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 .
Detailed Action
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: an optical image processing device, an optical scanning device, a steering device, in claims 1 & 8.
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 § 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 1-10 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 1, the applicant claims an optical scanning device, coupled to the optical image processing device, configured to convert the optical beam along the first optical axis direction into an optical beam along a second optical axis direction, and scan an object to be inspected by using the optical beam along the second optical axis direction. However, this limitation is under a 112f interpretation. Further, when referring to the specification to determine the scope of this limitation the examiner finds that the optical beam scanner (S) which is described in Paragraph 37 (of the PGPub 2025/0362239) is inadequately disclosed since no structure is given for it and it’s merely a recitation of the functional language. Thus, the scope of this particular limitation is left indefinite.
Additionally, in claim 1 the applicant claims scanning the object to acquire sequential YZ cross section structural images and to acquire sequential XZ cross section structural images (AKA B Scans) but then in the processing to reconstruct the 3D image the applicant uses only one or the other. Which leaves the question what the other was to be acquired for and this confuses the scope. For purposes of prosecution the examiner will construe that these limitations should have been in the alternative like the limitation of the 3D image reconstruction.
In Claim 4, the applicant claims “wherein the camera and the visible light source are disposed on two opposite sides of the beam splitter, respectively” but this scope is indefinite because when the examiner consults the instant applications disclosure to figure out how this functions the examiner finds that it would not function as shown or disclosed. Thus, the scope is indefinite. For purposes of prosecution the examiner will construe the claimed limitation to be met by the disclosure of a camera, beam splitter, and light source.
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.
Claim 4 is rejected under 35 U.S.C. 101 because the disclosed invention is inoperative and therefore lacks utility.
In claim 4, the applicant has claimed, “wherein the camera and the visible light source are disposed on two opposite sides of the beam splitter, respectively” but this is an inoperative configuration. This configuration is shown in figs. 1A & 1B. As can be seen the camera (CAM) and light source (VIS) are on opposite sides of the beam splitter. However, in 1A the camera would not receive an image and in 1B the light source would be directed into the scanner (S) and not to the sample. This is due to the nature of how a beam splitter works in which as is shown it will reflect and transmit light in directions in accordance with the angle it is placed at. Thus, if one wanted these embodiments to work the camera or light source cannot be on opposite sides of the beam splitter but must be in adjacent sides (assuming the beam splitter is as shown).
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shibayama et al (PGPub 2022/0214156) (Shibayama).
Regarding Claim 1, Shibayama discloses an optical scanning system for non-destructively acquiring a three-dimensional structure of an object (Fig. 2), comprising:
an optical image processing device (Fig. 2, 101, 103, 106, 107, 108, & 109), configured to generate an optical beam along a first optical axis direction; and
an optical scanning device (105), coupled to the optical image processing device, configured to convert the optical beam along the first optical axis direction into an optical beam along a second optical axis direction, and scan an object to be inspected by using the optical beam along the second optical axis direction. As disclosed the scanner (105) is generally a galvo scanner (Paragraph 77). These function by beam deflection off a rotating mirror. Thus, the galvo scanner would convert the first optical axis of one direction into a second optical axis of a second direction and scan an object using the optical beam along the second optical axis direction;
the limitations, “wherein, the optical image processing device scans the object to be inspected along a Y-axis direction by the optical scanning device to acquire a YZ cross section structural image corresponding to the object to be inspected, and then scans along an X-axis direction to acquire sequential YZ cross section structural images corresponding to the object to be inspected at different consecutive positions;
wherein, the optical image processing device further scans the object to be inspected along the X-axis direction by the optical scanning device to acquire an XZ cross section structural image corresponding to the object to be inspected at different consecutive positions, and then scans along the Y-axis direction to acquire sequential XZ cross section structural images corresponding to the object to be inspected at different consecutive positions;” are functional language and only limit the apparatus to being capable of performing them. The apparatus as disclosed is capable of these limitations (Paragraph 65) thus they are met;
wherein, the optical image processing device further reconstructs a three-dimensional structural image of the object to be inspected according to the YZ cross section structural images corresponding to the object to be inspected at different consecutive positions or the XZ cross section structural images corresponding to the object to be inspected at different consecutive positions (Paragraph 66).
Regarding Claim 8, Shibayama discloses the aforementioned. Further, Shibayama discloses a steering device, coupled to the optical scanning device, operable to turn the optical scanning device and render the optical scanning device to deviate from the second optical axis direction by a predetermined angle (Paragraph 77). As previously discussed, the scanner is a galvo scanner which consists of a mirror that is attached to a motor to rotate the mirror to scan the beam. The motor that rotates the mirror would meet the limitation of the steering device.
Regarding Claim 10, Shibayama discloses the aforementioned. Further, the limitation, “wherein when the object to be inspected is a glass substrate having a plurality of through glass vias (TGVs), the optical image processing device further identifies whether these TGVs are congested and/or defective according to the XY cross section structural images at the different consecutive positions in the Z-axis direction.” Does not serve to further limit the device since the object to be worked upon by an apparatus is not considered limiting. Thus, the limitation is met since the device is capable of working upon this object.
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.
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) 2-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibayama in view of Tsai et al (PGPub 2024/0027331) (Tsai).
