DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1- This office action is a response to an application filed on 9/09/2024, in which claims 1-20 are currently pending.
Information Disclosure Statement
2- The submitted information disclosure statement(s) (IDS) is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is(are) being considered by the examiner.
Specification
3- The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which application may become aware in the specification.
Drawings
4- The drawings were received on 9/09/2024. These drawings are acceptable.
Claim Interpretation - 35 USC § 112
5- 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.
6- 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:
Launch group in claims 1, 8 and 19-20,
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
7- 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.
8- Claims 1-20 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 pre-AIA the applicant regards as the invention.
As to claims 1, 8 and 17, which read “a plurality of light sources configured to generate a first plurality of wavelengths, wherein: … the plurality of light sources comprises a first group of light sources operable to emit light of a first group of wavelengths of light; and a launch group optically coupled to the light source unit and configured to emit light received from the light source unit; … wherein each encoded measurement of the first series of encoded measurements comprises: generating, using the light source unit, light at a corresponding plurality of wavelengths, wherein the corresponding plurality of wavelengths is a corresponding subset of the first group of wavelengths; simultaneously emitting the corresponding plurality of wavelengths of the GENERATED light from the launch group; and measuring, using the detector group, return light received during the simultaneous emission of the corresponding plurality of wavelengths”, and its equivalents in claims 7 and 17:
the underlined CAPITALIZED clause appears to present antecedence issues, as it is not clear whether the wavelengths are generated by the launch group, or the light source, or both.
Also, it is not clear how can the corresponding plurality of wavelengths be emitted by the launch group, that receives light from the light source unit (and that takes time, no matter how short this time is), and still having this emission simultaneous with generating of light by the light source unit. For examination purposes, these limiations would be construed that the light source unit and the launch group are claimed to be operated concomitantly.
Claims 2-7, 9-16 and 18-20 are similarly rejected by virtue of their dependence on claims 1, 8 and 17.
As to claim 2, which reads “… the control is configured to generate…”, the underlined clause appears to present antecedence issues.
As to claim 3, which reads “…generating, using the light source unit, light at a corresponding plurality of wavelengths, wherein the corresponding plurality of wavelengths is a corresponding subset of the second group of wavelengths; simultaneously emitting the corresponding plurality of wavelengths of the generated light from the launch group; and measuring, using the detector group, return light received during the simultaneous emission of the corresponding plurality of wavelengths…”, the underlined clauses present indefiniteness issues as it is not clear how to distinguish them from the similar “corresponding plurality of wavelengths” in claim 1.
As to claim 4, which reads “…the first group of wavelengths is selected from immediately adjacent wavelengths of the first plurality of wavelengths…”, the underlined clauses present indefiniteness issues as it is not clear how to quantify “immediately adjacent” for wavelengths, given that atomic spectroscopy insists that the wavelength values are real continuous numbers, and not discrete. For examination purposes, the limitation is construed as the first group of wavelengths to be close of the first plurality of wavelengths.
As to claim 6, which reads “…a second light source operable to emit light at a second wavelength, and a third light source operable to emit light at a second wavelength…”, the underlined clauses present indefiniteness issues as it is not clear whether the third light source emits “the second wavelength”, similarly to the second light source, or that it is a third wavelength different from the second wavelength. For examination purposes, both options will be considered.
Claim Rejections - 35 USC § 103
9- 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
10- Claims 1-20 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Mathai et al. (PGPUB No. 2023/0283396)
In addition, the functional recitation in the claims (e.g. "configured to" or "adapted to" or the like) that does not limit a claim limitation to a particular structure does not limit the scope of the claim. It has been held that the recitation that an element is "adapted to", "configured to", "designed to", or "operable to" perform a function is not a positive limitation but only requires the ability to so perform and may not constitute a limitation in a patentable sense. In re Hutchinson, 69 USPQ 139. (See MPEP 2111.04); see also In In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014).
Also, it should be noted that it has been held that a recitation with respect to the manner in which a claimed device is intended to be employed does not differentiate the claimed device from a prior art apparatus satisfying the claimed structural limitations Ex-parte Masham 2 USPQ2d 1647 1987).
The claimed system in the instant application is capable of performing the claimed functionality, as is the prior art used in the present office action. The Examiner notes that where the patent office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart and sfiligoj, 169 USPQ 226 (C.C.P.A. 1971).
