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 .
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:
“A temperature control device configured to control the internal temperature of the housing” as found in claims 9 and 11-13.
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 13 and 14 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 13 recites the limitation "the temperature control device" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim. What temperature control device is being referred to here? Claim 1, the claim on which claim 13 depends, fails to set forth a temperature control device. It appears that claim 13 should be dependent on claim 9, the claim that first sets forth a temperature control device.
Claim 14 recites the limitation "the broadband optical source" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim. What broadband optical source is being claimed here? Claim 1, the claim on which claim 14 depends, only recites an optical source, not a broadband optical source. To overcome the rejection, the examiner recommends either further limiting claim 1 to contain a broadband source, or to amend claim 14 to state “the optical source comprises a superluminescent diode (SLED)”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-13, and 16-20 of U.S. Patent No. 12,072,240 in view of Keaveney et al (10,948,356).
Regarding claim 1, claims 1 and 7 of the ‘240 patent discloses a wavelength reference device (see line 1 of claim 1) comprising a housing defining an internal environment having an internal temperature (see lines 2-3 of claim 1); a temperature sensor, within the internal environment of the housing, that outputs sensor data indicative of the internal temperature of the housing (see claim 7; the temperature sensor will inherently output data indicative of the internal temperature of the housing); an optical source configured to emit an optical signal along an optical path within the housing (see lines 11-13 of claim 1); and an optical reference filter, along the optical path of the optical signal within the housing, comprising a resonant cavity with a fixed separation between a first mirror and a second mirror, configured to filter the optical signal to form a wavelength reference signal having a plurality of spectral peaks at a plurality of wavelengths (see lines 4-10 of claim 1).
The ’240 patent, however, fails to disclose a controller configured to receive the sensor data indicative of the internal temperature of the housing and determine the wavelengths of the plurality of spectral peaks of the wavelength reference signal based on the internal temperature of the housing.
Keaveney, while not drawn to a wavelength reference device, is concerned with solving the same problem of accurately measuring the wavelength of a light source while taking into account temperature of the environment the light passes through. Here, Keaveney discloses (Fig. 2A) a wavelength measurement system that includes an interferometer 226 that is used to help measure the light; this interferometer can be a Fabry-Perot as per Col. 3, lines 33-35. This interferometer includes an environmental sensor 206 which can measure of the interferometer (see Col. 8, lines 56-66), with the temperature information being sent to control system 202 in addition to an interferogram measured by detector 228 to accurately determine the wavelength of the light source 214 (see Col. 21, lines 5-9).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the temperature data obtained by the temperature sensor of the ‘240 patent to determine the wavelengths of the spectral peaks of the wavelength reference signal as taught by Keaveney, the motivation being to correct for changes to the optical reference filter that occur when the temperature of the housing containing the filter changes, thereby correcting for thermal expansion or contraction and allowing for accurate determination of the wavelength of the spectral peaks (see Col. 1, lines 65-67).
Further claim correspondence is as follows:
As for claim 2, Keaveney, as disclosed above, discloses the controller being external to the housing (see Fig. 2A).
As to claim 3, while the combination of the ‘240 patent and Keaveney discloses the claimed invention as set forth above regarding claim 1, the combination fails to disclose that the controller uses a database or lookup table to determine the wavelengths of the plurality of spectral peaks of the wavelength reference signal based on the internal temperature of the housing.
However, the examiner takes Official notice as to the well known use of databases or lookup tables in optical measurements to compare measured variables with known values in order to correct for other information. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a database or lookup table in the controller of the combination of the ‘240 patent and Keaveney to determine the wavelengths based on the measured internal temperature, the motivation being that a lookup table is a quicker way to obtain desired information than performing separate computations and calculations each time a measurement is performed.
Claim 4 of the instant application with claim 2 of the ‘240 patent.
Claim 5 of the instant application with claim 8 of the ‘240 patent.
Claim 6 of the instant application with claim 9 of the ‘240 patent.
Claim 7 of the instant application with claim 9 of the ‘240 patent. The examiner notes that regarding the specific arrangement of the temperature sensor so that it is on a surface of the optical reference filter outside of the optical path of the optical signal, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the temperature sensor on the reference filter but outside of the optical path of the optical signal in order to measure the temperature of the reference filter while ensuring that the temperature sensor does not block or interfere with the light passing through the reference filter.
Claim 8 of the instant application with claim 9 of the ‘240 patent. The examiner notes that regarding the specific arrangement of the temperature sensor so that it is on an interior surface of the housing, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the temperature sensor on interior surface of the housing in order to measure the temperature of the ambient environment of the housing, not just the reference filter, while ensuring that the temperature sensor does not block or interfere with the light passing through the wavelength reference device.
Claim 9 of the instant application with claim 3 of the ‘240 patent.
Claim 10 of the instant application with claim 5 of the ‘240 patent.
Claim 11 of the instant application with claim 6 of the ‘240 patent.
