.S.C. 112(b) as being vague and indefinite.
Dependent claims 7-9, 12-15, and 17-19 recites the limitation "the optical element" in the claim body. This term “the optical element” may be found in independent claim 1, but it is not clear that this feature is positively claimed by the independent. This is because a generic “optical element” is recited but also with more specific features such as the “lens” / “beam splitter” / “prism”. Therefore, there is insufficient antecedent basis for this limitation in the claims 7-9, 12-15, and 17-19. Claims 7-9, 12-15, and 17-19 are therefore rejected under 35 U.S.C. 112(b) as being vague and indefinite.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aoki et al US 2013/0071063 A1.
Aoki et al US 2013/0071063 A1 teaches (ABS; Figs. 1A, 2A, 2B, 9A-B, 10A-B, 11A-B, 12A-C, 13A; corresponding text, in particular paragraphs [0026] – [0057]; Claims) a fiber exit element (cited Figs.) having a plurality of glass fibers (fibers) each having at least one core (fiber core), each of which is designed to guide a signal light beam, and having at least one optical element (which may be comprised from the group of: an optical lens, an optical beam splitter or an optical prism), as in Figs. (note the vast breadth of optical “element” in a patent claim, but at least lenses / collimators / concavo-convex in Aoki), which is connected at an entry surface to an open end of each of the cores of the glass fibers, “preferably” further to an open end of a cladding of the glass fibers substantially enclosing the core (this feature not necessarily claimed), and is designed to receive the signal light beam from the open ends of the cores of the glass fibers and to emit same outwards in the form of exit beams via at least one exit surface, characterized by at least one first housing (housing in cited Figs., comprised of at least by outer elements that retain the ferrule and fiber(s)) which is connected to the optical element and, together with the optical element, forms a first housing space (see Fig. 6) which at least substantially encloses at least the entry surface of the optical element with the open ends of the cores of the glass fibers, wherein the first housing has a first housing shell 42 which extends at least substantially parallel to the glass fibers (see Figs.; negative space in a recess area for the fiber(s)) and is designed to be optically transparent and/or optically absorbent at least in sections (either absorbs some light and potential transmits some light), and wherein the first housing has a fiber feedthrough element (negative space for the fiber(s) of Aoki to be located) through which the glass fiber extends, preferably vertically, in a loosely guided (frame of reference) or fixedly connected manner, and at least sections of which are designed to be optically reflective and/or optically absorbent (some light is absorbed) wherein preferably the first housing shell and/or the fiber feedthrough element comprises/comprise a material with a comparatively low thermal expansion, and preferably consists/consist thereof, which clearly, fully meets Applicant’s claimed structural limitations of sole pending independent claim 1.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. U.S. Patent No. 9,213,148 B2.
Li et al. U.S. Patent No. 9,213,148 B2 teaches (ABS; Figs. 4A-4C, 5A-5D, 6, 10A-10B; corresponding text, in particular columns 5-10; see column 8, lines 29-38; Claims) a fiber exit element (cited Figs.) having a plurality of glass fibers (fibers) each having at least one core (fiber core), each of which is designed to guide a signal light beam, and having at least one optical element (which may be comprised from the group of: an optical lens, an optical beam splitter or an optical prism), as in Fig. 10A-10B (note the vast breadth of optical “element” in a patent claim), which is connected at an entry surface to an open end of each of the cores of the glass fibers, “preferably” further to an open end of a cladding of the glass fibers substantially enclosing the core (this feature not necessarily claimed), and is designed to receive the signal light beam from the open ends of the cores of the glass fibers and to emit same outwards in the form of exit beams via at least one exit surface, characterized by at least one first housing (housing in cited Figs., comprised of at least 40 and/or 42) which is connected to the optical element and, together with the optical element, forms a first housing space (see Fig. 6) which at least substantially encloses at least the entry surface of the optical element with the open ends of the cores of the glass fibers, wherein the first housing has a first housing shell 42 which extends at least substantially parallel to the glass fibers (see Fig. 6) and is designed to be optically transparent and/or optically absorbent at least in sections (either absorbs some light and potential transmits some light), and wherein the first housing has a fiber feedthrough element (negative space for the fiber(s) of Li to be located) through which the glass fiber extends, preferably vertically, in a loosely guided (frame of reference) or fixedly connected manner, and at least sections of which are designed to be optically reflective and/or optically absorbent (some light is absorbed) wherein preferably the first housing shell and/or the fiber feedthrough element comprises/comprise a material with a comparatively low thermal expansion, and preferably consists/consist thereof, which clearly, fully meets Applicant’s claimed structural limitations of sole pending independent claim 1.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Budd et al. US 2011/0026882 A1, and further in view of Li et al. U.S. Patent No. 9,213,148 B2. Also of note is the Written Opinion from PCT / EP 2023 / 051068, which is fully incorporated herein as reference.
