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 without traverse of Invention III in the reply filed on 6/5/26 is acknowledged.
Claims 3-4, 11, and 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/5/26.
Claim Objections
Claim 19 is objected to because of the following informalities: claim 19 should read “routing the beam of collimated light through [[an]] the illumination zone using a steering optic; positioning [[a]] the dispenser of an inkjet printer in proximity to the illumination zone”. Appropriate correction is required.
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, and 19 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.
Regarding claim 1, the metes and bounds of “high optical power” is unclear, and the specification does not provide clarification.
Dependent claims 2-9 are considered rejected for incorporating defects from rejected parent claim.
Regarding claim 10, the metes and bounds of “high optical power” is unclear, and the specification does not provide clarification.
Dependent claims 11-18 are considered rejected for incorporating defects from rejected parent claim.
Regarding claim 19, it is unclear whether “positioning [[a]] the dispenser of an inkjet printer in proximity to the illumination zone” is an unintentional duplicative limitation or whether it is its own separate step.
Dependent claim 20 is considered rejected for incorporating defects from rejected parent claim.
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 1-2, 5-10, 12-15, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14-20 of U.S. Patent No. 12076985 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2, 5-10, 12-15, and 19-20 of the instant application is/are anticipated by claims 1-12 and 14-20 of 12076985 B2.
Claims 1-2, 5-10, 12-15, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 14-18 of U.S. Patent No. 11318738 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2, 5-10, 12-15, and 19-20 of the instant application is/are anticipated by claims 1-11 and 14-18 of 11318738 B2.
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.
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) 1-2, 6-9, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo et al. (US 2001/0043245 A1) in view of Suzuki et al. (JP 2001-108863 A).
Regarding claim 1, Endo discloses A method, comprising:
emitting a beam of collimated light (see fig. 3/14, para 95,103,105,164; note: laser light is inherently collimated) from a light source (40a, fig. 3-5,14, para 95,164) comprising a collimating optical system (inherent in Endo);
routing the beam of collimated light through an illumination zone (see fig. 3-5/14);
positioning a dispenser (36, fig. 4, para 92) of an inkjet printer in proximity to the illumination zone (see fig. 3-5/14, para 94-95,103,105,164);
aligning a nozzle of the dispenser with the beam of collimated light (see fig. 3-5/14, para 95,103,105,164);
emitting a droplet from the nozzle into the beam of collimated light at an illumination location within the illumination zone to form an illumination signature of the droplet (see fig. 3-6/14, para 95,103,105,122-130,164);
receiving the illumination signature at an imaging device (40b (or 40b+47), fig. 3-5/14, para 95,103,105,164) having high optical power; and
moving the imaging device to position a focal plane of the imaging device at the illumination location (This does not appear to be taught in Endo. However, this would be obvious in view of the teachings in Suzuki.).
Endo does not appear to disclose moving the imaging device to position a focal plane of the imaging device at the illumination location.
However, Endo, as modified by Suzuki, discloses moving the imaging device to position a focal plane of the imaging device at the illumination location (Suzuki teaches moving a CCD camera 3-3 [fig. 3-4] along an axis in order to focus the CCD camera on an object to be imaged. See highlighting on pg. 8 of translation. It would have been obvious to one of ordinary skill that since the different droplet locations under observation have different distances from sensor 40b, or 40b+47, (see Endo’s fig. 4/5), introducing Suzuki’s teachings of moving the sensor in order to match the focal distance of sensor 40b (or 40b+47) with the droplet under observation, would allow for better observation of the droplet by the sensor 40b (or 40b+47).).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Endo with the teachings of Suzuki, for the purpose of allowing better observation of the droplet by the sensor.
Regarding claim 2, Endo, as modified by Suzuki, further discloses The method of claim 1, further comprising positioning at least a portion of the dispenser within the illumination zone (inherent in Endo’s fig. 3-5,14).
Regarding claim 6, Endo, as modified by Suzuki, further discloses The method of claim 1, wherein the illumination location varies within the illumination zone (see Endo’s fig. 4/5).
Regarding claim 7, Endo, as modified by Suzuki, further discloses The method of claim 1, further comprising receiving the droplet using a droplet receptacle (Endo’s 46, fig. 14, para 95).
