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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/26/24 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 3-6, 8-9, 11, 16-17, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Funakubo et al. (US 2015/0205050 A1).
Re. Claim 1, Funakubo et al. discloses a method of fabricating a fiber scanning system (Fig. 33; [0191]), the method comprising:
forming a set of piezoelectric elements 15A-15D (Fig. 29; [0180]-[0181]);
coating an interior surface and an exterior surface of each of the set of piezoelectric elements 15A-15D with a first conductive material 16 (Fig. 29; [0173], [0182], and [0185]);
providing a fiber optic element 11 having an actuation region (Fig. 29; [0184]);
coating the actuation region of the fiber optic element 11 with a second conductive material 13 (Fig. 29; [0087], [0182]-[0183]);
joining the interior surfaces of the set of piezoelectric elements 15A-15D to the actuation region of the fiber optic element 11 (Fig. 29; [0183]);
poling the set of piezoelectric elements 15A-15D (Fig. 29; [0183]); and
forming electrical connections 17/19 to the exterior surface of each of the set of piezoelectric elements 15A-15D and the fiber optic element 11, respectively (Fig. 29; [0185]).
Re. Claim 3, Funakubo et al. discloses the fiber optic element 11 further comprises an extension region and a light emission region (Figs. 32-33; [0190]).
Re. Claim 4, Funakubo et al. discloses coating the interior surface and the exterior surface of each of the set of piezoelectric elements 15A-15D with the first conductive material 16 comprises metallizing the interior surface and the exterior surface of each of the set of piezoelectric elements 15A-15D (Fig. 29; [0173], [0182], and [0185]).
Re. Claim 5, Funakubo et al. discloses coating the actuation region of the fiber optic element 11 with the second conductive material 13 comprises metallizing the actuation region of the fiber optic element 11 (Fig. 29; [0087], [0182]-[0183]).
Re. Claim 6, Funakubo et al. discloses coating an additional portion of the fiber optic element 11 with at least one of the first conductive material or the second conductive material (e.g., second conductive material 13), wherein the electrical connections 19 to the fiber optic element 11 are made to the additional portion of the fiber optic element 11 (Fig. 29; [0185]).
Re. Claim 8, Funakubo et al. discloses forming a conductive coating on an additional portion of the fiber optic element 11 (e.g., conductive coating formed of rear portion of coating 13 connected to the electrical connection 19; Fig. 29; [0185]).
Re. Claim 9, Funakubo et al. discloses the additional portion comprises at least one of an extension region or a light emission tip, specifically an “extension region” which extends rearwardly from the piezoelectric elements 15A-15D; Fig. 29; [0185]). Regarding the limitation, “suitable for use in position or motion sensing of the extension region or the light emission tip,” it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Re. Claim 11, Funakubo et al. discloses joining the interior surfaces of the set of piezoelectric elements 15A-15D to the actuation region of the fiber optic element 11 comprises forming a metal-to-metal bond (e.g., welding technique; [0089] and [0091]).
Re. Claim 16, Funakubo et al. discloses the set of piezoelectric elements 15A-15D comprises four quartered piezoelectric tube elements 15A, 15B, 15C, and 15D each having an exterior surface and each having a quartered electrode disposed on the respective exterior surface (Fig. 29; [0184]).
Re. Claim 17, Funakubo et al. discloses poling the set of piezoelectric elements 15A-15D comprises grounding the actuation region of the fiber optic element 11 and applying a voltage across the set of piezoelectric elements 15A-15D (Fig. 29; [0185]).
Re. Claim 19, Funakubo et al. discloses the fiber optic element 11 comprises a glass material ([0087]).
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) 2, 7, 15, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Funakubo et al. (US 2015/0205050 A1).
Re. Claim 2, Funakubo et al. discloses the method as discussed above, wherein the set of piezoelectric elements comprises plates arranged in a rectangular shape around the circumference of the fiber 11 9Fig. 29). However, Funakubo et al. does not disclose an arrangement wherein the set of piezoelectric elements comprises piezoelectric tube elements.
Piezoelectric elements in a shape of tube are known in the art, as discussed by Funakubo et al. ([0004]), and the claimed arrangement would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the purpose of providing a piezoelectric element having a circular outer cross-section. “A person of ordinary skill is also a person of ordinary creativity, not an automaton” – ‘[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007).
Re. Claims 7 and 20, Funakubo et al. discloses the method as discussed above. Funakubo et al. does not disclose an arrangement wherein a portion of the fiber optic element is characterized by a tapered profile, wherein the fiber optic element further comprises an extension region characterized by a first diameter and a light emission region characterized by a second diameter that is less than the first diameter.
Tapering the emission end of an optical fiber in an optical scanner is well-known in the art, and would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the purpose of reducing the spot size of the emitted beam, thereby increasing resolution of the scanner. “A person of ordinary skill is also a person of ordinary creativity, not an automaton” – ‘[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007).
Re. Claim 15, Funakubo et al. discloses the method as discussed above, wherein the exterior surface of each of the set of piezoelectric elements is defined by a rectangular cross section (Fig. 29). However, Funakubo et al. does not disclose an arrangement wherein the interior surface of each of the set of piezoelectric elements is defined by a semi-circular cross section.
The claimed arrangement would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the purpose of providing a circular cross-section for passage of the optical fiber, which provides greater structural support to the optical fiber therein. “A person of ordinary skill is also a person of ordinary creativity, not an automaton” – ‘[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007).
Re. Claim 18, Funakubo et al. discloses the method as discussed above. However, Funakubo et al. does not additionally disclose mounting a retention collar around the set of piezoelectric elements after poling thereby providing mechanical support to the fiber scanning system.
The claimed arrangement would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the purpose of providing additional mechanical support for the piezoelectric elements using a well-known element in the art. “A person of ordinary skill is also a person of ordinary creativity, not an automaton” – ‘[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR International Co. v. Teleflex Inc., 550 USPQ2d 1385 (2007).
Allowable Subject Matter
Claim 10 and 12-14 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Re. Claim 10, the prior art does not disclose or reasonably suggest the claimed invention, specifically wherein the conductive coating is electrically isolated from the first conductive material on the interior surface of the set of piezoelectric elements.
Re. Claims 12-14, the prior art does not disclose or reasonably suggest the claimed invention, specifically wherein the set of piezoelectric elements comprises a first hemispherical piezoelectric element having a first pair of quartered electrodes disposed on the exterior surface and a second hemispherical piezoelectric element having a second pair of quartered electrodes disposed on the exterior surface.
The most applicable prior art, Funakubo et al. (US 2015/0205050 A1), addressed above, fails to disclose or reasonably suggest the claimed invention, specifically those portions highlighted above in combination with the remaining limitations of the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to R. PEACE whose telephone number is (571)272-8580. The examiner can normally be reached 9-5 pm.
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/RHONDA S PEACE/Primary Examiner, Art Unit 2874 6/3/26
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