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.
Claims 41, 42, 45, and 46 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 41 recites the limitation "one or more images of the target" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim. What target is being referred to here? Claim 37, the claim on which claim 41 depends, fails to recite a target, leading to the lack of antecedent basis for this claim. To overcome the rejection, the examiner recommends amending claim 37 to add a recitation to “a target”, or to amend claim 41 to read “one or more images of a target”.
Claim 42 recites the limitation "are at least one of emitted, scattered, and luminesced from the target" in lines 1-2 of the claim. There is insufficient antecedent basis for this limitation in the claim. What target is being referred to here? Claim 37, the claim on which claim 42 depends, fails to recite a target, leading to the lack of antecedent basis for this claim. To overcome the rejection, the examiner recommends amending claim 37 to add a recitation to “a target”, or to amend claim 42 to read “are at least one of emitted, scattered, and luminesced from a target”.
Claim 45 recites the limitation "to focus the spectroscopy system on the target" in lines 1-2 of the claim. There is insufficient antecedent basis for this limitation in the claim. What target is being referred to here? Claim 37, the claim on which claim 45 depends, fails to recite a target, leading to the lack of antecedent basis for this claim. To overcome the rejection, the examiner recommends amending claim 37 to add a recitation to “a target”, or to amend claim 45 to read “to focus the spectroscopy system on a target”.
Claim 46 recites the limitation "analyzing one or more spectral properties of the target" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim. What target is being referred to here? Claim 37, the claim on which claim 46 depends, fails to recite a target, leading to the lack of antecedent basis for this claim. To overcome the rejection, the examiner recommends amending claim 37 to add a recitation to “a target”, or to amend claim 46 to read “analyzing one or more spectral properties of a target”.
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 37-56 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 12-18, 20, 21, 23, and 29-35 of U.S. Patent No. 12,196,612. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘612 patent claim the salient limitations of the instant application as follows.
Regarding claim 37, claim 1 of the ‘612 patent claims a spectroscopic autofocusing method (see line 1 of the ‘612 claim) comprising applying a plurality of electrical signals to a shape changing lens of a spectroscopy system (see lines 2-3 of the ‘612 claim); determining, by a detector, one or more power measurements of one or more returned optical signals (see lines 6-8 of the ‘612 claim); and determining an optimized electrical signal corresponding to a maximum power measurement (see lines 14-15 of the ‘612 claim), wherein each power measurement of the one or more power measurements corresponds to a respective electrical signal of the plurality of electrical signals applied to the shape changing lens (see lines 9-12 of the ‘612 claim).
Further claim correspondence is as follows:
Claim 38 of the instant application with claim 2 of the ‘612 patent.
Claim 39 of the instant application with claim 4 of the ‘612 patent.
Claim 40 of the instant application with claim 12 of the ‘612 patent.
Claim 41 of the instant application with claim 13 of the ‘612 patent.
Claim 42 of the instant application with claim 14 of the ‘612 patent.
Claim 43 of the instant application with claim 15 of the ‘612 patent.
Claim 44 of the instant application with claim 16 of the ‘612 patent.
Claim 45 of the instant application with claim 17 of the ‘612 patent.
Claim 46 of the instant application with claim 18 of the ‘612 patent.
Regarding claim 47, claim 20 of the ‘612 patent claims a spectroscopy system (see line 1 of the ‘612 claim) comprising a shape changing lens coupled to a controller, wherein the shape changing lens is configured to optically couple to an optical source and a target (see lines 4-6 of the ‘612 claim); a detector coupled to the controller, wherein the detector is configured to determine one or more power measurements of one or more returned optical signals returned by the target (see lines 7-11 of the ‘612 claim), wherein the controller is configured to apply a plurality of electrical signals to the chape changing lens (see lines 12-14 of the ‘612 claim), and determine an optimized electrical signal corresponding to a maximum power measurement (see lines 19-20 of the ‘612 claim), wherein each power measurement of the one or more power measurements corresponds to a respective electrical signal of the plurality of electrical signals applied to the chape changing lens (see lines 15-18 of the ‘612 claim).
