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 .
Response to Arguments
a. In regard to the functional language, Applicant submits the Examiner's position that certain claim limitations are directed to functional language and therefore fail to impart patentable weight or are subject to interpretation under 35 U.S.C. 12(f), Applicant respectfully traverses and submits that this characterization is no longer applicable in view of the amendments. The Examiner's analysis relies on case law such as In re Otto, In re Ludtke, and Catalina Marketing, which stand for the proposition that purely functional language, when divorced from structure, does not distinguish over the prior art. However, the claims as amended do not merely recite a desired result or intended use, but instead expressly recite specific structural components that inherently perform the recited functions. In particular, the claims now recite a "polarization-rotating or polarization-filtering optical element," an "analyzer," a "retardation plate," a "rotation unit," and a "detection unit," each of which corresponds to well-understood classes of physical components in the optical measurement arts.
a. (Examiner’s response) Applicant's arguments have been fully considered but they are not persuasive. Examiner notes the "polarization-rotating or polarization-filtering optical element," an "analyzer," a "retardation plate," a "rotation unit," and a "detection unit are based upon an apparatus claim 1, wherein claim 13 is based upon method claim 9 which does not claim these elements. Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.
b. In regards to the U.S.C 112 rejection, Applicant has amended the claims as suggested by the Examiner. As shown in the amended claims, the previously broad functional language has been replaced with "polarization-rotating or polarization-filtering optical element," and further clarified by explicitly reciting an analyzer where appropriate. Applicant submits that these amendments remove any ambiguity as to claim scope and provide clear structural boundaries.
In regards to claim 5, the Examiner correctly noted lack of antecedent basis and technical inconsistency regarding circular polarization. Both issues have been expressly cured by the amendment. This amendment directly aligns the claim with established optical physics and the specification disclosure.
b. (Examiner’s response) Applicant’s arguments with respect to claims 1 & 2 have been fully considered and are persuasive. The 35 U.S.C 112 rejection of claims 1 & 2 has been withdrawn.
Applicant’s arguments with respect to claim 5 have been fully considered and are persuasive. The 35 U.S.C 112 objection of claim 5 has been withdrawn.
c. In regards to the 35 U.S.C 103 rejection, Applicant submits the mere existence of a general-purpose computer does not render obvious a claim directed to a computer specifically configured to perform a novel and non-obvious method. See, e.g., In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017) (holding that an obviousness rejection must include an articulated reasoning with rational underpinning and cannot rely on conclusory statements). Here, the Office Action fails to provide any articulated reasoning explaining why a person of ordinary skill in the art would have been motivated to adapt Tabaru's system to perform the claimed optical testing method, particularly given that Tabaru is directed to an entirely different computational context.
c. (Examiner’s response) Examiner notes the patentability of an apparatus claim depends only on the claimed structure, not on the use or purpose of that structure, Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Applicant’s claims recite the ability to control steps, wherein the claimed subject matter is not supporting patentability for an apparatus claim since similar structures such as a computer are capable of controlling steps of a method. Examiner notes it is well known for computers to control other processes which may be construed as turning on/off a desired process. The motivation of using a computer to control processes enables an automated switch without the need for manual labor. Examiner further notes control is not understood as the steps being stored and executed on the computer itself but rather its ability to control a step. Examiner suggests removing control.
Functional Language
Remarks regarding functional language:
Language in an apparatus or product claim directed to the function, operation, intent-of-use, and materials upon which the components of the structure work that does not structurally limit the components or patentably differentiate the claimed apparatus or product from an otherwise identical prior art structure will not support patentability. See, e.g., In re Rishoi, 197 F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 939-40 (CCPA 1963); In re Ludtke, 441 F.2d 660,663-64 (CCPA 1971); In re Yanush, 477 F.2d 958,959 (CCPA 1973). The patentability of an apparatus claim depends only on the claimed structure, not on the use or purpose of that structure, Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002), or the function or result of that structure. In re Oanly, 263 F.2d 844,848 (CCPA 1959). Please also see M.P.E.P. 2114[R-1].
In regards to claims 12-14, the following limitations “control the steps of the method according to claim 9”, “control the steps of the method according to claim 11”, & “on which the computer program according to claim 13 is stored” is understood to be functional:
The limitation describes purpose, function, operation, or intent -of-use the computer steps. However, the claim does not disclose a sufficient structure which supports the function. Examiner notes controlling steps is an intended result of that is accomplished by the computer. In this case, there is no limit imposed on how the claimed computer obtains the result. Since Tabaru show an identical structure as claimed, namely a computer, the Examiner submits that the computer of Tabaru is capable of producing the claimed results.