Claim 12 of the instant application with claim 6 of the ‘240 patent. The examiner notes that regarding the specific arrangement of the temperature control device so that it is on a surface of the optical reference filter outside of the optical path of the optical signal, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the temperature control device on the reference filter but outside of the optical path of the optical signal in order to directly control the temperature of the reference filter while ensuring that the temperature sensor does not block or interfere with the light passing through the reference filter.
Claim 13 of the instant application with claim 4 of the ‘240 patent.
Claim 14 of the instant application with claim 10 of the ‘240 patent.
Claim 15 of the instant application with claim 11 of the ‘240 patent.
Claim 16 of the instant application with claim 12 of the ‘240 patent.
Claim 17 of the instant application with claim 13 of the ‘240 patent.
Claim 18 of the instant application with claim 16 of the ‘240 patent.
Claim 19 of the instant application with claim 17 of the ‘240 patent.
Claim 20 of the instant application with claim 18 of the ‘240 patent.
Claim 21 of the instant application with claim 19 of the ‘240 patent.
Claim 22 of the instant application with claim 20 of the ‘240 patent.
Claims 1-22 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 14-18 of U.S. Patent No. 11,662,250 in view of Keaveney et al (10,948,356).
Regarding claim 1, claim 1 of the ‘250 patent discloses a wavelength reference device (see line 1 of claim 1) comprising a housing defining an internal environment having an internal temperature (see line 3 and lines 22-23 of claim 1); a temperature sensor, within the internal environment of the housing, that outputs sensor data indicative of the internal temperature of the housing (see lines 21-23 of claim 1); an optical source configured to emit an optical signal along an optical path within the housing (see lines 4-7 of claim 1); and an optical reference filter, along the optical path of the optical signal within the housing, comprising a resonant cavity with a fixed separation between a first mirror and a second mirror, configured to filter the optical signal to form a wavelength reference signal having a plurality of spectral peaks at a plurality of wavelengths (see lines 9-20 of claim 1).
The ’250 patent, however, fails to disclose a controller configured to receive the sensor data indicative of the internal temperature of the housing and determine the wavelengths of the plurality of spectral peaks of the wavelength reference signal based on the internal temperature of the housing.
Keaveney, while not drawn to a wavelength reference device, is concerned with solving the same problem of accurately measuring the wavelength of a light source while taking into account temperature of the environment the light passes through. Here, Keaveney discloses (Fig. 2A) a wavelength measurement system that includes an interferometer 226 that is used to help measure the light; this interferometer can be a Fabry-Perot as per Col. 3, lines 33-35. This interferometer includes an environmental sensor 206 which can measure of the interferometer (see Col. 8, lines 56-66), with the temperature information being sent to control system 202 in addition to an interferogram measured by detector 228 to accurately determine the wavelength of the light source 214 (see Col. 21, lines 5-9).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the temperature data obtained by the temperature sensor of the ‘250 patent to determine the wavelengths of the spectral peaks of the wavelength reference signal as taught by Keaveney, the motivation being to correct for changes to the optical reference filter that occur when the temperature of the housing containing the filter changes, thereby correcting for thermal expansion or contraction and allowing for accurate determination of the wavelength of the spectral peaks (see Col. 1, lines 65-67).
Further claim correspondence is as follows:
As for claim 2, Keaveney, as disclosed above, discloses the controller being external to the housing (see Fig. 2A).
As to claim 3, while the combination of the ‘250 patent and Keaveney discloses the claimed invention as set forth above regarding claim 1, the combination fails to disclose that the controller uses a database or lookup table to determine the wavelengths of the plurality of spectral peaks of the wavelength reference signal based on the internal temperature of the housing.
However, the examiner takes Official notice as to the well known use of databases or lookup tables in optical measurements to compare measured variables with known values in order to correct for other information. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a database or lookup table in the controller of the combination of the ‘250 patent and Keaveney to determine the wavelengths based on the measured internal temperature, the motivation being that a lookup table is a quicker way to obtain desired information than performing separate computations and calculations each time a measurement is performed.
Claim 4 of the instant application with claim 2 of the ‘250 patent.
Claim 5 of the instant application with claim 6 of the ‘250 patent.
Claim 6 of the instant application with claim 7 of the ‘250 patent.
Claim 7 of the instant application with claim 7 of the ‘250 patent. The examiner notes that regarding the specific arrangement of the temperature sensor so that it is on a surface of the optical reference filter outside of the optical path of the optical signal, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the temperature sensor on the reference filter but outside of the optical path of the optical signal in order to measure the temperature of the reference filter while ensuring that the temperature sensor does not block or interfere with the light passing through the reference filter.
Claim 8 of the instant application with claim 7 of the ‘250 patent. The examiner notes that regarding the specific arrangement of the temperature sensor so that it is on an interior surface of the housing, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the temperature sensor on interior surface of the housing in order to measure the temperature of the ambient environment of the housing, not just the reference filter, while ensuring that the temperature sensor does not block or interfere with the light passing through the wavelength reference device.