Regarding claim 8, Endo, as modified by Suzuki, further discloses The method of claim 1, wherein the beam of collimated light is routed through the illumination zone using one or more steering optics (Endo’s 40p1,40p2, fig. 14, para 160).
Regarding claim 9, Endo, as modified by Suzuki, further discloses The method of claim 1, wherein the illumination zone has a plurality of illumination locations defined by the positions of nozzles of the dispenser (see Endo’s fig. 4/5), and the imaging device is movable to place the focal plane of the imaging device at any of the illumination locations (intrinsic to Endo, as modified by Suzuki).
Regarding claim 19, Endo discloses A method, comprising:
positioning a dispenser (36, fig. 4, para 92) of an inkjet printer in proximity to an illumination zone (see fig. 3-5/14) of a droplet measurement apparatus (see fig. 3-5/14);
emitting a beam of collimated light (see fig. 3/14, para 95,103,105,164; note: laser light is inherently collimated) from a light source (40a, fig. 3-5,14, para 95,164) comprising a collimating optical system (inherent in Endo);
routing the beam of collimated light through [[an]] the illumination zone using a steering optic (40p1,40p2, fig. 14, para 160);
positioning [[a]] the dispenser of an inkjet printer in proximity to the illumination zone (see fig. 3-5/14);
aligning a first nozzle of the dispenser and a second nozzle of the dispenser with the beam of collimated light (see fig. 4-5);
emitting a first droplet from the first nozzle into the beam of collimated light at a first illumination location to form a first illumination signature of the first droplet (see fig. 4-6, para 122-130);
moving an imaging device to place a focal plane of the imaging device at the first illumination location (This does not appear to be taught in Endo. However, this would be obvious in view of the teachings in Suzuki.);
receiving the first illumination signature at the imaging device (see fig. 4-6, para 122-130); emitting a second droplet from the second nozzle into the beam of collimated light at a second illumination location, different from the first illumination location, to form a second illumination signature of the second droplet (see fig. 4-6, para 122-130);
moving the imaging device to move the focal plane of the imaging device to the second illumination location (This does not appear to be taught in Endo. However, this would be obvious in view of the teachings in Suzuki.); and
receiving the second illumination signature at the imaging device (see fig. 4-6, para 122-130).
Endo does not appear to disclose moving an imaging device to place a focal plane of the imaging device at the first illumination location and moving the imaging device to move the focal plane of the imaging device to the second illumination location.
However, Endo, as modified by Suzuki, discloses moving an imaging device to place a focal plane of the imaging device at the first illumination location and moving the imaging device to move the focal plane of the imaging device to the second illumination location (Suzuki teaches moving a CCD camera 3-3 [fig. 3-4] along an axis in order to focus the CCD camera on an object to be imaged. See highlighting on pg. 8 of translation. It would have been obvious to one of ordinary skill that since the different droplet locations under observation have different distances from sensor 40b, or 40b+47, (see Endo’s fig. 4/5), introducing Suzuki’s teachings of moving the sensor in order to match the focal distance of sensor 40b (or 40b+47) with the droplet under observation, would allow for better observation of the droplet by the sensor 40b (or 40b+47).).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Endo with the teachings of Suzuki, for the purpose of allowing better observation of the droplet by the sensor.
Regarding claim 20, Endo, as modified by Suzuki, further discloses The method of claim 19, wherein moving the focal plane of the imaging device comprises extending the working range of the imaging device to encompass the first and second illumination locations (intrinsic to Endo, as modified by Suzuki).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo et al. (US 2001/0043245 A1) in view of Suzuki et al. (JP 2001-108863 A) and further in view of Gopinath et al. (US 2017/0010456 A1).
Regarding claim 5, Endo, as modified by Suzuki, discloses all the limitations introduced in parent claim 1.
Endo, as modified by Suzuki, does not appear to disclose The method of claim 1, wherein the imaging device includes a tunable lens, and further comprising tuning the tunable lens to position the focal plane of the imaging device at the illumination location.
