Prosecution Insights
Last updated: October 02, 2026
Application No. 19/139,464

ENCODER APPARATUS

Non-Final OA §103
Filed
Jun 16, 2025
Priority
Dec 20, 2022 — EU 22275164.6 +4 more
Examiner
WILLIAMS, DON J
Art Unit
2878
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Renishaw PLC
OA Round
1 (Non-Final)
84%
Grant Probability
Favorable
1-2
OA Rounds
1y 5m
Est. Remaining
89%
With Interview

Examiner Intelligence

Grants 84% — above average
84%
Career Allowance Rate
757 granted / 902 resolved
+15.9% vs TC avg
Moderate +5% lift
Without
With
+5.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
11 currently pending
Career history
911
Total Applications
across all art units

Statute-Specific Performance

§101
1.0%
-39.0% vs TC avg
§103
56.7%
+16.7% vs TC avg
§102
33.2%
-6.8% vs TC avg
§112
5.0%
-35.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 902 resolved cases

Office Action

§103
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 Objections In clam 1, lines 5, the phrase, “a readhead comprising” should be changed to “the readhead comprising” for proper antecedent compliance. Claims 2-15 are objected to because the preamble statement should be consistent with the claim from which they are dependent and should be rewritten as such. For examining purpose, the claims will be treated as “The position measurement encoder apparatus” with all the limitations of claim 1. In claim 13, the phrase, “second-sensor” should be changed to “second sensor”. In claim 13, the phrase, “first-sensor” should be changed to “first sensor”. In claim 13, the phrase, “second-sensor filters” should be changed to “second sensor filter”. In claim 15, the phrase, “first-sensor” should be changed to “first sensor. 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. Claim(s) 1-2, 6-9, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over McAdam (US10,823,5872). As to claim 1, McAdam discloses (fig. 1, fig. 2) a position measurement encoder apparatus (2), comprising: a scale (6) comprising a series of (series of) position features (10, 12, 14) which are readable by a readhead (4), (column 5, lines 10-32), the series (series) extending along a measuring dimension (incremental positions counted from reference positions or limits or ends positions of the scale 6) defines measuring positions, (column 5, lines 45-52), and which diffract (diffract) light (light) into multiple diffraction orders (diffracted orders); (column 5, lines 42-45), the readhead (4) comprising a light source (18) for illuminating the scale (6), and at least a first sensor (22, 24), (column 6, lines 1-18) configured to detect a signal (signal) produced thereat by one or more diffraction orders (diffraction orders) produced by the scale's series (series) of position features (10, 12, 14) which can be used to determine the relative position (relative position) of the scale (6) and readhead (4), (column 6, lines 10-27) along the measuring dimension (incremental positions counted from reference positions or limits or ends positions of the scale 6), (column 5, lines 45-52). McAdam fail to explicitly disclose wherein the readhead further comprises a diffraction order encoder which encodes at least one diffraction order produced by the scale's series of position features with a different optical state to that of at least one other diffraction order produced by the scale's series of position features. However, McAdam does disclose (fig. 1, fig. 2) an encoder readhead (4) for reading a scale (6) to determine the relative position between the scale (6) and the readhead (4), (column 4, lines 26-37). McAdam also disdcloses (fig.1, fig. 2) a diffraction grating (20) wherein the light is further diffracted by the diffraction grating (20) into orders which then interfere at the incremental photodetector (22) to form a resultant field, in this case an interference fringe, (column 7, lines 45-51). Furthermore, (fig. 3) defines at least one diffraction order (+/-1st orders) produced by the scale’s (6) series of position features (series of periodic features 10, 14) with a different optical state to that of at least one other diffraction order (+/-3rd, +/-5th diffraction orders) produced by the scale’s (6) series of position features (series of periodic features 10, 14), (column 7, lines 63-column 8,lines 1-7). It would have been obvious to one of ordinary skill in the art before the effective filing date to use the diffraction grating within the readhead as taught by McAdam to encode and/or produce different diffracting orders with different optical states in order to accurately determine relative position and/or movement of the scale and readhead. As to claim 2, McAdam discloses (fig. 3) an apparatus (2) in which the diffracting grating within readhead (4) diffracts light into the 0th diffraction order (0th diffraction order) with an optical state that is different to the +/-1st diffraction order (+/-1st diffraction orders), (column 7, lines 59-column 8, lines 1-15) defines in which the diffraction order encodes the 0th diffraction order with an optical state that is different to the +/-1st diffraction order. As to claim 6, McAdam discloses (fig. 3, fig. 4) an apparatus (2) configured such that different diffraction orders (+/-1st, +/-3rd, +/-5th) of the light (light) relayed to the at least first sensor (22) converge to respective different points (modulated spots) of convergence in the optical path between the scale (6) and the at least first sensor (22), (column 7, lines 52-column 8, lines 1-15). As to claim 7, McAdam discloses (fig. 1, fig. 2) an apparatus (2) in which the points (modulated spots) of convergence are located at the conjugate plane of the light source (18) as illustrated in figure 1, and figure 2, (column 6, lines 1-35). As to claim 8, McAdam discloses (fig. 1, fig. 2) an apparatus (2) in which the diffracting grating (20) within the readhead (4) is located at (fig. 3, fig. 4) said points (modulated spots) of convergence (forming a resultant field 26, i.e. interference fringe), (column 7, lines 52-67, column 8, lines 1-15) defines diffraction order encoder is located at said points of convergence. As to claim 9, McAdam discloses (fig. 1, fig. 2) an apparatus (2) in which the first sensor (22, 24) comprises an incremental position sensor (22) configured to sense an incremental position signal (signal, output processed to provide an incremental up/down count which enables an incremental measurement of displacement), (column 8, lines 15-25). As to claim 11, McAdam discloses (fig. 1, fig. 2) an apparatus (2) further comprising a second sensor (20, 24) configured to detect a signal (signal) produced thereat by said diffraction orders (diffraction orders) from the scale (6), (column 7, lines 43-67, column 8, lines 1-25). Claim(s) 3-5, 12-15, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over McAdam (US10,823,5872) in view of Tobiason (US9,080,899B2). As to claim 3, McAdam discloses (fig. 1) an apparatus (2) comprising the light is then further diffracted by the diffraction grating (20) into orders which then interfere at the incremental photodetector (22) to form a resultant field, in this case an interference fringe, (column 7, lines 48-51). McAdam fail to disclose comprising at least partially filtering out at least one diffraction order based on its optical state so as to at least partially attenuate its influence on the production of the signal sensed by the first sensor. Tobiason discloses (fig. 22) the blocking element (2292) is configured to block any zero-order components from the first grating (2290) and the aperture element (2293) at least partially filtering out (filtering out) at least one diffraction order (any additional orders of light diffracted from the second gating (2291), (column 28, lines 27-38). