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 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.
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.
Claim limitation “a component for the application of an artificial ageing process to the layer system” in Claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. In particular, no structure for a device to perform the function or acts that the device performs to accomplish the function are present in the written description. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim limitation “an optical measurement device for determining a spectrally resolved actual measurement curve of the layer system” in Claims 1 and 2 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. In particular, no structure for a device to perform the function or acts that the device performs to accomplish the function are present in the written description. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 4-14 all depend from Claim 2 without correcting the deficiency and are similarly held as indefinite. Applicant has the same recourse as described above.
Claim limitation “an input device for inputting and controlling the simulation computer and/or the one or more coating installations” in Claim 2 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. In particular, no structure for a device to perform the function or acts that the device performs to accomplish the function are present in the written description. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claims 4-14 all depend from Claim 2 without correcting the deficiency and are similarly held as indefinite. Applicant has the same recourse as described above.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1, 2, and 3, all independent, separately recite the steps of: (1) detecting a spectral measurement curve, (2) associating values of the spectral measurement curve with target values, (3) simulating a simulation actual measurement curve, (4) simulating a simulated target measurement curve, and (5) providing final simulation target data.
The step (1) for detecting a spectral measurement curve is merely is merely data gathering, which according to MPEP 2106.05(g) is insignificant extra-solution activity as inputs for the following abstract idea steps, See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering). The courts have determined that measuring data to be used as inputs for equations or manipulations is not significant activity for this analysis, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989) or to make diagnoses (determining the level of a biomarker in blood), Mayo, 566 U.S. at 79, 101 USPQ2d at 1968. See also PerkinElmer, Inc. v. Intema Ltd., 496 Fed. App'x 65, 73, 105 USPQ2d 1960, 1966 (Fed. Cir. 2012).
The steps (2-5) limitations of associating values, generating simulations of values and generically providing data so determined, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. Nothing in the claim elements preclude the step from practically being performed in the mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Additionally, while the step 5 limitation of generically “providing the final simulation target data set” does not require any particular structure or way to do so, so, as discussed above, it can be an abstract mental step itself, however, even if the claim was interpreted to require some particular structure outside of mental activity, it would still be recognized as insignificant post-solution activity to output data, according to MPEP 2106.05(g): “An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.”
This judicial exception is not integrated into a practical application. In particular, the requirement for “…produce a layer system for optical elements…” and “…produce an optical element by coating a further layer system on a substrate…” is at most specifying a particular technological environment or field of use for the judicial exception. According to MPEP 2106.05(g), As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. For example, limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid was determined non-eligible because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016).
Claims 1-12 are not patent eligible.
Claims 13 and 14 depend upon claim 1 to further specify the details of the judicial exception, so they are also not patent eligible.
Claim 13 further appends well-understood, routine, conventional activities previously known to the industry, to the judicial exception MPEP 2106.05(d); Claim 14 depends therefrom with particular properties. In particular, applicant states in their specification on page 2, lines 20-25, that prior art WO2016/110339A1 is the known elements that their method is applied to, which as shown in figure 4, and the English language abstract, is a layer system (claim 10), and further teaches that such interferometric reflection reducing layer systems with at least four layer packets of at least two layers with different reflective indices and optical thicknesses for that purpose (claim 8), so the claims are appending the judicial exception to these conventional activities.
Claims 13-14 are not patent eligible.
Claim Rejections - 35 USC § 102/103
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 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.
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) 1-12 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lotz (US 20150021168).