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.
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 polarization-rotating or polarization-filtering optical element” “polarization-influencing elements” “a rotation unit designed for rotating” “a detection unit for substantially simultaneously determining” “an optical element for refocusing” “an optical element for recollimating” “detection unit is designed to determine”, “an evaluation
unit configured to determine” in claims 1-4, 7, 15.
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.
Applicant teaches the polarization-filtering optical element is an analyzer (00047, lines 8-10).
Applicant teaches an analyzer which is known to rotate polarization i.e. polarization-rotating element.
Applicant teaches the rotation unit 135 is provided, which is designed, for example, as an electrical drive (00036, lines18-20).
Applicant teaches a sensor of the detection unit can be designed, for exam pie, as a CMOS or CCD camera or a projection screen (00037, lines 6-7).
Applicant teaches the optical element 130a is referred to as a collimation lens and the optical element 130b is referred to as a focusing lens or auxiliary lens (00036, lines 15-18).
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.
Claim 15 is 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 pre-AIA the applicant regards as the invention. The claimed subject matter “evaluation unit” is rendered indefinite. Examiner notes the specification does not provide the structure for the “evaluation unit” to perform the claimed functions. Applicant teaches an evaluation unit which is designed to determine a characteristic value (0007, line 15. Based upon the specification there is no way to determine the metes and bounds of this limitation, since there are no limits imposed by structure, material or acts, and can therefore be performed by any means capable of performing the function, both known and unknown. Clarification is required.
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.
Claim(s) 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tabaru US 20140149719.
With respect to claim 12, Tabaru does not specifically teach a control device configured to control the steps of the method according to claim 9 in corresponding units.
Tabaru, in the field of endeavor of computers, teaches a control device i.e. computer configured to execute a program to control a controller to perform steps (claim 1). At the time prior to the effective filing date, it would have been obvious to one of ordinary skill in the art to control the steps of claim 9 with Tabaru’s control device to turn on/off a program when starting/ending measurements.
With respect to claim 13, Tabaru does not specifically teach a computer program configured to control the steps of the method according to claim 11.
Tabaru, in the field of endeavor of computers, teaches control device i.e. computer configured to execute a program to control a controller to perform steps (claim 1). At the time prior to the effective filing date, it would have been obvious to one of ordinary skill in the art to the method of claim 11 with Tabaru’s process to turn the steps on/off when starting/ending measurements.
With respect to claim 14, Tabaru does not specifically teach a machine-readable storage medium on which the computer program according to claim 13 is stored.
Tabaru, in the field of endeavor of computers, machine-readable storage medium i.e. computer configured to execute a program to control a controller to perform steps (claim 1). At the time prior to the effective filing date, it would have been obvious to one of ordinary skill in the art to control steps with Tabaru’s process to turn on/off a program when starting/ending measurements.
Allowable Subject Matter
Claims 1-11,16, & 17 are allowed. The following is a statement of reasons for the indication of allowable subject matter:
As to claim 1, the prior art of record, taken alone or in combination, fails to disclose or render obvious “a rotation unit designed for rotating the optical sample about a beam axis and/or the optical axis, on which the optical sample is located, relatively to the testing device and/or sub-assemblies thereof; and a detection unit for substantially simultaneously determining a decentration value and a polarization axis of the optical sample, based on the rotation angle and a reflected light beam, from the at least two optical beams, reflected by the optical sample”, in combination with the rest of the limitations of claim 1.
As to claim 2, the prior art of record, taken alone or in combination, fails to disclose or render obvious “a rotation unit which is designed to rotate the optical sample about a beam axis and/or the optical axis, on which the optical sample is located, relatively to the testing device and/or to sub-assemblies thereof; and a detection unit for substantially simultaneously determining a decentration value and a polarization axis of the optical sample, based on the rotation angle and an optical beam, from the at least two optical beams transmitted by the optical sample”, in combination with the rest of the limitations of claim 2.
As to claim 9, the prior art of record, taken alone or in combination, fails to disclose or render obvious “the method being carried out with the testing device according to claim 1”, in combination with the rest of the limitations of claim 9.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURICE C SMITH whose telephone number is (571)272-2526. The examiner can normally be reached Monday-Friday 9am-5pm EST.
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, 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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/MAURICE C SMITH/Examiner, Art Unit 2877
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