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
Applicant's election with traverse of Group I, claims 1-16 and 19, and Species A1, B1, C1, D1, E1, F1, G1 & H1 in the reply filed on September 24, 2026 is acknowledged. No grounds of traversal set forth in the remarks of July, 20, 2026 or the remarks of September 24, 2026. This is not found persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Applicant has identified claims 1-16 and 19 as generic to or reading on the elected species. However, upon review, claim 12 requires the mount to be “comprising sliding elements” that is directed withdrawn Species G2, drawn to a mount including additional sliding elements – as opposed to elected Species G1, drawn to a mount not including sliding elements. Thus, claim 12 and its dependent claim 13 are also considered withdrawn. For clarity, claims 12-13, 17-18 and 20-21 are considered withdrawn and claims 1-11, 14-16 and 19 are examined below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed April 1, 2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. Particularly, the German Examination Report dated March 13, 2025, did not have any English explanation of relevance, such as if it is an allowance or a rejection and why. Therefore, this reference has been crossed out and it has not been considered, however the other documents in the information disclosure statement are being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “6” has been used to designate both “fixed contour” in figures 3, 6-13 and a “contour” on a spring in figures 1-2 (i.e. not fixed). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-11, 14-16 and 19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Regarding claim 1 “a rim having an opening configured such that an optical element can be radially inserted into the mount” raises clarity issues. It is unclear if an optical element is required or if the mount being capable of having an optical element inserted is required (assumed). The examiner suggests and for purposes of examination will use “a rim having an opening capable of having an optical element
Claims 2-11, 14-16 and 19 are rejected under 35 U.S.C. 112(b) as being indefinite, since they depend on claim 1 and therefore have the same deficiencies.
Regarding claims 2 and 5-6 “the edge” raises clarity issues. Firstly, there is an antecedent issue since the claims refer to "the edge" and the claim contains no earlier recitation of an edge and it is unclear as to what was referenced, see MPEP 2173.05(e). Secondly, and more importantly, it is unclear if the edge is an inner edge of the mount or an outer edge of the optical element or the rim. The examiner suggests and for purposes of examination will use “wherein [[the]] an inner edge of the mount …”
Regarding claim 3 (dependent of 1) “the radially acting element” has antecedent issues. It is unclear if this is a new/different element or if applicant is referring to the at least one radially acting element introduced in claim 2 (assumed). The examiner suggests and for purposes of examination will use “… according to claim [[1]] 2, wherein the at least one radially acting element …”
Claim 4 is rejected under 35 U.S.C. 112(b) as being indefinite, since it depends on claim 3 and therefore has the same deficiencies.
Regarding claim 8 (dependent of 1) “the spring part” and “the radially acting element” have antecedent issues. Regarding the spring part, it is unclear if this is a new/different element or if applicant is referring to the spring part introduced in claim 3 (assumed). Regarding the radial acting element, it is unclear if this is a new/different element or if applicant is referring to the at least one radially acting element introduced in claim 2 (assumed). Since 3 is interpreted to depend from 2 the examiner suggests and for purposes of examination will use “… according to claim [[1]] 3, wherein the spring part of the at least one radially acting element is …”
Regarding claim 9 (dependent of 1) “the C- or U- shaped profile” has antecedent issues. It is unclear if this is a new/different element or if applicant is referring to the C- or U- shaped profile introduced in claim 7. See below for an interpretation.
Regarding claims 3-4 and 9 the scope covered by a “contour” is unclear. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The Random House Dictionary© defines contour as “the outline of a figure or body; the edge or line that defines or bounds a shape or object” and provides synonymous terms of: “boundary, form, configuration.” The specification does not disclose a special definition of a “contour” that would meet the standards set forth in Toro Co. v. White Consolidated Industries Inc., Fed. Cir. 1999; see MPEP 2111.01.IV.A. The term is indefinite because the specification does not clearly redefine the term. Looking to the specification for guidance applicant has:
inner contour 4 of mount 1 in figure 1
outer contour of the optical element 5 noted in paragraph [0043]
contour 6 attached to spring 21 in figures 1-2,
fixed contour 6 of various shapes in figures 3 & 5-13,
counter-contour 7 in figure 5
Insofar as the examiner can determine applicant is generally using the term “contour” of a mount to have a unique meaning of “a region of contact.” This interpretation is reasonable and well within the grasp of the ordinarily skilled and consistent the broadest reasonable interpretation as is required be the MPEP §2111. See below for interpretations.
Further, regarding claim 3 “the at least one radially acting element is a spring element or a contour” raises clarity issues. It is unclear if applicant means an inner contour, or a moving contour attached to spring (assumed in light of figures 1-2), or a fixed contour of various shapes, or a counter-contour. The examiner suggests and for purposes of examination will use “wherein the radially acting element is a contour on a spring element
Claim 4 is rejected under 35 U.S.C. 112(b) as being indefinite, since it depends on claim 3 and therefore has the same deficiencies.