Claim 1: Lotz teaches a coating installation for the production of layer systems (PG 0023, apparatus 100 for depositing one or more layers on a flexible substrate), comprising
An optical measurement device for determining a spectrally resolved actual measurement curve of the layer system (PG 0026, measurement of at least one of reflected or transmitted light that has interacted with the substrate and the deposited layers; PG 0024, detection arrangement 140 e.g. spectrometer);
Wherein the coating installation is configured to:
Produce a layer system for optical elements, the produced layer system consisting of one or more single layers, each with an installation actual layer thickness of the respective single layer (PG 0023; PG 0022 for recognition of optical layers which serve as optical elements; PG 0026; analysis and control of deposition to produce desired layers), wherein the one or more single layers are produced according to an installation data set of the coating installation, wherein the installation data set comprises at least the installation actual layer thickness of the respective single layer of the one or more single layers (PG 0028, setpoint parameters inclusive of desired thicknesses of deposited layers),
Perform an automatic process (PG 0026-0027, automated feedback control process) including
(i) Detecting at least one spectral measurement curve with ordinate values and abscissa values (see figure 10 for x and y values of the spectral measurement curve) as actual measurement curve on an actual layer system which consists of one or more single layers, each with an installation actual thickness of the respective single layer, wherein the one or more single layers are produced according to an installation data set of the at least one coating installation, wherein the installation data set comprises at least the installation actual layer thickness of the respective single layer of the one or more single layers [0050-0052];
(ii) Associating the actual measurement curve of the actual layer system according to at least one association criterion, in particular for significant spectral points of the actual measurement curve to a target measurement curve of a target data set with ordinate values and abscissa values, which is based on a target data set layer system formed from one or more single layers, wherein the target data set comprises at least one known target layer thickness of the respective single layer, of the one or more single layers [0052];
(iii) Generating a simulation actual measurement curve according to an iterative method by varying at least one simulation actual layer thickness of the respective single layer in at least one spectral interval of the actual measurement curve and obtaining a final simulation actual data set with at least one final simulation actual layer thickness of the respective single layer of the one or more single layers by which the actual measurement curve is at least being approximated in the simulation actual measurement curve until a termination criterion is reached (the desired thickness being reached);
(iv) Generating a simulation target measurement curve according to an iterative method by varying at least the simulation target layer thickness of the respective single layer in at least one spectral interval of the target measurement curve and obtaining a final simulation target data set with at least one final simulation target layer thickness of the respective single layer of the one or more single layers, by which the target measurement curve is at least being approximated in the simulation target measurement curve until a termination criterion is reached. The optical differences between the actual measurement curve and the simulation actual measurement curve are correlated using a figure of merit (e.g. M1) and the data is iteratively fed back into the system to optimize the values, which as discussed in the 112 2nd rejection above is interpreted to read upon the “calculation of the simulation target measurement curve back to the target measurement curve”; and
(v) Sending the final simulation target data set to the coating installation as new installation data set [0053-0056]; and
Produce an optical element by coating a further layer system on a substrate with at least one correction actual layer thickness as new installation actual layer thickness of the respective single layer, which are being determined from the final simulation target layer thickness of the respective single layer of the one or more single layers with the final simulation target data set [0053-0056].
In the case that any differences are shown between the process disclosed by Lotz and the claims, such that Lotz does not clearly anticipate it, such differences are obvious given the teaching of Lotz.
Claim 2: Lotz teaches a system of coating installation for the production of layer systems (PG 0023, apparatus 100 for depositing one or more layers on a flexible substrate), comprising at least
One or more coating installations for coating a system with a layer system (PG 0023);
One or more control computers for controlling at least one coating installation and for communicating with a simulation computer (PG 0031, controller 180);
An optical measurement device for determining a spectrally resolved actual measurement curve of the layer system (PG 0026, measurement of at least one of reflected or transmitted light that has interacted with the substrate and the deposited layers; PG 0024, detection arrangement 140 e.g. spectrometer);
A simulation computer on which simulation software for optical calculation and optimization of the layer system is installed, and which communicates with the control computer of the coating installation (PG 0029, evaluation unit 170);
A database for storing installation datasets (PG 0028; the evaluation unit 170 has a set of setpoint parameters; this dataset storage necessitates a database storage functionality); and
An input device for inputting and controlling the simulation computer and/or the one or more coating installations (PG 0029, evaluation unit which may run simulations can have data input into it which requires an input device),
Wherein the coating installation is configured to:
Produce a layer system for optical elements, the produced layer system consisting of one or more single layers, each with an installation actual layer thickness of the respective single layer (PG 0023; PG 0022 for recognition of optical layers which serve as optical elements; PG 0026; analysis and control of deposition to produce desired layers), wherein the one or more single layers are produced according to an installation data set of the coating installation, wherein the installation data set comprises at least the installation actual layer thickness of the respective single layer of the one or more single layers (PG 0028, setpoint parameters inclusive of desired thicknesses of deposited layers),
Perform an automatic process (PG 0026-0027, automated feedback control process) including
(i) Detecting at least one spectral measurement curve with ordinate values and abscissa values (see figure 10 for x and y values of the spectral measurement curve) as actual measurement curve on an actual layer system which consists of one or more single layers, each with an installation actual thickness of the respective single layer, wherein the one or more single layers are produced according to an installation data set of the at least one coating installation, wherein the installation data set comprises at least the installation actual layer thickness of the respective single layer of the one or more single layers [0050-0052];
(ii) Associating the actual measurement curve of the actual layer system according to at least one association criterion, in particular for significant spectral points of the actual measurement curve to a target measurement curve of a target data set with ordinate values and abscissa values, which is based on a target data set layer system formed from one or more single layers, wherein the target data set comprises at least one known target layer thickness of the respective single layer, of the one or more single layers [0052];
(iii) Generating a simulation actual measurement curve according to an iterative method by varying at least one simulation actual layer thickness of the respective single layer in at least one spectral interval of the actual measurement curve and obtaining a final simulation actual data set with at least one final simulation actual layer thickness of the respective single layer of the one or more single layers by which the actual measurement curve is at least being approximated in the simulation actual measurement curve until a termination criterion is reached (the desired thickness being reached);
(iv) Generating a simulation target measurement curve according to an iterative method by varying at least the simulation target layer thickness of the respective single layer in at least one spectral interval of the target measurement curve and obtaining a final simulation target data set with at least one final simulation target layer thickness of the respective single layer of the one or more single layers, by which the target measurement curve is at least being approximated in the simulation target measurement curve until a termination criterion is reached. The optical differences between the actual measurement curve and the simulation actual measurement curve are correlated using a figure of merit (e.g. M1) and the data is iteratively fed back into the system to optimize the values, which as discussed in the 112 2nd rejection above is interpreted to read upon the “calculation of the simulation target measurement curve back to the target measurement curve”; and
(v) Sending the final simulation target data set to the coating installation as new installation data set [0053-0056]; and
Produce an optical element by coating a further layer system on a substrate with at least one correction actual layer thickness as new installation actual layer thickness of the respective single layer, which are being determined from the final simulation target layer thickness of the respective single layer of the one or more single layers with the final simulation target data set [0053-0056].