As to claim 1 and 8, Mathai teaches an optical measurement system, and its method of use (Abstract, Figs. 1-15), comprising: a photonics integrated circuit (¶ 153, Figs. 2-15) comprising: a light source unit, comprising: an Echelle grating multiplexer comprising a plurality of inputs, and a plurality of outputs positioned to receive light from the plurality of inputs (¶ 72, 87, 109, 135 for ex.; component 220, 320, 430/432, 530, 620/622, 720, and components post 810 or 910, or equivalent); and a plurality of light sources configured to generate a first plurality of wavelengths (wavelengths lx, and equivalents, from a first group of the set of sources x10/x12/x14/x16/..N) wherein: each light source of the plurality of light sources is connected to a corresponding input of the plurality of inputs (Figs. 2-7); the plurality of light sources comprises a first group of light sources operable to emit light of a first group of wavelengths of light (Any subgroup of the light sources); and a launch group (Any optical demultiplexing component, such as 430-432 and equivalents, after the multiplexer) optically coupled to the light source unit and configured to emit light received from the light source unit (Figs. 2-9); a detector group (¶ 32, 148, 160-166; photodetectors to monitor or measure the outputs of the system); and a controller (necessary from the following functions) configured to perform a first series of encoded measurements using the light source unit, the launch group, and the detector group, wherein each encoded measurement of the first series of encoded measurements comprises: generating, using the light source unit, light at a corresponding plurality of wavelengths, wherein the corresponding plurality of wavelengths is a corresponding subset of the first group of wavelengths (any subgroup of wavelengths lx, and equivalents, from the set of sources x10/x12/x14/x16/..N being modulated such as in ¶ 50, 79-82 for ex.); simultaneously emitting the corresponding plurality of wavelengths of the generated light from the launch group (given the 112 issues here above, the same subgroup after propagation and transmission through the launch component); and measuring, using the detector group, return light received during the simultaneous emission of the corresponding plurality of wavelengths (¶ 23, 31-32, 89-97, 100-104, 160-166 for ex; during the continuous operation of the system, the photodiodes are used to monitor the signal intensities and their modulations, i.e. encodings).
Mathai does not teach expressly all the modules in a single embodiment.
However, one PHOSITA would find it obvious to combine the teachings from the different embodiments of Mathai to read on the claimed device and method with the advantage of effectively wavelength division multiplexing and measuring (See MPEP § 2143 Sect. I. B-D).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus and method of Mathai in view of its different embodiments suggestions in order to obtain a system and method of use similar to the claimed ones , with the advantage of effectively optimizing wavelength division multiplexing and measuring
(claim 2) wherein: the control is configured to generate, using the first series of encoded measurements, a derived measurement intensity for each wavelength of the first group of wavelengths (¶ 23 or 163 for ex; filtered measurements or phase shifted, i.e. derived, of the modulated intensities, i.e. encoded intensities, are considered).
(claim 3) wherein: the plurality of light sources comprises a second group of light sources operable to emit a second group of wavelengths of light; the controller is configured to perform a second series of encoded measurements using the light source unit, the launch group, and the detector group; and each encoded measurement of the second series of encoded measurements comprises: generating, using the light source unit, light at a corresponding plurality of wavelengths, wherein the corresponding plurality of wavelengths is a corresponding subset of the second group of wavelengths; simultaneously emitting the corresponding plurality of wavelengths of the generated light from the launch group; and measuring, using the detector group, return light received during the simultaneous emission of the corresponding plurality of wavelengths (any of the subgroups of light sources not considered in claim 1).
(claim 4) wherein: the first group of wavelengths is selected from immediately adjacent wavelengths of the first plurality of wavelengths (Figs. 1-9; given the 112 issues here above, wavelengths are chosen to close to each other).
(claim 5) wherein: the photonic integrated circuit comprises a passive optical combiner that is configured optically couple the plurality of outputs of the Echelle grating multiplexer to a common waveguide (Figs. 6-8; multiplexers such as 620/22 or 850 for ex).
(claims 6, 10) wherein: the first group of light sources comprises a first light source operable to emit light at a first wavelength, a second light source operable to emit light at a second wavelength, and a third light source operable to emit light at a second wavelength; the plurality of outputs of the Echelle grating multiplexer comprises a first output, a second output, and a third output; the Echelle grating multiplexer is configured to route light of the first wavelength generated by the first light source to the first output; the Echelle grating multiplexer is configured to route light of the second wavelength generated by the second light source to the second output; and the Echelle grating multiplexer is configured to route light of the third wavelength generated by the third light source to the third output; (claim10) wherein: the plurality of outputs of the Echelle grating multiplexer comprises a first output, a second output, and a third output; and the first group of wavelengths comprises a first wavelength, a second wavelength, and a third wavelength (Fig. 2 and ¶ 46-48 for ex.; the multiplexer 220 routes each wavelength input to each output, which reads onto the claim).
