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 .
Election/Restrictions
This application contains claims directed to the following patentably distinct species of optical scanners, each of species A-K having mutually exclusive structures as illustrated:
Species A: Figures 4-8
Species B: Figures 14A-14D
Species C: Figures 15A-15D
Species D: Figures 16A-16B
Species E: Figure 17
Species F: Figure 18A-18B
Species G: Figures 19A-19C
Species H: Figures 20A-20B, 21A-21D
Species I: Figures 22
Species J: Figure 23, 24
Species K: Figure 25
The species are independent or distinct because each of the optical scanners of Species A-K have mutually exclusive structural characteristics as illustrated. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claim 1 appears to be generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: due to the mutually exclusive structure of each optical scanner species A-K, divergent and different text query and classification searches are required for each species and art that is applicable to one species is not likely to be applicable to another species. Due to the amount of prior art in the relevant areas, a thorough search of more than one species would place undue burden on the examiner and would not be possible within the allowed examination time for a given case.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Craig Largent (Reg. No. 56,400) on June 10, 2026 a provisional election was made without traverse to prosecute the invention of Species B, Figures 14A-14D, claims 1-20. Affirmation of this election must be made by applicant in replying to this Office action.
The examiner notes that claim 9 is directed to a cantilevered silicon beam characterized by a tapered shape. The cantilevered beam (1404) of elected species B, which is illustrated in Figures 14A-14D, does not have a tapered shape. Therefore, claim 9 is drawn to non-elected species.
Claim 9 has been withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected species.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The prior art documents submitted by applicant in the Information Disclosure Statement filed on October 16, 2024 have all been considered and made of record (note the attached copy of form PTO-1449).
Drawings
Twenty-nine (29) sheets of drawings were filed on July 17, 2024 and have bene accepted by the examiner.
Specification
Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14 recites the same limitations set forth in lines 11-12 of claim 13 and therefore does not further limit claim 13. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 2, 6-8, and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (US 2009/0235396 A1), hereafter Wang.
Regarding claims 1, 2, 6-8, and 10-12; Wang discloses an optical scanner (scanner system, 200, 201, 240, 250, 280; see Figures 3-6A and 6C; see paragraphs 27-30 and 32) comprising:
a base region (substrate 220);
a cantilevered silicon beam (cantilever 212; see paragraph 65) protruding from the base region;
a waveguide (cantilever waveguide 212, or alternatively optical fiber 282 mounted on cantilever 212; see paragraphs 57, 59, 63, and 66-68) disposed on the base region and the cantilevered silicon beam; and
a transducer assembly comprising one or more piezoelectric actuators (piezoelectric actuators; see paragraphs 18, 79, 85) coupled to the cantilevered silicon beam (see Figure 9A which illustrates a piezoelectric actuator layer 308 coupled to the cantilever 212) and configured to induce motion of the cantilevered silicon beam in a scan pattern (the free end of the cantilever scans in a raster, spiral or other pattern; see paragraph 18);
wherein the transducer assembly comprises a plurality of piezoelectric actuators coupled directly to the cantilevered silicon beam (see Figures 10A and 10B; vertical piezoresistive transducer 324 and horizontal piezoresistive transducer 326 are coupled to the cantilever 212);
wherein:
the cantilevered silicon beam (212) has an elongated width along a first plane (horizontal plane; see Figures 3-6); and
the transducer assembly (piezoelectric transducers) is configured to induce motion of the cantilevered silicon beam (212) in a second plane orthogonal (vertical plane) to the first plane (horizontal plane);
wherein two of the one or more piezoelectric actuators (324, 326) lie in the first plane (horizontal plane; see Figure 10A);
further comprising an input light source (laser diode 202) optical coupled to the waveguide;
wherein the base region (substrate 220) comprises a layer of silicon (see paragraph 58) and the cantilevered silicon beam (212) comprises monocrystalline silicon (layer of silicon; see paragraph 65);
wherein the cantilevered silicon beam (212) is integrally formed with and protrudes from the base region (see Figures 3-6 and 9-10);
wherein the scan pattern comprises a spiral scan pattern (see paragraph 18).
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.
Claims 3-5, 13-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2009/0235396 A1), hereafter Wang, in view of
Regarding claim 3; Wang discloses the optical scanner of claim 2 as applied above and further teaches that one or more scanning actuators are provided (see paragraphs 15 and 18), but fails to specifically state that the one or more piezoelectric actuators comprise three piezoelectric actuators. Before the effective filing date of the present invention, a person of ordinary skill in the art would have found it obvious to provide any desired number of piezoelectric actuators, since Wang teaches that one or more may be used, including three piezoelectric actuators for the purpose of accurately controlling the scanning motion of the cantilevered beam to obtain a desired scan pattern, since it does not appear that any novel or unexpected advantages would occur from the incorporation of additional actuator elements as suggested by the teachings of Wang.
