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 regards to the claim objections, Applicant has amended claims 3 and 9 to address the issues raised by the Office. Withdrawal of the claim objections is respectfully requested.
a. (Examiner’s response) Applicant’s arguments with respect to claim 3 have been fully considered and are persuasive. The objection of claim 3 has been withdrawn.
b. In regards to the 35 U.S.C 112 rejection, Applicant respectfully traverses rejection of claims 15 and 16. In particular, it would be well-understood by a person of ordinary skill in the art that a "wavelength-selective element configured for separating the electromagnetic radiation into a spectrum of constituent wavelength signals" may include any structure configured for the same, such as (but not limited to) a monochromator, a polychromator, a grating, a prism, an optical filter (e.g., an interference filter, a bandpass filter, a longpass filter), etc. When taken in the context of the present specification and the manufacturing of a spectrometer, a person of ordinary skill in the art would recognize which elements are suitable for the claimed function. Accordingly, the claim phrase "wavelength-selective element" is not indefinite.
b. (Examiner’s response) Applicant's arguments filed have been fully considered but they are not persuasive. Examiner submits 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. Examiner notes a monochromator, a polychromator, a grating, a prism, an optical filter (e.g., an interference filter, a bandpass filter, or a longpass filter) are not explicitly or implicitly shown in the specification. If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
c. In regards to the 35 U.S.C 103 rejection, Applicant submits that the amended claims are patentable over the cited
references.
c. (Examiner’s response) Applicant’s arguments with respect to claims 1 & 10, have been fully considered and are persuasive. The 35 U.S.C 103 rejection of claims 1 & 10 has been withdrawn.
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: “interconnecting element” “wavelength-selective element configured for separating” in claims 14, 15, & 16.
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 at least one interconnecting element, may further be comprised by the spectrometer device. In particular, the interconnecting element may be or may comprise a wire and/or a solder bump (col 8, lines 10-15).
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 15 & 16 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. In regards to claims 15 & 16, the claimed subject matter “wavelength-selective element” is rendered indefinite. Examiner notes the specification does not provide the structure for the “wavelength-selective element” to perform the claimed functions. Applicant teaches at least one wavelength-selective element configured for separating the electromagnetic radiation into a spectrum. 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.
Allowable Subject Matter
Claims 1-6, 10,12-14 are allowed. The following is an examiner’s statement of reasons for allowable subject matter:
As to claim 1, the prior art of record, taken alone or in combination, fails to disclose or render obvious “f) providing at least one housing and gluing the ROIC to the housing by applying at least one further adhesive material, wherein the further adhesive material is selected from the group consisting of: a thermosetting material, specifically an epoxy resin; a thermoplastic material; a plastic material; a polymer material; and a silicone-based glue, the housed ROIC bonded to the electro-optical system forming a packaged chip, the packaged chip having a lead frame extending
outwardly therefrom; g) arranging the ROIC packaged chip on the circuit carrier, such that the ROIC is
located between the electro-optical system and the circuit carrier; and h) bonding the packaged chip on the circuit carrier to establish at least one electrical connection between the packaged chip and the circuit carrier via the
lead frame”, in combination with the rest of the limitations of claim 1.
As to claim 10, the prior art of record, taken alone or in combination, fails to disclose or render obvious “silicone-based glue, wherein the spectrometer device is manufactured at least partially by performing the method of manufacturing a spectrometer device according to claim 1”, in combination with the rest of the limitations of claim 10.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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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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/MAURICE C SMITH/Examiner, Art Unit 2877