In the case that any differences are shown between the process disclosed by Lotz and the claims, such that Lotz does not clearly anticipate it, such differences are obvious given the teaching of Lotz.
Claim 4: Lotz further teaches terminating the iterative process when a stable result is found (not improving the fit) [0055].
Claim 5: Lotz further teaches using the target thickness as the starting value for the simulation actual layer thickness [0050].
Claim 6: as shown in figure 10, Lotz further teaches that the abscissa values are scaled as a percentage of their total reflection rather than as the total detected light for both the those scaled values are what is used to compare the values.
Claim 7: Lotz further teaches using the target thickness as the starting value for the simulation actual layer thickness [0050].
Claim 8: as shown in figure 10, Lotz further teaches that the abscissa values are scaled as a percentage of their total reflection rather than as the total detected light for both the those scaled values are what is used to compare the values.
Claim 9: as shown in figure 10, Lotz further teaches that the abscissa values are scaled as a percentage of their total reflection rather than as the total detected light for both the those scaled values are what is used to compare the values.
Claim 10: Lotz further teaches comparing the measured thicknesses to the target thicknesses (percentage change) which can be considered a quotient of these values [0056].
Claim 11: as shown in figure 9, Lotz further teaches performing such an iterative process varying the thickness of each simulated layer until the criteria are met for spectral intervals (which can be the same each time) [0052-0055].
Claim 12: as shown in figure 9, Lotz teaches performing such an iterative process varying the thickness of each simulated layer until the criteria are met for spectral intervals (which can be the same each time) [0052-0055].
Claim Rejections - 35 USC § 103
The relevant provisions of 35 USC 103 are cited above.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lotz.
Claim 3 – Lotz does not expressly disclose a non-transitory data processing system commensurate with Claim 3. However, storing hardware and software execution instructions on non-transitory data processing devices is well within the skill and knowledge of a person having ordinary skill in the art; therefore, choosing to store hardware and software execution protocols commensurate with Claim 3 is held as prima facie obvious. The details of the particular protocols to be stored are presented here mutatis mutandis as discussed in the rejection of Claim 1.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lotz as applied to claim 2 above, and further in view of Thornhill (EP 3346023).
Claim 13: Lotz teaches a method that is useful for the deposition of optical multilayer systems [0001], but it does not specifically teach an optical device with the required structure. However, Thornhill is also directed towards depositing optical multilayered films with control of the layer thicknesses (abstract), but further teaches doing so to create a reflection reducing layer system [0002], which can 9 layers, which can include four or more layer packets each with at least a first and second layer having their own optical thicknesses and indices of refraction, with a first layer having a greater index of refraction than a second layer in order to operate as the antireflective coating [0039-0040]. Thornhill further teaches the layers are designed not only for their particular thicknesses, but also to produce certain spectral performance [0048] and teaches that lightness (including Rv , chroma, and hue angles are important parameters to control for and teaches defining a layer design and adjusting an optimization of layer thicknesses until an optimized value is reached [0082-0086]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to deposit such films as claimed in the process of Lotz since such optical devices were known and their properties were designed to produce such values and since doing would produce no more than predictable results (claims 8 and 9). Thornhill specifically identifies ophthalmic lenses as a substrate for which this sort of layer system is desirable (PG 0028). Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made or filed to have modified the invention of Lotz to deposit layers on e.g. ophthalmic lenses as suggested by Thornhill as Thornhill teaches the desirability of ophthalmic lenses as substrates for layer systems analogous to those deposited by Lotz.
Claim 14: As discussed above, control of hue angles and properties thereof is known as important in the art; controlling said properties to desired values is held as prima facie obvious absent unexpected results derived from the selections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL G MILLER whose telephone number is (571)270-1861. The examiner can normally be reached M-F 9:00-5:30 EST.
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/MICHAEL G MILLER/ Primary Examiner, Art Unit 1712
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