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 without traverse of species I, figure I, claims 1-4, 8-10, 12-13 in the reply filed on 5/27/2026 is acknowledged.
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 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: driving mechanism in claims 1-4, 8-10, and 12-13; and light intensity measurer in claim 13.
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 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 6 of copending Application No.18/941,187 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claims 1 and 13 are also claimed in application 18/941,187.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, see claims 1 and 2 of application 18/941,187.
Regarding claim 13, see claim 6 of application 18/941,187.
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.
Claims 1-4 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshizumi (US 5455677 A; cited by Applicant) in view of Corey (US 4153370 A).
Regarding claim 1, Yoshizumi teaches a measurement device comprising:
a first movable body including a reflector (7, 22, 23; column 2, lines 30-65);
a second movable body (figure 1; column 2, lines 30-50; column 4, lines 15-36) including a light emission point (1), a light entry point (8, 10, 11), and an optical system (2, 3, 4, 6, 8);
a driving mechanism (14) that adjusts a position of the second movable body (column 2, lines 30-50);
a controller (12, 13) that controls the driving mechanism;
wherein
light emitted from the light emission point is emitted onto the reflector (23) via the optical system (2, 3, 4, 6)),
reflected light that is the light reflected from the reflector (23) enters the light entry point (8, 10, 11; column 2, lines 30-50),
the controller causes the driving mechanism to adjust the position of the second movable body, based on an intensity of the reflected light that has entered the light entry point (intensity of light detected by photodetectors, 11, are fed into the 12 and then 13, which control the motor 14 to adjust the position; column 2, lines 30-50; column 4, lines 15-36).
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Yoshizumi doesn’t explicitly teach at least one optical fiber; the light emission point or the light entry point is an end of the at least one optical fiber.
Like Yoshizumi (and like the instant application), Corey is also directed to a contact measurement device for measuring the shape of a surface and teaches the measurement device comprising:
at least one optical fiber (67, 87, and 93), wherein
the light emission point or the light entry point is an end of the at least one optical fiber (67 for light emission point; 87 and 93 for light entry point).
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It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoshizumi such that it comprises at least one optical fiber, wherein the light emission point and the light entry point is an end of the at least one optical fiber – in order to provide flexibility with respect to the placement of the light sources and light detectors, including allowing one to place the light source and detectors outside the housing as illustrated in figure 1, which facilitates easy changing of the light source and detectors; and in order to achieve a smaller device. (also see the additional prior art below which shows that it is desired in the art to be able to position the light source and other elements at a distance from the test object using a fiber optic, as well as it is recognized in the art that using fiber optics provides the benefit of a smaller device.)
Regarding claim 2, Yoshizumi teaches when the measurement device measures a target (21), the first movable body comes in contact with the target (figure 1; column 2, lines 64-67).
Regarding claim 3, Yoshizumi teaches an elastic body (20) that couples the first movable body with the second movable body (figure 1).
Regarding claim 4, in the above combination the at least one optical fiber (Corey: 67, 93, 87) includes a first optical fiber, the light emission point is a first end of the first optical fiber (Corey: figure 1), the second movable body includes: a beam splitter (Yoshizumi: 3 and 9) that splits the reflected light into first reflected light (light to 10) and second reflected light (light to 8); a first light-shielding member including a first pinhole (10) that the first reflected light enters; and a second light-shielding member including a second pinhole (8) that the second reflected light enters, the second movable body includes a plurality of light entry points (8, 10) each being the light entry point, and each of the first pinhole and the second pinhole is the light entry point (8, 10).
Regarding claim 12, in the above combination a laser element (laser in Yoshizumi and Corey), wherein light emitted from the laser element enters from an end of the first optical fiber on a side opposite to the first end, is guided along the first optical fiber, and is emitted from the first end (Corey: figure 1).
Regarding claim 13, Yoshizumi teaches a light intensity measurer (11) that measures an intensity of the reflected light that has entered the light entry point.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshizumi and Corey as applied to claim 1 above, and further in view of Franz (US 20100091265 A1) and Kannaka (US 20110279822 A1).
