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
1. Applicant’s election without traverse of Group I- claims 1-10 in the reply filed on 02/02/2026 is acknowledged.
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.
2. 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:
“illumination module” in claim 1 line 8, as well as repeated 3 times in claim 6. “Illumination” is a function, “module” is a generic placeholder, and the claims lack structure to perform the desired function. Structure is found in Applicant’s Specification in Figure 2 as a laser or flashlamp and will be interpreted as such and equivalents.
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.
3. Claims 4 and 5 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 4, Claim 4 recites the limitations "the bearing space" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. For the sake of compact prosecution, claim 4 will interpreted as “communicated with a bearing space”.
Regarding claim 5, Claim 5 recites the limitations "the airflow channel" in lines 1-2 and “the vacuum pump” in line 2. There is insufficient antecedent basis for this limitation in the claim. For the sake of compact prosecution, claim 5 will interpreted as “end of an airflow channel is communicated with a vacuum pump communicated with the groove”.
Claim Rejections - 35 USC § 102
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.
4. Claims 1, 4, 6-8, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rong (US 10,688,702).
Regarding claim 1, Rong teaches a film (optical structure) pasting (transparent liquid optical material) device (col. 2 lines 3-11) comprising a first cavity (first cavity- 210) and a second cavity (second cavity- 220); wherein the second cavity interfaces the first cavity and has a bearing area (second lensing curvature- 223; col. 2 line 63- col. 3 line 3; see Figure 2A) able to bear a lens (optical structure- 230) and a functional film material (second refractive element- 270; col. 3 lines 4-8, 25-29; see Figure 2B). Rong teaches of an illumination model (curing light source) to irradiate functional film material so that it is cured and adhered to (col. 3 lines 20-29).
The “functional film material”, “flexible film layer”, “lens”, and “adhesive layer” are all “Materials or Articles Worked Upon by Apparatus”. MPEP 2115 teaches - “Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). These materials/articles do not add further structure to the apparatus, and as such they do not differentiate over the prior art of Rong, and therefore Rong anticipates the subject matter of claim 1.
Regarding claim 4, the bearing space and second cavity of Rong are the same structure. When the second cavity is interfaced with the first cavity, the distance between molds 251 and 252 can be considered a groove that in Figure 2A is filled by the flexible film layer. As seen in Figure 2A, part of this groove is located at the periphery of the bearing area (second lensing curvature- 223).
The functional film, lens, and associated limitations are directed to “material or article worked upon by the apparatus”, which as noted in the rejection of claim 1 does not differentiate the claim over the prior art.
Regarding claim 6, Rong teaches that the illumination module comprises an ultraviolet light irradiation module (col. 3 lines 22-25).
Regarding claim 7, as seen in Figure 2A, the first cavity (210) and second cavity (220) are in an interfaced state, with a layer (optical structure- 230) sandwiched between the interfaced cavities. The interfaced area of the second cavity (area at bottom of 230) is located at the periphery of the bearing area (edge of second curvature- 223).
The limitation “the flexible film layer is sandwiched between an interfaced surface of the first cavity and an interfacing area of the second cavity” is a limitation that is dependent on the material/article worked upon. If the shape of the flexible film layer is that of combining Rong’s first refractive element (260) and their optical element (230), it would then be sandwiched between an interfaced surface of the first cavity and an interfaced area of the second cavity. Since this is a claim limitation is dependent upon the material/article worked upon, it does not differentiate over the prior art as mentioned in the rejection of claim 1.
Regarding claim 8, the bottom surface of the second cavity of Rong can be interpreted as a groove, and therefore can be defined as an avoidance groove. Since this is the same area as the bearing area, it is at least partially located in the bearing area. The shape of the avoidance groove is made to form the shape of the lens (col. 2 line 63- col. 3 line 3). The “lens” is material/article worked upon and does not add patentability as mentioned in the rejection of claim 1.
Regarding claim 10, the functional film material, adhesive layer, and related limitations are directed to “material or article worked upon by the apparatus”, which as noted in the rejection of claim 1 does not differentiate the claim over the prior art.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
5. 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.
6. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Rong.
Regarding claim 9, in applying Rong as in claim 8, at the end of Rong’s second cavity facing the first cavity is an interfaced area (interfacing area of first portion- 251 and second portion-252 of mold tool- 250 as seen in Figure 2A; col. 2 lines 59-63). As seen in Figure 2A, this is located at the periphery of the bearing area. Rong teaches the inclusion of positioning portions that are keyed to holes (posts; col. 3 lines 8-13).
Rong does not teach the positioning portion is on the second cavity extending towards the first cavity, nor of a positioning hole matching the positioning portion in the first cavity. However, there are only two finite possibilities for the post and hole- a post in the first cavity and hole in the second cavity or a post on the second cavity and a hole in the first cavity. To one of ordinary skill in the art before the effective filing date of the proposed invention it would be “obvious to try” with a post in the second cavity and a corresponding hole in the first cavity as there are only two possible arrangements under the post suggestion of Rong. See MPEP 2143.E for “Obvious to Try” rational.
The functional film, the positioning film layer, and associated limitations are directed to “material or article worked upon by the apparatus”, which as noted in the rejection of claim 1 does not differentiate the claim over the prior art.
7. Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Rong in view of AEB (NPL YouTube Video- “Vacuum/Thermal Forming Explained”; dated 3/8/2018; PDF of relevant screenshots included with Office Action).
Regarding claim 2, as seen in Figure 2A of Rong, the first cavity (210) and second cavity (220) are in an interfaced state, and the bearing area (second lensing curvature- 223) is enclosed between the second cavity and a layer (optical structure- 230), which makes a bearing space.
Rong does not teach of airflow and associated limitations. AEB teaches of a mold that has airflow channels connected to a vacuum pump (vents defined by light-blue arrows in Screenshot 1) on the bottom surface that vacuumize the space. In the context of Rong, this mold would define the second cavity, and the airflow channels would be communicated with the bearing space, upon which a vacuum is applied. The advantage of so doing is the elimination of trapped air (Transcript Screenshot timestamps 1:58-2:11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to include the airflow channel and vacuum pump of AEB in the apparatus of Rong for the advantage of eliminating trapped air.
Regarding claim 3, in applying AEB as in claim 2, the airflow channels are air vents which are interconnected to an airflow convergence hole (round convergence point with cavity facing downwards) that faces away from the bearing space as seen in Screenshot 2. As this is the source of the vacuum, it would be connected to the vacuum pump. Screenshot 2 shows the air vents spaced and uniformly distributed.
8. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Rong as applied to claim 4, and in view of AEB.
Regarding claim 5, Rong does not teach of an airflow channel or vacuum pump. AEB teaches of a mold that has airflow channels connected to a vacuum pump (vents defined by light-blue arrows in Screenshot 1) on the bottom surface that vacuumize the space. The advantage of so doing is the elimination of trapped air (Transcript Screenshot timestamps 1:58-2:11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to include the airflow channel and vacuum pump of AEB in the apparatus of Rong for the advantage of eliminating trapped air.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER S WRIGHT whose telephone number is (571) 272-8343. The examiner can normally be reached Monday- Friday 8:30am-5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached on 571-273-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER S WRIGHT/Examiner, Art Unit 1745
/ALEX B EFTA/Primary Examiner, Art Unit 1745
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