Further regarding claim 4 (dependent of claim 3) “the contours” raises clarity issues. Particularly, switching from the singular “contour” in claim 3 to the plural “contours” in claim 4 makes it unclear if there are multiple contours on a spring or if there at least one radially acting element including a spring is now at least two. In light of figures 1-2, the examiner suggests and for purposes of examination will use “wherein the contour is selected from the group comprising wedges, half shells, cylinders, stops and balls.”
Further, regarding claim 7 (dependent of 1) “wherein the notch is formed as a C- or U-shaped profile” raise clarity issues. “The notch” has antecedent issues. It is unclear if element “the notch” is referring back to “[[the]] an inner edge of the mount” interpreted to be introduced in claims 2 and 5-6 or if a new inner contour element in the form of a notch is being introduced (assumed in light of figure 1). The examiner suggests and for purposes of examination will use “wherein the mount includes an inner contour in the form of a notch with
Further, regarding claim 9 (dependent of 1) “comprising contours in the C- or U- shaped profile to increase the contact area between the optical element and the mount” in claim 9 raise clarity issues. Firstly, “the C- or U- shaped profile” has antecedent issues. It is unclear if element “the C- or U- shaped profile” is referring back to the C- or U- shaped profile introduced in claim 7 or if a profile is being introduced. Secondly, it is unclear if “contours” means one or more inner contours, or one or more moving contours attached to spring, or one or more fixed contours, or one or more counter-contours or some combination of any of the previously listed interpretations. Thirdly, “to increase the contact area between the optical element and the mount” limitation claims the results contour’s profile, i.e. a motivation to use the layer and/or an intended result and does not provide a clear-cut indication of scope because, in this case, it imposed no clear limits on the mount. It has been held that claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008), see MPEP 2173.05(g). In light of figure 13, for purposes of examination the examiner will interpret (1) regarding the first issue that a new element is being introduced, (2) regarding the second issue interpret that a single fixed contour is meant and (3) regarding the thirds issue interpret the limitation to necessarily flows from the claimed structure. The examiner suggests and for purposes of examination will use “… according to claim 1, comprising a fixed contour with a
Regarding claim 10 “wherein a round mount encloses the optical element by 180° to 240°” raises clarity issues. It is unclear if “a round mount” means the claimed mount is limited to a round shape (assumed) or if a new/different/additional element/mount is being claimed. For purposes of examination the examiner will use “wherein the mount is round and encloses the optical element by 180° to 240°.”
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.
(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 1-10, 14-16 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kono foreign patent document JP2005254299.
Regarding claim 1 Kono discloses an optical element mount (e.g. figures 4-5 second housing portion 1b) comprising a rim having an opening (e.g. insertion/removal opening 26a) capable1 of having an optical element (e.g. glass 3 in frame 27) radially inserted into the mount (see figures 4-5).
Regarding claim 2 Kono discloses the mount according to claim 1, as set forth above. Kono further discloses wherein an inner edge of the mount is arranged with at least one radially acting element (e.g. locking mechanism 30) for fixing the optical element (paragraph [0023] “two locking mechanisms 30, 30 that elastically lock onto the glass” see figures 4-5).
Regarding claim 3 Kono discloses the mount according to claim 2, as set forth above. Kono further discloses wherein the at least one radially acting element (e.g. 30) is a contour (e.g. projection 30b) on a spring element (e.g. spring 30c).
Regarding claim 4 Kono discloses the mount according to claim 3, as set forth above. Kono further discloses wherein the contour (e.g. 30b) is selected from the group comprising wedges, half shells, cylinders, stops and balls (paragraph [0023] “30b is formed of a ball … may also be formed of a pin or other appropriate member”).
Regarding claim 5 Kono discloses the mount according to claim 1, as set forth above. Kono further discloses wherein an inner edge of the mount has a notch for positioning the optical element in the axial direction (see visible lip in figure 5 and side cross-section view in figure 2).
Regarding claim 6 Kono discloses the mount according to claim 1, as set forth above. Kono further discloses wherein an inner edge of the mount surrounds the optical element in an annular or rectangular shape (see figures 4-5).
Regarding claim 7 Kono discloses the mount according to claim 1, as set forth above. Kono further discloses wherein the mount (e.g. 1b) includes an inner contour in the form of a notch with a C- or U-shaped profile (see figure 5).