(claim 7) comprising: a reference detector (such detectors 1360-1367) configured to measure an intensity of the light emitted by the launch group (¶ 160-161).
(claim 9) comprising: decoding the first plurality of encoded measurement intensities to generate a corresponding derived measurement intensity for each wavelength of the first group of wavelengths (¶ 95, 103, 113, 123 for ex.)
(claims 11-12) wherein: the first series of encoded measurements comprises a first encoded measurement; and during the first encoded measurement of the first series of encoded measurements: light of the first wavelength is generated at the first output; light of the second wavelength is generated at the second output; light of the first wavelength and the second wavelength is simultaneously emitted from the launch group; and the detector group generates a first encoded measurement intensity of the first plurality of encoded measurement intensities; (claim 12) wherein: the first series of encoded measurements comprises a second encoded measurement; and during the second encoded measurement of the first series of encoded measurements: light of the first wavelength is generated at the first output; light of the third wavelength is generated at the third output; light of the first wavelength and the third wavelength is simultaneously emitted from the launch group; and the detector group generates a second encoded measurement intensity of the first plurality of encoded measurement intensities (see rejection of claims 1/8, 6).
(claim 13) comprising: performing, using the photonic integrated circuit and the detector group, a second series of encoded measurements for a second group of wavelengths to generate a second plurality of encoded measurement intensities, wherein: performing the second series of encoded measurement comprises, for each encoded measurement of the second series of encoded measurements: generating, at a corresponding subset of the plurality of outputs of the Echelle grating multiplexer, light at a corresponding plurality of wavelengths, wherein the corresponding plurality of wavelengths is a corresponding subset of the second group of wavelengths; simultaneously emitting the corresponding plurality of wavelengths of the generated light from the launch group; and measuring, using the detector group, return light received during the simultaneous emission of the corresponding plurality of wavelengths to generate a corresponding encoded measurement intensity of the second plurality of encoded measurement intensities (see rejection of claims 1/8, 6).
(claim 14) comprising: decoding the second plurality of encoded measurement intensities to generate a corresponding derived measurement intensity for each wavelength of the second group of wavelengths (¶ 95, 103, 113, 123 for ex.)
(claims 15-16) wherein: the first group of wavelengths and the second group of wavelengths have a common number of wavelengths; (claim 16) wherein: the first group of wavelengths and the second group of wavelengths have a common set of frequency differences (Fids. 1-7; any combination with equal number of wavelengths, and their corresponding frequencies, can be arbitrarily chosen).
As to claim 17, Mathai teaches a method of performing a spectroscopic measurement using an optical measurement system, the method comprising: performing, using the optical measurement system, a first series of encoded measurements for a group of wavelengths to generate a plurality of encoded measurement intensities, decoding the plurality of encoded measurement intensities to generate a corresponding derived measurement intensity for each wavelength of the group of wavelengths; decoding the plurality of encoded references intensities to generate a corresponding derived reference intensity for each wavelength of the group of wavelengths; and generating, for each wavelength of the group of wavelengths, a corresponding reference-corrected derived measurement intensity using the corresponding derived measurement intensity and the corresponding derived reference intensity (see rejection of claims 1/8, 9, in addition to the calibration processes, i.e. use of reference measurement for the intensity, wavelength; ¶ 30-32, 79, 90 for ex.)
(claims 18-20) wherein: the series of encoded measurements is performed using a photonic integrated circuit, a detector group, and a reference detector of the optical measurement system; the detector group generates the plurality of encoded measurement intensities; and the reference detector generates the plurality of encoded reference intensities; (claim 19) wherein: the photonic integrated circuit comprises a light source unit and a launch group; the light source unit comprises an Echelle grating multiplexer having a plurality of outputs; (claim 20) wherein: performing the series of encoded measurement comprises, for each encoded measurement of the series of encoded measurements: generating, at a corresponding subset of the plurality of outputs of the Echelle grating multiplexer, light at a corresponding plurality of wavelengths, wherein the corresponding plurality of wavelengths is a corresponding subset of the group of wavelengths; simultaneously emitting the corresponding plurality of wavelengths of the generated light from the launch group; measuring, using the detector group, return light received during the simultaneous emission of the corresponding plurality of wavelengths to generate a corresponding encoded measurement intensity of the plurality of encoded measurement intensities; and measuring, using the reference detector, a portion of the generated light emitted from the launch group (see rejection of claims 1/8, and 7).
Conclusion
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877