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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No.2022-075746, filed on 5/2/2022.
Preliminary Amendment
Receipt is acknowledged of the preliminary amendment filed on 10/24/2024. The amendment has been placed of record in the file.
The Information Disclosure Statements
The prior art cited in the information disclosure statements filed on 1/15/2025, 2/16/2026 has been considered.
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: generator, imager, controller, in claim 1.
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No.9,965,867 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent claims anticipate instant claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 7-8, 10-11, is/are rejected under 35 U.S.C. 102 (1)(1)/(a)(2) as being anticipated by OTSU et al. (US 2016/0247291 A1) [hereinafter OTSU].
As to claims 1, 10, OTSU teaches an optical vortex control apparatus comprising: a light source (10, Fig.1) configured to output light; an optical vortex generator (10, Fig.1) configured to generate an optical vortex from the light; a focusing optical system (30, Fig.1) configured to focus the optical vortex; an imager (33, 60, Fig.1) configured to image a micro object optically trapped and driven by the optical vortex focused by the focusing optical system, and outputting output image data; and a controller (70, Fig.1; paragraph 0030) configured to analyze a motion of the micro object based on the image data, and adjust a phase distribution of the optical vortex generated by the optical vortex generator based on an analysis result.
As to claims 2, 11, OTSU teaches all as applied in claim 1, and in addition teaches wherein the optical vortex generator includes a spatial light modulator having a plurality of pixels arrayed two dimensionally, and configured to modulate at least a phase of the light in each pixel, and output the light (paragraph 0025).
As to claim 7, OTSU teaches all as applied in claim 1, and in addition teaches wherein the controller is configured to analyze/acquire motion information of the micro object as the motion of the micro object (paragraphs 0033-0036). Note the information type/kind is intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
As to claim 8, OTSU teaches all as applied in claim 1, and in addition teaches wherein the controller is configured to analyze any one of a velocity distribution and an angular velocity of the micro object as the motion of the micro object (paragraph 0036).
Claim(s) 1, 10, is/are rejected under 35 U.S.C. 102 (1)(1)/(a)(2) as being anticipated by Mueth et al. (US 2019/0137931 A1) [hereinafter Mueth].
As to claims 1, 10, OTSU teaches an optical vortex control apparatus comprising: a light source (507, Fig.5) configured to output light; an optical vortex generator (505, Fig.5) configured to generate an optical vortex from the light; a focusing optical system (504, Fig.1) configured to focus the optical vortex; an imager (paragraphs 0181-0184, paragraph 0028) configured to image a micro object optically trapped and driven by the optical vortex focused by the focusing optical system, and outputting output image data; and a controller (paragraph 0052) configured to analyze a motion of the micro object based on the image data. Note the limitation ‘and adjust a phase distribution of the optical vortex generated by the optical vortex generator based on an analysis result,’ is intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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.
Claim(s) 9, 16-18, is/are rejected under 35 U.S.C. 103 as being unpatentable over Heaton.
As to claims 9, 18, OTSU teaches all as applied to claims 1, 10, except wherein controller is configured to perform analysis based on a function in which any one of a motion trajectory, a position distribution, a velocity distribution, an angular velocity, and a torque distribution of the micro object is a
variable as the motion of the micro object. However, examiner takes Official use of a controller to perform analysis based on said function is known in the art.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate such controller to OTSU apparatus in order to evaluate state of an optical trap of micro object.
As to claims 16-17, OTSU teaches all as applied to claim 10, except controlling motion, position, velocity distribution of the micro object. However examiner takes Official Notice that doing so is known in the art.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to control motion, position, velocity distribution of the micro object, in order to evaluate state of an optical trap of the micro object.
Allowable Subject Matter
Claims 3-6, 12-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As to claim 3, the prior art of record, taken alone or in combination, fails to disclose or render obvious an optical vortex control apparatus, wherein the controller is configured to superimpose an adjustment pattern for optical vortex generation adjustment on a modulation pattern for optical vortex generation, and cause the spatial light modulator to present the modulation pattern after superimposition, in combination with the rest of the limitations of the claim. Claims 4-6 depend on claim 3
As to claim 12, the prior art of record, taken alone or in combination, fails to disclose or render obvious an optical vortex control method, wherein in the control, an adjustment pattern for optical vortex generation adjustment is superimposed on a modulation pattern for optical vortex generation, and the modulation pattern after superimposition is presented on the spatial light modulator, in combination with the rest of the limitations of the claim. Claims 13-15 depend on claim 12.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
James et al. (US Patent # 11,346,768 B1) teaches an optical metrology device that is capable of determining a characteristic of a sample may include a polarization state generator that converts a light beam into an optical vortex beam. Metrology device may further include focusing optics that have an optical axis that is normal to a surface of the sample. The focusing optics focus the optical vortex beam on the sample over a plurality of angles of incidence and a plurality of azimuth angles that correspond to initial polarization states. A detector receives a reflected optical vortex beam from the sample in an image of a pupil plane of the focusing optics. The detector simultaneously measures polarization states of the reflected optical vortex beam based on multiple positions in the image of the pupil plane, each position differing in at least one of radius and azimuth angle, wherein the radius corresponds to the angle of incidence and the azimuth angle corresponds to initial polarization states from the optical vortex beam. At least one processor receives the image of the pupil plane from the detector and is configured to determine the characteristic of the sample using at least the polarization states of the reflected optical vortex beam (abstract; Figs. 1-3).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDULLAHI NUR whose telephone number is (571)270-1298. The examiner can normally be reached on M-F, 9am to 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel, can be reached on 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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/ABDULLAHI NUR/Primary Examiner, Art Unit 2886
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