Regarding claims 8-9, the above combination doesn’t explicitly teach the at least one optical fiber is a single-mode fiber (claim 8); or the at least one optical fiber is a multi-mode fiber (claim 9).
However, a person in the art when selecting the optical fiber of the above combination would know that they could select either a single-mode or multi-mode fiber, each with its own benefits (for example, see paragraphs 16-17 of Franz and paragraph 42 of Kannaka).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the at least one optical fiber is a single-mode – in order to have a more compact device – or such that the at least one optical fiber is a multi-mode fiber, in order to be able to have more light propagating through the fiber at one time (see paragraphs 16-17 of Franz and paragraph 42 of Kannaka).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshizumi and Corey as applied to claim 1 above, and further in view of Lehmann (US 20070046935 A1)
Regarding claim 10, the above combination doesn’t explicitly teach the optical system includes a graded-index lens that is fixed to the end of the at least one optical fiber.
Like the above combination (and like the instant application), Lehmann is also directed to an optical measuring device that comprises an optical fiber and teaches the optical system includes a graded-index lens that is fixed to the end of the at least one optical fiber (paragraphs 12 and 46).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the above combination such that the optical system includes a graded-index lens that is fixed to the end of the at least one optical fiber in order to achieve a compact device with high-precision control over the optical characteristics of the beam by using a lens that can be made very small with high precision (e.g. see paragraphs 12 and 46 of Lehmann).
Additional Prior Art
US 5222304 A reads, “A fibre optic 30 is mounted on cover 13 by a suitable element 31 and the end of fibre optic 30 is exposed to mirror 42 through a window 32 in cover 13.” (column 2, lines 50-55) “Light from the fibre optic end 33 is directed along the above-mentioned undeflected longitudinal, neutral, axis towards the mirror 42 for incidence thereon. In the undeflected position of the stylus the light from fibre optic end 33 is reflected back to the fibre optic end 33 and returns along the fibre optic. By suitable techniques well-known in the art, such as beam-splitting, the light reflected from the mirror can be compared with the light incident thereon in suitable optoelectronic means or like comparator. As the stylus is deflected from the neutral axis the part-spherical portion 43 turns about its centre of curvature by moving over the balls 50, being constrained against the balls by the constraining means 20. The mirror moves with portion 43 and the light reflected by the mirror is directed away from fibre optic end 33. The amount of reflected light returning along the fibre optic is reduced and by suitable means a signal indicating that a reduction has occurred is produced by the comparator. When the cause of deflection is removed the constraining means such as resilient flexible element 20 restores the stylus towards the undeflected position.” (column 3, lines 10-35)
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US 5333388 A reads, “(7) A convenient sensing arrangement is to mount a concave mirror 42 on the stylus 40 and to direct light from an optical fiber arrangement 30 for reflection by the mirror 42 back to the optical fiber arrangement 30 for detection. As the light reflected back by the deflected mirror starts to move away from the fiber core the change in intensity is detected in a suitable optoelectronic circuit. A response of 10mV/micron is achieved, giving a sensitivity to displacements below one micron. In a particular arrangement the mirror and fiber are arranged so that all light reaching the mirror from the optical fiber is reflected back, apart from the losses, when the stylus is in the rest position.
US 20120320380 A1 reads, “[0016] Furthermore, a fibre-optic test device has the advantage that the measuring head can be positioned at a distance from an evaluation unit comprising light source, interferometer, reference arm and optical switch device for the reference arm and thus at a distance from the actual test object.”
“The advantage of this fibre-optic test device is a relatively small measuring head 7” (paragraph 56).
US 20070153296 A1 reads, “[0022] Use of an optical fiber also has the advantage however that optoelectronic components, such as a light-emitting diode acting as a light source or a photodiode acting as a light detector, may be arranged spatially separate from the optics or the rotating reflector, so the object-side end of the optical measuring device can be produced in a particularly compact design.”
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUFUS L PHILLIPS whose telephone number is (571)270-7021. The examiner can normally be reached M-Th, 2 -10 pm.
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/RUFUS L PHILLIPS/ Examiner, Art Unit 2877
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