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 .
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.
Drawings
The drawings are objected to because:
Figures 1-3 are objected to for failing to comply with CFR 1.84(l, p) - character of lines, number, letters is not sufficiently dense/dark; numbers, letters are not the correct size.
Figure 4A is objected to for failing to comply with CFR 1.84 (l, m, p, q) - letters and numbers are too small and not sufficiently dense/dark; the lead line and character of “connection channel” are not sufficiently dense/dark; shading reduces legibility.
Figure 4B is objected to for failing to comply with CFR 1.84 (m, p) - characters are too small, not sufficiently dense/dark; shading reduces legibility.
Figures 6A-6C, 9 - are objected to for failing to comply with CFR 1.84 (l, m, p) - letters and numbers are too small and not sufficiently dense/dark; shading reduces legibility.
Figures 11-16, 18, 19A-D, 20 are objected to for failing to comply with CFR 1.84 (m) - shading reduces legibility.
Figure 24 is objected to for failing to comply with CFR 1.84 (l) - letters and numbers are not sufficiently dense/dark.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-7 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.
As to claim 1, the claim recites “dog-bone shaped” which a relative term which renders the claim indefinite (MPEP 2173.05(b)). The term “dog-bone shaped” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Examiner is not permitted to import limitations into the claims (MPEP 2111.01) and therefore claim 1 which references “a dog-bone shaped” fails to provide any additional structure or context of such a shape. Without context, such shape can include simple circles/ellipses since this would be the “shape” of a bone cross section. Additionally, is this a bone of a dog? A bone for a dog? Else? For purposes of compact prosecution, Examiner will consider generally most shapes to be “dog-bone shaped” since such a bones can include various overall or sub-shapes - e.g. circles, rectangles, ellipses, etc.
Claims 4-6 resolve the dog-bone shape issue by specifying the structure of the dog-bone shape.
As to claim 1, the claim recites “the flexible transparent membrane” which lacks antecedent basis (MPEP 2173.05(e)). Examiner will understand as “the
Claims 2-7 are rejected as dependent upon claim 1.
As to claim 3, the claim recites “the lens lacks significant spherical defocus or higher order aberrations” which is a relative term which renders the claim indefinite (MPEP 2173.05(b)). The term “significant defocus”/”significant…higher order aberrations” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Specifically, it is unclear what constitutes “significant” defocus/aberrations. Is this some percentage deviation from diffraction limited? Some deviation from having no (zero) defocus/aberrations? Other? Additionally, the lens changes shape/power and thus it is unclear if this is a for a particular state of the lens - e.g. plano, convex, concave, etc. For purposes of compact prosecution, Examiner will interpret such limitations implicitly met by the device of claim 1.
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.
Claims 1-3, 7 are rejected under 35 U.S.C. 102(a1) as being anticipated by Swart (US 2,836,101).
As to claim 1, Swart teaches a tunable fluidic lens comprising a fluidic housing having a dog-bone shaped opening to a fluidic chamber (Swart Fig. 1 - 14, 11, 18; col. 1:64-72; Fig. 6 - see below), and a transparent membrane covering said dog-bone shaped opening (Swart Fig. 1 - 12; col. 1:64-70);
wherein a power of the fluidic lens is based on a deformation of the flexible transparent membrane (Swart Fig. 2 - 12, dotted lines; col. 2:1-25) due to a pressure difference between the fluidic chamber and the flexible transparent membrane (Swart Fig. 2 - 12; col. 2:1-25).
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As to claim 2, Swart teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Swart teaches there is a difference in refractive index between a fluid inside the chamber and a fluid on the other side of the flexible transparent membrane (Swart Fig. 2; col. 2:1-5 - outside = air, inside = water).
As to claim 3 (as understood), Swart teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Swart further teaches the lens lacks significant spherical defocus or higher order aberrations (Swart Fig. 2; col. 2:15-25; col. 2:65-72; col. 3:1-20 - as discussed, the lens provides no power and thus no defocus/aberrations when unpressurized).
