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 .
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.
As to claims 1 and 8-9, the claim limitation “individually adjusting attenuation amounts of the plurality of light beams” has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because no structure is claimed with regard to how individual beams are attenuated and how the attenuation is adjusted. 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.
Similarly, claim 2 recites a plurality of light blocking elements that “individually block the plurality of light beams” with no clear structure of how this function is performed.
Claim 3 recites “does not transmit” the beam. It is unclear to what degree of transmission occurs or if this includes reflection.
Claim 5 recites “individually adjusting transmittances” without any structure as to how this function is performed.
Dependent claims are rejected on the basis of dependency.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0025929 to Mei et al.
Mei discloses in the abstract, and figures 2-4 and 8-12, a variable optical attenuator (VOA) for receiving light propagating through a first optical fiber having a plurality of cores, adjusting an amount of light propagating through each core individually, and outputting the light to a second optical fiber having a plurality of cores, the VOA comprising:
A separation optical system (21) that spatially separates a plurality of light beams emitted into space from the plurality of cores (paragraph 59); and
Optical attenuation means capable of individually adjusting attenuation amounts of the plurality of light beams separated by the separation optical system (paragraph 56).
Examiner notes that the optical fibers and their cores have not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory cause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951).
As to claims 2-5, the attenuator can fully block or partially block light and is liquid crystal derived (paragraph 56).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mei in view of JP2013105152 to Hatano et al.
Mei discloses the invention as claimed including multiple lenses (paragraph 7), but fails to explicitly disclose the lenses in the order claimed. It is noted that rearranging lenses to create a suitable output is well known in the art.
Hatano discloses such lens arrangements to properly direct light in a system (figures 5-6).
It would have been obvious to one having ordinary skill in the art to add collimating and focusing lenses to direct light to various portions of a attenuator as taught by Hatano in Mei to optimize attenuation.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mei in view of Hatano as applied to claims above, and further in view of US 2019/0346679 to Miller.
Mei in view of Hatano discloses the invention as claimed except for a control device to detect light and adjust attenuation. It is noted that both Mei and Hatano have variable optical attenuators and on a very basic level would have some means to enable this variability.
Miller discloses a control system for optimizing and adjusting attenuation (abstract and paragraph 3).
It would have been obvious to one having ordinary skill in the art to provide a controller as taught by Miller in Mei in view of Hatano to properly adjust and attenuate an optical signal for precise control of a desired output.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2006/0193592 (basic VOA that meets current claim 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric K Wong whose telephone number is (571)272-2363. The examiner can normally be reached M-Tu, Th-F 8A-6P.
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, Thomas Hollweg can be reached on 571-270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ERIC K. WONG
Primary Examiner
Art Unit 2874
/Eric Wong/Primary Examiner, Art Unit 2874
Prosecution Insights