Regarding Claim 2, Shibayama discloses the aforementioned. Further, Shibayama discloses wherein the optical scanning device further comprises:
an optical collimator (Fig. 2, 104), configured to convert the optical beam along the first optical axis direction into a beam parallel to the first optical axis direction;
an optical beam scanner (105), disposed at an intersecting position of the first optical axis direction and the second optical axis direction, configured to convert the optical beam parallel to the first optical axis direction into an optical beam parallel to the second optical axis direction;
Shibayama fails to explicitly disclose a first lens group, disposed in the second optical axis direction, configured to expand or reduce the optical beam parallel to the second optical axis direction; a visible light camera module, disposed in the second optical axis direction, configured to capture a two-dimensional structural image corresponding to the object to be inspected; a second lens group, disposed in the second optical axis direction, configured to expand or reduce the optical beam parallel to the second optical axis direction; and an object lens module, disposed in the second optical axis direction and located on one side of the second lens group, configured to focus and project the optical beam parallel to the second optical axis direction onto the object to be inspected;
Tsai teaches a scanning probe in an optical scanning system (abstract, Paragraph 2), comprising:
a visible light camera module (115), disposed in the second optical axis direction, configured to capture a two-dimensional structural image corresponding to the object to be inspected (Paragraph 25); and
an object lens module (108), disposed in the second optical axis direction and located on one side of the second lens group, configured to focus and project the optical beam parallel to the second optical axis direction onto the object to be inspected;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Shibayama with a visible light camera module, disposed in the second optical axis direction, configured to capture a two-dimensional structural image corresponding to the object to be inspected; and an object lens module, disposed in the second optical axis direction and located on one side of the second lens group, configured to focus and project the optical beam parallel to the second optical axis direction onto the object to be inspected because this helps the user in interpreting the OCT data by showing where the image was taken on the surface of the object;
Shibayama as modified by Tsai still fails to explicitly disclose a first lens group, disposed in the second optical axis direction, configured to expand or reduce the optical beam parallel to the second optical axis direction; and a second lens group, disposed in the second optical axis direction, configured to expand or reduce the optical beam parallel to the second optical axis direction;
However, the examiner takes official notice that this would be obvious to one of ordinary skill in the art;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Shibayama as modified by Tsai with a first lens group, disposed in the second optical axis direction, configured to expand or reduce the optical beam parallel to the second optical axis direction; and a second lens group, disposed in the second optical axis direction, configured to expand or reduce the optical beam parallel to the second optical axis direction because it would be common sense to use as many lenses as needed to provide proper beam shaping, steering, magnification, and focusing in an optical apparatus as needed.
Regarding Claim 3, Shibayama as modified by Tsai discloses the aforementioned. Further, Tsai teaches wherein the visible light camera module is composed of a camera (115), a visible light source (117) and a beam splitter (107), and the beam splitter is disposed in the second optical axis direction. The beam splitter is after that beam scanning mechanism (106) thus it is in the second optical axis.
The reasons for combination remain the same.
Regarding Claim 4, Shibayama as modified by Tsai discloses the aforementioned. Further, Tsai teaches wherein the camera (115) and the visible light source (117) are disposed on two opposite sides of the beam splitter, respectively. As discussed in the 112 rejection of the claim this limitation is met by the disclosure of a camera and light source.
The reasons for combination are the same as above.
Regarding Claim 5, Shibayama as modified by Tsai discloses the aforementioned. Further, Tsai teaches wherein the visible light source (117) is disposed closely next to the object lens module to illuminate the object to be inspected (See fig. 1).
Regarding Claim 6, Shibayama as modified by Tsai discloses the aforementioned but fails to explicitly disclose wherein the visible light source is disposed closely on a bottom surface of the object to be inspected to illuminate the object to be inspected;
However, the examiner takes official notice that this would be obvious to one of ordinary skill in the art;
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Shibayama as modified by Tsai with wherein the visible light source is disposed closely on a bottom surface of the object to be inspected to illuminate the object to be inspected because this is a functionally equivalent variant that would be used in cases where the object is transparent to visible light and would offer such advantages as illuminating the entire internal structure of the object allowing for the camera to image it and provide an image of the whole object including internal structure.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibayama in view of Tsai and further in view of Schmoll et al (PGPub 2017/0105618) (Schmoll).
Regarding Claim 7, Shibayama as modified by Tsai discloses the aforementioned but fails to explicitly disclose wherein a focus magnification of the object lens module is adjustable/switchable;
However, Schmoll teaches wherein a focus magnification of the object lens module is adjustable/switchable (Paragraph 129);
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Shibayama as modified by Tsai with wherein a focus magnification of the object lens module is adjustable/switchable because it allows for a trade-off between resolution and field of view which allows one to adjust the speed of the scanning versus the resolution of the images acquired.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shibayama in view of Tsai and further in view of Manallah et al (Aissa Manallah, Mohamed Bouafia, Said Meguellati, "Optical coherence tomography as film thickness measurement technique," Proc. SPIE 9450, Photonics, Devices, and Systems VI, 945006 (6 January 2015); https://doi.org/10.1117/12.2061387) (Manallah)
Regarding Claim 9, Shibayama as modified by Tsai discloses the aforementioned but fails to explicitly disclose wherein the optical image processing device further calculates a thickness value of the object to be inspected according to the YZ cross section structural image or the XZ cross section structural image;
However, Manallah teaches using an OCT image to calculates a thickness value of the object (Section 3, Experimental work);
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention was filed to modify Shibayama as modified by Tsai with wherein the optical image processing device further calculates a thickness value of the object to be inspected according to the YZ cross section structural image or the XZ cross section structural image because calculating the thickness of an object measured can be useful when inspecting an object to determine if it is within specifications.
Conclusion
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 January 1, 2026
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877