As to claim 7, Swart teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Swart further teaches a fluidic pump configured to change a fluid pressure within the fluidic chamber (Swart Fig. 1 - 20; Fig. 2 - 22; Fig. 6 - 47; col. 2:1-5).
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,703,617 (herein US 617). Although the claims at issue are not identical, they are not patentably distinct from each other because:
As to claim 1, US 617 claim 1 recites:
Instant Applicant Claim Language
Corresponding US 617 Claim
A tunable cylindrical fluidic lens comprising a fluidic housing having a dog-bone shaped opening to a fluidic chamber
Claim 1
A transparent membrane covering said dog-bone shaped opening
Claim 1
a power of the cylindrical fluidic lens is based on a deformation of the flexible transparent membrane due to a pressure difference between the fluidic chamber and the flexible transparent membrane
Claim 1
As to claims 2-6, US 617 claims 1-4 recite substantially similar subject matter.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US 617 in view of Swart (cited above).
As to claim 7, US 617 claim 1 recites all the limitations of instant claim 1, but doesn’t specify a fluidic pump configured to change a fluid pressure within the fluidic chamber. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide such pump since, as taught by Swart, such pumps allow for changing the pressure to effect focal length change (Swart Fig. 1 - 20; Fig. 2 - 22; Fig. 6 - 47; col. 2:1-5).
Claims 1, 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,196,982 (US 982). Although the claims at issue are not identical, they are not patentably distinct from each other because
As to claim 1, US 982 claim 1 recites:
Instant Applicant Claim Language
Corresponding US 982 Claim
A tunable cylindrical fluidic lens comprising a fluidic housing having a dog-bone shaped opening to a fluidic chamber
Claim 1
A transparent membrane covering said dog-bone shaped opening
Claim 1
a power of the cylindrical fluidic lens is based on a deformation of the flexible transparent membrane due to a pressure difference between the fluidic chamber and the flexible transparent membrane
Claim 1
As to claim 4, US 982 claim 1 recites substantially similar subject matter.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of US 982 in view of Swart (cited above).
As to claim 7, US 982 claim 1 recites all the limitations of instant claim 1, but doesn’t specify a fluidic pump configured to change a fluid pressure within the fluidic chamber. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide such pump since, as taught by Swart, such pumps allow for changing the pressure to effect focal length change (Swart Fig. 1 - 20; Fig. 2 - 22; Fig. 6 - 47; col. 2:1-5).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
NPL Documents: Cited for showing similar structures as claimed and inventors’ prior work:
Sturmer et al. (Cylindrical lens with integrated piezo actuation for focal length tuning and lateral scanning)1
Ozgur et al. (Parametric dog-bone-shaped tunable cylindrical fluidic lens)2
Patent Documents: Cited for showing similar structures as claimed and disclosed - e.g. fluid pumps, elongated cylindrical chambers, multiple fluids, membrane architecture:
Fulton (GB 6534); Gun (GB 101260); Stevens et al. (US 10,866,432); Berge (US 7,864,440); Wang et al. (US 7,813,047); Campbell (US 7,413,306); Task (US 5,973,852); Wu (US 5,233,470); De Luca (US 3,161,718); Luce (US 2,051,791); Peyman et al. (US 2016/0070038); Chou et al. (US 2010/0142059); Ojala (US 2007/0195424).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 July 27, 2026
1 M. Stürmer, A. Schatz and U. Wallrabe, "Cylindrical lens with integrated piezo actuation for focal length tuning and lateral scanning," 2014 IEEE 27th International Conference on Micro Electro Mechanical Systems (MEMS), 2014, pp. 1171-1174, doi: 10.1109/MEMSYS.2014.6765855
2 Erol Ozgur, Daniel Reetz, Farhad Akhoundi, Nicholas O’Brien, Jaclyn Wycoff, Ram Voorakaranam, Pierre-Alexandre Blanche, Lloyd LaComb, Chen Liang, Gholam Peyman, and N. Peyghambarian, "Parametric dog-bone-shaped tunable cylindrical fluidic lens," Appl. Opt. 60, 4755-4761 (2021)
Prosecution Insights