Claim 9 of the instant application with claim 1 of the ‘250 patent (see lines 21-23).
Claim 10 of the instant application with claim 4 of the ‘250 patent.
Claim 11 of the instant application with claim 5 of the ‘250 patent.
Claim 12 of the instant application with claim 5 of the ‘250 patent. The examiner notes that regarding the specific arrangement of the temperature control device so that it is on a surface of the optical reference filter outside of the optical path of the optical signal, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the temperature control device on the reference filter but outside of the optical path of the optical signal in order to directly control the temperature of the reference filter while ensuring that the temperature sensor does not block or interfere with the light passing through the reference filter.
Claim 13 of the instant application with claim 3 of the ‘250 patent.
Claim 14 of the instant application with claim 8 of the ‘250 patent.
Claim 15 of the instant application with claim 9 of the ‘250 patent.
Claim 16 of the instant application with claim 10 of the ‘250 patent.
Claim 17 of the instant application with claim 11 of the ‘250 patent.
Claim 18 of the instant application with claim 14 of the ‘250 patent.
Claim 19 of the instant application with claim 15 of the ‘250 patent.
Claim 20 of the instant application with claim 16 of the ‘250 patent.
Claim 21 of the instant application with claim 17 of the ‘250 patent.
Claim 22 of the instant application with claim 18 of the ‘250 patent.
Allowable Subject Matter
Claims 1-22 would allowable in view of the prior art should the double patenting rejections set forth above be properly overcome.
The examiner notes that the full allowability of claims 13 and 14 depend on the 35 USC 112(b) rejections set forth above being properly overcome as well.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 1, the prior art of record, taken either alone or in combination, fails to disclose or render obvious a wavelength reference device, the device comprising, among other essential features, an optical reference filter, along the optical path of the optical signal within the housing, comprising a resonant cavity with a fixed separation between a first mirror and a second mirror, configured to filter the optical signal to form a wavelength reference signal having a plurality of spectral peaks at a plurality of wavelengths; and a controller configured to receive the sensor data indicative of the internal temperature of the housing and determine the wavelengths of the plurality of spectral peaks of the wavelength reference signal based on the internal temperature of the housing, in combination with the rest of the limitations of the above claim.
With further regard to the above claims, US Pat. 10,948,356 to Keaveney et al. teaches a device (Fig. 2A) for measuring the wavelength of light, where light from a laser source 214 is passed into a housing, with the light then being directed to an interferometer 226 that can be a Fabry-Perot (see Col. 3, lines 33-35), with the interferogram of the light being detected by a detector 228. The interferometer has its temperature measured using environmental sensor 206 (see Col. 8, lines 56-66), with the temperature information being sent to control system 202 in addition to an interferogram measured by detector 228 to accurately determine the wavelength of the light source 214 (see Col. 21, lines 5-9). However, while Keaveney uses temperature measurements to assist in the determination of the wavelength of light in the system, Keaveney is measuring the wavelength of a laser, and as such fails to disclose a wavelength reference device that includes a resonant cavity with a fixed separation between a first mirror and a second mirror, configured to filter the optical signal to form a wavelength reference signal having a plurality of spectral peaks at a plurality of wavelengths, as a laser into a Fabry-Perot interferometer would not generate a wavelength reference signal having a plurality of spectral peaks at a plurality of wavelengths as claimed.
Additionally, US 2017/0138790 to Antila et al. teaches a method for determining the spectral scale of a spectrometer (Fig. 5) where a temperature sensor 58 is attached to one of the substrates 50 of the etalon for monitoring the temperature of the etalon and determining a spectral position of a transmittance peak P1 based on the temperature of the etalon (see paragraph 0163). Finally, US 2011/0249973 to Donlagic et al. teaches an integrated laser module (see Fig. 2) where the laser module 111 includes a laser source 222 that passes light through a wavelength selective device 224 such as an etalon (see paragraph 0041) which sends light to photodetectors 225 to measure the intensity of the light. The laser module includes a thermoelectric cooler 226 and a temperature sensor 228 that provides a temperature feedback signal (see paragraph 0036), where the cooler adjusts the temperature of the laser module to tune the wavelength (see paragraph 0043). However, similarly to Keaveney, this prior art fails to disclose or render obvious the claimed invention for the reasons given above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CA 2490041 to Kringlebotn discloses a wavelength reference system for optical measurements that uses a plurality of multiplexed fiber Bragg grating elements 12 as part of a fiber Bragg grating sensor array 13 as the wavelength reference (see Fig. 1), and US 2019/0033133 to Moriya teaches a wavelength measuring device featuring a pair of etalon spectrometers 26, 27, along with a temperature sensor 63 for controlling the temperature of housing 37 (see Fig. 7).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael A. Lyons whose telephone number is (571)272-2420. The examiner can normally be reached Monday - Friday.
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/Michael A Lyons/Primary Examiner, Art Unit 2877 February 24, 2026