Regarding claim 4; Wang discloses the optical scanner of claim 1 as applied above. Wang further teaches that a set of lateral protrusions (236; see Figure 8B) may be provided for the purpose of locating position sensors onto the cantilever (212), wherein position sensors enable long term control of scanning stability (see paragraph 58). Thus, before the effective filing date of the present invention, a person of ordinary skill in the art would have found it obvious to further provide a set of lateral protrusions extending from the cantilevered silicon beam (212) and forming position sensors to enable long term control of scanning stability based on the teachings of Wang.
Regarding claim 5; the examiner notes that the lateral protrusions forming the position sensors (236) taught by Wang are on the free end of the cantilever beam (212), and that the piezoelectric actuators (308 in Figure 9A; 324, 326 in Figure 10A) extend between the base region (substrate 220 to which cantilever 212 is attached at a fixed end) and the free end of the cantilever beam (212). Therefore, the teachings of Wang suggest that each of the one or more piezoelectric actuators extend between the base region and the one of the set of lateral protrusions (position sensors laterally protruding at the free end of the cantilever 212).
Regarding claims 13-18 and 20; Wang discloses an optical scanner (scanner system, 200, 201, 240, 250, 280; see Figures 3-6A and 6C; see paragraphs 27-30 and 32), comprising:
a base region (substrate 220);
a cantilevered optical member (212) protruding from the base region (220),
wherein the cantilevered optical member (212) includes:
a silicon beam (see paragraph 65) having an elongated width along a first plane (horizontal plane; see Figures 3-6 and 9-10);
one or more waveguides (cantilever waveguide 212, or alternatively optical fiber 282 mounted on cantilever 212; see paragraphs 57, 59, 63, and 66-68); and
a transducer assembly (piezoelectric actuators; see paragraphs 18, 79, 85) comprising a plurality of piezoelectric actuators coupled to the base region and configured to induce motion of the cantilevered optical member in a second plane (vertical plane) orthogonal to the first plane (see Figures 9 and 10);
wherein the base region (substrate 220) comprises a layer of monocrystalline silicon (see paragraph 58) and the silicon beam (212) is integrally formed with and protrudes from the layer of monocrystalline silicon (see Figures 3-6 and 9-10);
wherein each of the plurality of piezoelectric actuators (308, 324, 326) is oriented in a direction substantially parallel to a longitudinal axis of the cantilevered optical member (212; see Figures 9 and 10);
wherein the plurality of piezoelectric actuators (308, 324, 326) comprise longitudinal piezoelectric actuators extending or contracting along the longitudinal axis (see Figures 9 and 10);
wherein the first plane is a horizontal plane and the second plane is a vertical plane (see Figures 3-6 and 9-10);
further comprising a strain gauge mechanically coupled to at least one of the plurality of piezoelectric actuators (see paragraphs 92 and 93).
Wang does not disclose that the embodiments of Figures 3-6 and 9-10 include a plurality of lateral protrusions extending from the silicon beam. Wang further teaches that a set of lateral protrusions (236; see Figure 8B) may be provided for the purpose of locating position sensors onto the cantilever (212), wherein position sensors enable long term control of scanning stability (see paragraph 58). Thus, before the effective filing date of the present invention, a person of ordinary skill in the art would have found it obvious to further provide a set of lateral protrusions extending from the cantilevered silicon beam (212) and forming position sensors to enable long term control of scanning stability based on the teachings of Wang.
Allowable Subject Matter
Claim 19 is 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, which is the most relevant prior art known, does not disclose or render obvious the optical scanner defined by claim 19, wherein the base region comprises a plurality of first notches; each of the plurality of lateral protrusions comprises a plurality of second notches; and each of the plurality of piezoelectric actuators extends from one of the plurality of first notches to one of the plurality of second notches in combination with all of the limitations of base claim 13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Each of the following references disclose optical scanning waveguides and/or fibers:
Seibel (US 2001/0055462 A1);
Yokota et al. (US 2017/0010462 A1); and
Melville et al. (US 6,046,720).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE R CONNELLY whose telephone number is (571)272-2345. The examiner can normally be reached Monday-Friday, 9 AM to 5 PM.
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, Uyen-Chau Le can be reached at 571-272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE R CONNELLY/Primary Examiner, Art Unit 2874
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