Regarding claim 8 Kono discloses the mount according to claim 3, as set forth above. Kono further discloses wherein the spring part (e.g. 30c) of the at least one radially acting element (e.g. 30) is a shaped spring, strip spring, flat spring, leaf spring, spiral spring, barrel spring or ring spring (see figures 4-5).
Regarding claim 9 Kono discloses the mount according to claim 1, as set forth above. Kono further discloses comprising a fixed contour with a C- or U- shaped profile (see figure 5) to increase the contact area between the optical element and the mount (this benefit naturally flows from the structure).
Regarding claim 10 Kono discloses the mount according to claim 1, as set forth above. Kono further discloses wherein the mount is round and encloses the optical element by 180° to 240° (see figure 5).
Regarding claim 14 Kono further discloses a first system (e.g. figures 4-5), comprising a mount (e.g. 1b) according to claim 1 (as set forth above) and an optical element (e.g. 3 in 27) for insertion into the mount (see figure 5).
Regarding claim 15 Kono discloses the first system according to claim 14, as set forth above. Kono further discloses wherein the optical element (e.g. 3 in 27) is surrounded (see figure 4) by a mount (e.g. 1b).
Regarding claim 16 Kono further discloses a second system (title e.g. see figures 1-2 laser head), comprising a first system (e.g. 1b, 3 & 27 see figure 2) according to claim 14 (as set forth above) and a device (e.g. housing 1) for receiving the mount (see figure 2).
Regarding claim 19 Kono further discloses a second system (title e.g. see figures 1-2 laser head), comprising a first system (e.g. 1b, 3 & 27 see figure 2) according to claim 15 (as set forth above) and a device (e.g. housing 1) for receiving the mount (see figure 2).
Claims 1, 5-7, 9, 11, 14-16 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Robinson et al. US Patent 2,969,711.
Regarding claim 1 Robinson discloses an optical element mount (title e.g. figure 3 magazine 60) comprising a rim having an opening capable2 of having an optical element (e.g. slide 50) radially inserted into the mount (see figure 3).
Regarding claim 5 Robinson discloses the mount according to claim 1, as set forth above. Robinson further discloses wherein an inner edge of the mount has a notch for positioning the optical element in the axial direction (e.g. compartments between ribs 62 & 64).
Regarding claim 6 Robinson discloses the mount according to claim 1, as set forth above. Robinson further discloses wherein an inner edge of the mount surrounds the optical element in an annular or rectangular shape (see figure 3).
Regarding claim 7 Robinson discloses the mount according to claim 1, as set forth above. Robinson further discloses wherein the mount includes an inner contour in the form of a notch with a C- or U-shaped profile (see figure 3).
Regarding claim 9 Robinson discloses the mount according to claim 1, as set forth above. Robinson further discloses comprising a fixed contour with a C- or U- shaped profile (see figure 3) to increase the contact area between the optical element and the mount (this benefit naturally flows from the structure).
Regarding claim 11 Robinson discloses the mount according to claim 1, as set forth above. Robinson further discloses wherein the mount has an asymmetrical shape in cross-section for receiving the optical element (e.g. column 4 lines 22-24 “the relatively long ribs 62 on one side of the magazine and relatively short ribs 64 on the opposite side of the magazine” as seen in figure 3 establishes an asymmetrical structure).
Regarding claim 14 Robinson further discloses a first system (title e.g. see figure 3), comprising a mount (e.g. 60) according to claim 1 (as set forth above) and an optical element (e.g. 50) for insertion into the mount (see figure 3).
Regarding claim 15 Robinson discloses the first system according to claim 14, as set forth above. Robinson further discloses wherein the optical element is surrounded by a mount (see figure 3).
Regarding claim 16 Robinson further discloses a second system (e.g. figure 1 slide projector), comprising a first system (e.g. 50 & 60) according to claim 14 (as set forth above) and a device (see figure 1) for receiving the mount (see figure 1).
Regarding claim 19 Robinson further discloses a second system (e.g. figure 1 slide projector), comprising a first system (e.g. 50 & 60) according to claim 15 (as set forth above) and a device (see figure 1) for receiving the mount (see figure 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Durell US Patent Application Publication 2010/0277817; in regards to a similar optical element mount (title e.g. figures 3-4 improved tubular lens mount 21) comprising a rim (e.g. edges 23) having an opening capable of having an optical element (e.g. figure 5 lens 22) radially inserted into the mount (see figure 5).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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, Ricky Mack can be reached at (571) 272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George G. King/Primary Examiner, Art Unit 2872 October 10, 2026
1 It has been held that the recitation that an element is "capable of" performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense; In re Hutchison, 69 USPQ 138. Also see Intel Corp. v. U.S. Int'l Trade Comm’n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171 (Fed. Cir. 1991), MPEP 2114. IV and MPEP 2173.05(g).
2 Ibid.