Further claim correspondence is as follows:
Claim 48 of the instant application with claim 21 of the ‘612 patent.
Claim 49 of the instant application with claim 23 of the ‘612 patent.
Claim 50 of the instant application with claim 29 of the ‘612 patent.
Claim 51 of the instant application with claim 30 of the ‘612 patent.
Claim 52 of the instant application with claim 31 of the ‘612 patent.
Claim 53 of the instant application with claim 32 of the ‘612 patent.
Claim 54 of the instant application with claim 33 of the ‘612 patent.
Claim 55 of the instant application with claim 34 of the ‘612 patent.
Claim 56 of the instant application with claim 35 of the ‘612 patent.
Allowable Subject Matter
Claims 37-40, 43, 44, and 47-56 would be allowable in view of the prior art should the double patenting rejections set forth above be properly overcome.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 37, the prior art of record, taken either alone or in combination, fails to disclose or render obvious a spectroscopic autofocusing method, the method comprising, among other essential steps, determining an optimized electrical signal corresponding to a maximum power measurement, wherein each power measurement of the one or more power measurements corresponds to a respective electrical signal of the plurality of electrical signals applied to the shape changing lens., in combination with the rest of the limitations of the above claim.
The examiner notes that claims 41, 42, 45, and 46 would be allowable for the same reasons as set forth above due to their dependency on claim 37 should the 35 USC 112(b) rejections set forth above be properly overcome.
As to claim 47, the prior art of record, taken either alone or in combination, fails to disclose or render obvious a spectroscopy system, the system comprising, among other essential features, a shape changing lens coupled to a controller, and a detector coupled to the controller, wherein the controller is configured to, among other functions, determine an optimized electrical signal corresponding to a maximum power measurement, wherein each power measurement of the one or more power measurements corresponds to a respective electrical signal of the plurality of electrical signals applied to the shape changing lens, in combination with the rest of the limitations of the above claim.
With further regard to the above claims, US 2018/0299328 to Szybek et al. discloses an improved Raman spectroscopy system. The system features (Figs. 1 and 2) a shape changing lens 13 (tunable lens as in paragraph 0053) that is coupled to a controller 14 (see paragraph 0057), wherein the shape changing lens is configured to optically couple to an optical source 11 and a target O (see paragraph 0053); and a detector 121 coupled to the controller, wherein the detector is configured to determine one or more power measurements of one or more returned optical signals returned by the target (as in paragraph 0091, an optical characteristic is detected, and as in paragraph 0093, that characteristic can relate to a power spectrum), wherein the controller is configured to apply a plurality of electrical signals to the shape changing lens (see paragraph 0067). However, while Szybek discloses in paragraph 0098 that by having two tunable lenses, with one lens having a spherical shape and another having a cylindrical shape, it is possible for the spectrograph 12 of Szybek to collect the maximum amount of scattered light at a minimum laser irradiation (see paragraph 0098), Szybek fails to disclose or render obvious determining an optimized electrical signal corresponding to a maximum power measurement, wherein each power measurement of the one or more power measurements corresponds to a respective electrical signal of the plurality of electrical signals applied to the shape changing lens, as collecting a maximum amount of scattered light is not equivalent a maximum power measurement at which an optimized electrical signal can be determined.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2022/0146432 to Aden et al. discloses an autofocusing laser induced breakdown spectroscopy system (see Fig. 1); US 2020/0333187 to Moggridge et al. discloses a variable focus imaging lens assembly (see abstract) that can be used in a spectrometer assembly (see Fig. 10); and US 2020/0057243 to Marple et al. discloses spectrometers that have a variable focus lens with a single air gap (see paragraphs 0035-0037).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael A. Lyons whose telephone number is (571)272-2420. The examiner can normally be reached Monday - Friday.
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/Michael A Lyons/Primary Examiner, Art Unit 2877 June 11, 2026
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