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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-16, in the reply filed on 22 June 2026 is acknowledged. The traversal is on the ground(s) that the method of the claimed invention could not be used to produce another materially different product and that the product could not be made by any other and materially differently process as the scope of claims is limited to a product made by the process. This is not found persuasive.
With regards to the method of the claimed invention not being used to make other products, examiner notes that notes that the limitation recited in the preamble of "a method for manufacturing a micro-optic" is a recitation of intended use and/or functional language. Per MPEP 2111.02(II), if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). More specifically, examiner notes that the steps of the method do not require the integration of anything that is defined as a “micro-optic”, instead requiring the presence of “one or more optical components”, “a grid structure of a support structure” and “a curable polymer”.
With regards to the product not being made by a different method, examiner notes that the limitation of “the micro-optics is created by the method according to claim 1” is a product-by-process limitation where the determination of patentability does not depend on its method of production but rather the actual structure of the product and as such, an identical product to the claimed product of claim 17 but made by a different process would still fall into the scope of the product claim (see MPEP 2113).
Applicant also argues that there would be no examination burden or serious search as both groups require the search and examination of a particular method. Examiner disagrees, noting that, as set forth in the restriction requirement, the groups have acquired separate status in view of their different classification and differing fields of search.
The requirement is still deemed proper and is therefore made FINAL.
Claim 17 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 22 June 2026.
Claim Objections
Claims 1-2, 11-13 and 16 are objected to because of the following informalities:
Claim 1, L1:
Claim 2, L2: by means of 3D laser writing.
Claim 10 L1-2: wherein the unit cells or pores of the grid structure are arranged in a Cartesian or radial arrangement.
Claim 11, L2: is substantially non-transparent.
Claim 12, L2-3: extends in an [[the]] axial direction
Claim 13, L2: structure extends in a radial direction to form an aperture
Appropriate correction is required.
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 5-10, 14 and 15 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.
Regarding claim 5, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention (see MPEP § 2173.05(d)).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired (see MPEP § 2173.05(c)). In the present instance, the following claims recite a broad recitation (underlined) while also reciting a narrower range/limitation (bolded):
Claim 6: a wall thickness of the grid structure is between 0.5 µm and 50 µm and in particular between 0.5 µm and 10 µm.
Claim 7: the grid structure has a fill factor of less than 0.5, in particular less than 0.3, preferably less than 0.2 and particularly preferably less than 0.1.
Claim 9: a pore size or a size of the unit cell corresponds to between 20 µm and 1500 µm and in particular between 100 µm and 1000 µm.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 8 recites the limitation "the 3D laser writing" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the unit cell" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the unit cells" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "the unit cells" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the unit cells" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
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.
This application includes one or more claim limitations that use the word “means” and are 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: “by means of 3D laser writing” in claim 2.
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 § 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.
(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) 1-6 and 9-16 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Thiele et al. (US20210221059) (of record).
Regarding claim 1, Thiele discloses a method for manufacturing a micro-optics, comprising the steps of:
creating one or more optical components ("optical element" (2), [0073]),
creating a grid structure of a support structure at least partially surrounding the one or more optical components ("microfluidic cavity/void" (4), Fig 3-4),
filling the grid structure with a curable polymer ([0043], [0027] via ""magnetic substance" (6)), and
curing the polymer in the grid structure to create the support structure ([0043], [0027]).
While not relied upon for the basis of the rejection as set forth above, examiner notes the current claim limitations do not include any indication as to how the “micro-optics” mentioned in the preamble are considered part of the method, whether as an ingredient, an intermediate product, an end product or any other clarifiers. Examiner recommends amending the claim to read “curing the polymer in the grid structure to create the support structure, resulting in the manufactured micro-optics.
Regarding claim 2, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the grid structure is created by means of 3D laser writing ([0050]).
Regarding claim 3, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the grid structure comprises a plurality of interconnected open pores or unit cells ([0076] via "patterned bores of the cavity").
Regarding claim 4, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the grid structure is formed to be regular or stochastic (Fig 3, 4).
Regarding claim 5, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the grid structure has a uniform unit cell (Fig 3) or pore geometry or has a unit cell or pore geometry which varies in particular along an axis of the micro-optics ([0039], Fig 4).
Regarding claim 6, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that a wall thickness of the grid structure is roughly 10 µm (see Modified Thiele Fig 4A below, which is within the claimed range of between 0.5 µm and 50 µm).
PNG
media_image1.png
307
300
media_image1.png
Greyscale
[AltContent: textbox (Modified Thiele Fig 4A where component numbers have been removed, indications of various lengths based on the scale of 100 µm have been added, a measurement of the wall thickness of the grid structure is shown to be ~10 µm and relatively scale between the 100 µm scale to the grid structure is maintained.)]
Regarding claim 10, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the unit cells or pores of the grid structure are arranged Cartesian or radially (Fig 3, 4).
Regarding claim 11, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the curable polymer is substantially non-transparent ([0023], in that the magnetic substance can comprise of ferrofluids, which are dark fluids).
Regarding claim 12, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the support structure radially surrounds the at least one optical element and extends in the axial direction (Fig 3, 4).
Regarding claim 13, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the support structure extends in a radial direction to form an aperture (Fig 3, 4).
Regarding claim 14, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the unit cells are arranged nested within one another or offset with respect to one another (Fig 3, 4).
Regarding claim 15, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the unit cells or pores are cubic, circular, rounded or polyhedral (Fig 3, 4).
Regarding claim 16, Thiele discloses all limitations of claim 1 as set forth above. Additionally, Thiele discloses that the curable polymer contains metal particles prior to the grid structure being filled ([0023]-[0024]).
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.
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) 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Thiele et al. (US20210221059) (of record).
Regarding claim 7, Thiele discloses all limitations of claim 1 as set forth above. While Thiele does not explicitly disclose that the grid structure has a fill factor of less than 0.5, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that Thiele teaches that the microfluidic cavities/voids can be filled either completely (fill factor of 1.0) or partially (fill factor of less than 1.0) ([0018], which overlaps with the claimed range of less than 0.5).
While not relied upon as part of the rejection as set forth above, examiner notes that, outside of general statements on p.4 and p.9, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed fill factor range as there are no experimental results and to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP 716.02(d)(II)).
Regarding claim 9, Thiele discloses all limitations of claim 1 as set forth above. While Thiele does not explicitly disclose that a pore size or a size of the unit cell corresponds to between 20 µm and 1500 µm, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so as Thiele does teach that a pore size or a size of the unit cell corresponds to less than 200 µm ([0016]-[0017], which overlaps with the claimed range of between 20 µm and 1500 µm).
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Thiele et al. (US20210221059) (of record) as set forth above in claim 1 and further in view of Defelice et al. (US20110144752).
Regarding claim 8, Thiele discloses all limitations of claim 1 as set forth above. While Thiele does not explicitly disclose that a wall thickness of the grid structure corresponds to a voxel of the 3D laser writing, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, given that:
a) Thiele discloses that the size and shape of the cavities/voids can be modified to be different dimensions ([0039]), which would by extension include changes to the grid structure; and
b) Defelice, which is within the laser writing art, teaches that the interpretation of a desired 3D structure (such as a grid structure’s wall thickness) into voxels or “basic unit of computed tomography reconstruction” is a basic step in manufacture of a 3D structure via laser writing ([0028]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER D BOOTH whose telephone number is 571-272-6704. The examiner can normally be reached M-Th 7:00-4:30.
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, Katelyn Smith can be reached at 571-270-5545. 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.
/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
Prosecution Insights