However, Endo, as modified by Suzuki and further modified by Gopinath, teaches The method of claim 1, wherein the imaging device includes a tunable lens, and further comprising tuning the tunable lens to position the focal plane of the imaging device at the illumination location (Gopinath teaches using a variable-focus lens in order to tune the focal point according to need. See para 65. It would have been obvious to adopt the teachings of Gopinath for Endo, as modified by Suzuki, for the purpose of fine tuning the focal point.).
Claim(s) 10 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo et al. (US 2001/0043245 A1) in view of Gopinath et al. (US 2017/0010456 A1).
Regarding claim 10, Endo discloses A method, comprising:
emitting a beam of collimated light (see fig. 3/14, para 95,103,105,164; note: laser light is inherently collimated) from a light source (40a, fig. 3-5,14, para 95,164) comprising a collimating optical system (inherent in Endo);
routing the beam of collimated light through an illumination zone (see fig. 3-5/14);
positioning a dispenser (36, fig. 4, para 92) of an inkjet printer in proximity to the illumination zone (see fig. 3-5/14, para 94-95,103,105,164);
aligning a nozzle of the dispenser with the beam of collimated light (see fig. 3-5/14, para 95,103,105,164);
emitting a droplet from the nozzle into the beam of collimated light at an illumination location within the illumination zone to form an illumination signature of the droplet (see fig. 3-6/14, para 95,103,105,122-130,164);
receiving the illumination signature at an imaging device (40b (or 40b+47), fig. 3-5/14, para 95,103,105,164) having high optical power and a working range extended by a tunable lens (Endo does not appear to disclose this. However, this is taught in Gopinath. See below.); and
adjusting a focal plane of the imaging device to the illumination location by adjusting the tunable lens (Endo does not appear to disclose this. However, this is taught in Gopinath. See below.).
Endo does not appear to disclose…an imaging device having…a working range extended by a tunable lens and adjusting a focal plane of the imaging device to the illumination location by adjusting the tunable lens.
However, Endo, as modified by Gopinath, teaches…an imaging device having…a working range extended by a tunable lens and adjusting a focal plane of the imaging device to the illumination location by adjusting the tunable lens (Gopinath teaches using a variable-focus lens in order to tune the focal point according to need. See para 65. It would have been obvious to adopt the teachings of Gopinath for Endo for the purpose of fine tuning the focal point.).
Regarding claim 13, Endo, as modified by Gopinath, further discloses The method of claim 10, wherein the beam of collimated light is routed through the illumination zone using one or more steering optics (Endo’s 40p1,40p2, fig. 14, para 160).
Regarding claim 14, Endo, as modified by Gopinath, further discloses The method of claim 10, wherein the illumination location varies within the illumination zone (see Endo’s fig. 4/5).
Regarding claim 15, Endo, as modified by Gopinath, further discloses The method of claim 10, further comprising receiving the droplet using a droplet receptacle (Endo’s 46, fig. 14, para 95).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endo et al. (US 2001/0043245 A1) in view of Gopinath et al. (US 2017/0010456 A1) and Suzuki et al. (JP 2001-108863 A).
Regarding claim 12, Endo, as modified by Gopinath, discloses all the limitations introduced in parent claim 10.
Endo, as modified by Gopinath, does not appear to disclose The method of claim 10, wherein adjusting the focal plane of the imaging device to the illumination location further comprises using a linear positioner coupled to the imaging device to position the imaging device.
However, Endo, as modified by Gopinath, and further by Suzuki, discloses The method of claim 10, wherein adjusting the focal plane of the imaging device to the illumination location further comprises using a linear positioner coupled to the imaging device to position the imaging device (Suzuki teaches moving a CCD camera 3-3 [fig. 3-4] along an axis in order to focus the CCD camera on an object to be imaged. See highlighting on pg. 8 of translation. It would have been obvious to one of ordinary skill that since the different droplet locations under observation have different distances from sensor 40b, or 40b+47, (see Endo’s fig. 4/5), introducing Suzuki’s teachings of moving the sensor in order to match the focal distance of sensor 40b (or 40b+47) with the droplet under observation, would allow for better observation of the droplet by the sensor 40b (or 40b+47). Further, it would be obvious to adopt the teachings of Suzuki to allow for a wider range of focal planes for the imaging device.).
Conclusion
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/JUSTIN SEO/Primary Examiner, Art Unit 2853
July 20, 2026
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