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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/226,781, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. There does not appear to be adequate support or enablement for the ‘more autocollimators’ of claim 5; the limitations of claims 15-18 because these limitations refer to a different embodiment and are not of the embodiment disclosed in claim 1 (claim 1 appears to refer specifically to the embodiment of Fig. 2. Noting claim 1: lines 22-24: ‘and (c) project an additional incident LB normally on CP first surface so as to obtain an additional returned LB by the reflection of the additional incident LB off CP first surface’ and noting FIG. 2: see 205s); ‘an illumination and collection arrangement (ICA) comprising: (a) a first light source and optical equipment configured to project a first incident light beam (LB) on the first surface, so as to generate a first returned LB by reflection off the first surface, (b) a second light source and optical equipment configured to project a second incident LB on the LFC, in parallel to the first incident LB, so as generate a second returned LB, by redirection by the LFC of the second incident LB nominally normally on the CP second surface and into or onto the sample, such that light, transmitted thereby into the sample, nominally normally impinges on the internal facet, and (c) a third light source and optical equipment configured to project an additional incident LB normally on CP first surface so as to obtain an additional returned LB by the reflection of the additional incident LB off CP first surface’ of claim 19 (noting that Fig. 2 comprises an autocollimator 250 which appears to be described as including 114, 118, and 112 of Fig. 1A without any description of a second light source and optical equipment and a third light source and optical equipment regarding the projection of beams such as 205b and 205s of Fig. 2); and the limitations of claim 20 for the disclosure appears to refer to a single (first) autocollimator (Fig. 2: 250) and not ‘second and third autocollimators.’ Therefore, claims 5 and 15-20 have an effective filing date of August 4, 2024.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the and/or one or more spectral filters configured to at least facilitate distinguishing between respective returned LBs of claim 1 (noting Fig. 2: demonstrates blocking elements: 256a, 256b, and 256s); shutter and/or filter of claim 3 (noting Fig. 2: demonstrates blocking elements as single rectangular blocks: 256a, 256b, and 256s); wherein the one or more light sources is configured to generate a single LB, and wherein the optical element is configured to collimate the single LB of claim 4; ‘more autocollimators’ and ‘collimating lens or collimating lens assembly’ of claim 5; wherein the LFC is or comprises ‘a prism, one or more mirrors, and/or a diffraction grating’ of claim 8; wherein the LFC is or comprises or ‘a pair of mirrors set at an angle relative to one another’ of claim 10; ‘a) a first light source and optical equipment configured to project a first incident light beam (LB) on the first surface, so as to generate a first returned LB by reflection off the first surface, (b) a second light source and optical equipment configured to project a second incident LB on the LFC, in parallel to the first incident LB, so as generate a second returned LB, by redirection by the LFC of the second incident LB nominally normally on the CP second surface and into or onto the sample, such that light, transmitted thereby into the sample, nominally normally impinges on the internal facet, and (c) a third light source and optical equipment configured to project an additional incident LB normally on CP first surface so as to obtain an additional returned LB by the reflection of the additional incident LB off CP first surface, wherein the first, second and third light sources and respective optical equipment are configured to provide and/or block one or more of the first, second and additional incident LBs so as to at least facilitate distinguishing between respective returned LBs’ of claim 19; and ‘second and third autocollimators’ and ‘collimating lenses or collimating lens assemblies’ of claim 20 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 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: light folding component and at least three blocking elements in claim 1; orienting infrastructure in claim 13; and light folding component in claim 19.
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 2, 3, 9-16, and 18 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.
As for claim 2, on lines 3-4 ‘and/or an eyepiece assembly configured to enable manually measuring the first angular deviation’ is indefinite, for it is unclear how the sensor could be configured to be ‘and/or an eyepiece assembly…’ This phrase appears ungrammatical.
Claim 3 recites the limitation "the first, second and/or third blocking elements" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the light folding angle" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 10 is rejected by virtue of its dependency.
Claim 11 recites the limitation "the first part of the sample" in line 3. There is insufficient antecedent basis for this limitation in the claim. Claims 12 and 13 are rejected by virtue of their dependency.
Claim 14 recites the limitations "the actual one or more inclination angle" in line 2 and “the measured first angular deviation” in lines 2-3. There is insufficient antecedent basis for these limitations in the claim. Claims 15 and 16 are rejected by virtue of their dependency.
As for claim 15, on line 3 ‘the actual inclination angle’ is indefinite, for it is unclear as which inclination angle is being referred since claim 14 refers to -actual one or more inclination angle(s)- in line 2.
Claim 16 recites the limitation "the orientation of CP first surface relative to first surface" in lines 1-2. There is insufficient antecedent basis for these limitations in the claim.
Claim 18 recites the limitation "the measured second angular deviation" in line 1. There is insufficient antecedent basis for these limitations in the claim.
Allowable Subject Matter
Claims 1, 4-8, 17, and 19-20 are allowed.
Claims 2-3, 9-16, and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: please refer to the attached PTO-892.
Fax/Telephone Numbers
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Gordon J. Stock, Jr. whose telephone number is (571) 272-2431.
The examiner can normally be reached on Monday-Friday, 10:00 a.m. - 6:30 p.m.
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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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/GORDON J STOCK JR/
Primary Examiner, Art Unit 2877