The combination of Budd ‘882 and Li ‘148 make obvious all such features of claim 1, in that Li ‘148 teaches specific ferrule and/or housing materials chosen (see column 8, lines 29-38) that will functionally optically absorb at least some light. Li’s ferrule and/or housing will be a selectable plastic for the ferrule feature of Budd. Budd ‘882 teaches all structural elements of independent claim 1 but is silent to those optically absorbing features of a ferrule-like element. Budd teaches (ABS; Figs. 1A-1C, 2A-2D, 3A-3C, 5A-5D; corresponding text, notably paragraphs [0018] – [0023], [0025] – [0027]; Claims) a fiber exit element (cited Figs.) having a plurality of glass fibers 16 (fibers) each having at least one core (fiber core), each of which is designed to guide a signal light beam, and having at least one optical element 40 / 28 (which may be comprised from the group of: an optical lens, an optical beam splitter or an optical prism), as in Figs 1-3 and 5 (note the vast breadth of optical “element” in a patent claim), which is connected at an entry surface to an open end of each of the cores of the glass fibers, “preferably” further to an open end of a cladding of the glass fibers substantially enclosing the core (this feature not necessarily claimed), and is designed to receive the signal light beam from the open ends of the cores of the glass fibers and to emit same outwards in the form of exit beams via at least one exit surface, characterized by at least one first housing (housing in cited Figs., comprised of at least 10, a “ferrule”) which is connected to the optical element and, together with the optical element, forms a first housing space (see Figs. 1-3 and 5) which at least substantially encloses at least the entry surface of the optical element with the open ends of the cores of the glass fibers, wherein the first housing has a first housing shell (part of ferrule) which extends at least substantially parallel to the glass fibers (see Figs. cited in Budd) and is designed to be optically transparent and/or optically absorbent at least in sections (either absorbs some light and potential transmits some light), and wherein the first housing has a fiber feedthrough element (negative space for the fiber(s) of Budd to be located) through which the glass fiber extends, preferably vertically, in a loosely guided (frame of reference) or fixedly connected manner, and at least sections of which are designed to be optically reflective and/or optically absorbent (some light is likely absorbed, but not express from Budd itself) wherein preferably the first housing shell and/or the fiber feedthrough element comprises/comprise a material with a comparatively low thermal expansion, and preferably consists/consist thereof.
Since Budd and Li are both from the same field of endeavor, the purpose disclosed by Li would have been recognized in the pertinent art of Budd.
A person having ordinary skill in the art at a time before the effective filing date of the current application would have recognized the teaching of Li, to have a ferrule feature that includes an optically absorbing material, to absorb some light in the system (as a protection mechanism), into the base design of the fiber exit element of Budd, to allow for the absorption of some stray light that is unwanted, for improving optical operation of the exit element (and decrease of heat). Further, it would have required no undue burden or unnecessary experimentation to arrive at such feature of the absorbing material in the ferrule of Budd by viewing Li’s teachings. See KSR v. Teleflex, 127 S.Ct. 1727 (2007). For these reasons, independent claim 1 is found obvious over Budd and further in view of Li (henceforth “COMBO”).
The Examiner also fully incorporates the logic and analysis of the Written Opinion from PCT EP ‘068, found in the file (Sections 2.2 – 3).
Regarding further dependent claims 2-20, based on the hypothetical design of COMBO for claim 1, and considering the further limitations, all such dependent features are either found with Budd and/or Li themselves, or would have been simple and obvious design choices for the normally skilled artisan at the time of the effective filing date of the current application. At this “time” before the effective filing date of the current application, it would have been an obvious matter of common skill and design choice to a person of ordinary skill in the art to use features such as those optical selections and integrations because Applicant has not disclosed that using such features provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected COMBO to perform equally well with such features as the optical dependencies (in claims 2-20) because these claim terms would have been easily integrated and would have also been recognized by one with common skill in the art to improve optical signal propagation and the resultant output connectivity for a “connector” type element (at the “exit”). It would have required no undue burden or unnecessary experimentation to arrive at those features with a fiber exit element such as in COMBO’s hypothetical claim 1. Further, the base structure of the sole independent claim 1 is found obvious over COMBO as discussed prior in this section. Therefore, it would have been an obvious matter of common skill and design choice to modify (and/or update) COMBO to obtain the invention as specified in claims 2-20. See KSR v. Teleflex, 127 S.Ct. 1727 (2007).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PTO-892 form references C-D, which pertain to the state of the art of fiber optic exit elements that use optical features and housings.
Applicant’s cooperation is requested to carefully review the close prior art used herein in rejections under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103. Further, many issues exist as noted in “Claim Objections” and “Claim Rejections – 35 U.S.C. 112(b)”, which are likely due to the direct translations from a German document into English. Additionally, many feature in claims 1-20 are “optional” or “preferably” found.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Petkovsek whose telephone number is (571) 272-4174. The examiner can normally be reached M-F 7:30 - 6 PM.
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/DANIEL PETKOVSEK/Primary Examiner, Art Unit 2874 June 18, 2026
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