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify McAdam to include at least partially filtering out at least one diffraction order based on its optical state as taught by Tobiason in order to at least partially attenuate its influence on the production of the signal sensed by the first sensor resulting in accurately determining a relative position between the readhead and the scale As to claim 4, McAdam discloses (fig. 1) an apparatus (2) comprising the light is then further diffracted by the diffraction grating (20) into orders which then interfere at the incremental photodetector (22) to form a resultant field, in this case an interference fringe, (column 7, lines 48-51). McAdam fail to disclose configured to: i) substantially filter out the 0th diffraction order such that it has substantially no influence on the production of the signal sensed by the first sensor, or ii) substantially filter out the +/-1st diffraction order such that it has substantially no influence on the production of the signal sensed by the first sensor. Tobiason discloses (fig. 22) the blocking element (2292) is configured to block any zero-order components from the first grating (2290) and the aperture element (2293) at least partially filtering out (filtering out) at least one diffraction order (any additional orders of light diffracted from the second gating (2291), (column 28, lines 27-38). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify McAdam to include at least substantially filtering out 0th diffraction order as taught by Tobiason in order to have no influence on the production of the signal sensed by the first sensor resulting in accurately determining a relative position between the readhead and the scale As to claim 5, McAdam discloses (fig. 1) an apparatus (2) in which light is diffracted by the diffraction grating (20) within readhead (4) into diffraction orders, (column 7, lines 48-51) define diffraction order encoder encodes the at least one diffraction order to that of at least one other diffraction order. McAdam fails to disclose polarization state used to encode different diffraction order to at least one other diffraction order. Tobiason discloses (fig. 16) the scale pattern (1615) reflects spatially modulated image light (1632) with a circular polarization and outputs the spatially modulated image light (1632) to the polarizing beam splitter (1677) with a linear polarization, (column 23, lines 11-20) to define polarization state used to encode the diffraction order different to that of at least one other diffraction order. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify McAdam to include the polarization state as taught by Tobiason encode the diffraction order different to that of at least one other diffraction order in order to acquire a clean signal used to accurately determine a relative position between the readhead and the scale. As to claim 12, McAdam discloses (fig. 1) an apparatus (2) comprising due to a filtering effect of the optics, the readhead (4) is largely immune to a disruption to the periodicity of the periodic scale marks (14) wherein the interference fringe detected by the incremental detector (22) is not affected, (column 8, lines 46-51). McAdam fails to disclose a first sensor filter configured to filter light based on its optical state before it falls on the first sensor. Tobiason discloses (fig. 22) the blocking element (2292) is configured to block any zero-order components from the first grating (2290) and the aperture element (2293) at least partially filtering out (filtering out) at least one diffraction order (any additional orders of light diffracted from the second gating (2291), (column 28, lines 27-38). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify McAdam to use the blocking element and/or the aperture element as taught by Tobiason as a first sensor filter configured to filter light based on its optical state before it falls on the first senor resulting in accurately determining a relative position between the readhead and the scale As to claim 13, McAdam discloses (fig. 1) an apparatus (2) comprising due to a filtering effect of the optics, the readhead (4) is largely immune to a disruption to the periodicity of the periodic scale marks (14) wherein the interference fringe detected by the incremental detector (22) is not affected, (column 8, lines 46-51). McAdam fail to disclose comprising a second sensor filter configured to filter light based on its optical state before it falls on the second sensor, the first sensor filter and second sensor filter being configured to filter light differently to each other. Tobiason discloses (fig. 22) the blocking element (2292) is configured to block any zero-order components from the first grating (2290) and the aperture element (2293) at least partially filtering out (filtering out) at least one diffraction order (any additional orders of light diffracted from the second gating (2291), (column 28, lines 27-38). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify McAdam to use the blocking element and/or the aperture element as taught by Tobiason as a second sensor filter configured to filter light based on its optical state before it falls on the second sensor, the first sensor filter and second sensor filter being configured to filter light differently to each other resulting in accurately determining a relative position between the readhead and the scale. As to claim 14, McAdam discloses (fig. 1) an apparatus (2) comprising the light diffracted by the diffraction grating (20) into orders which then interfere at the incremental photodetector (22) to form a resultant field, (column 7,lines 48-51). McAdam fail to disclose in which said optical state comprises a state of polarization. Tobiason discloses (fig. 16) the scale pattern (1615) reflects spatially modulated image light (1632) with a circular polarization and outputs the spatially modulated image light (1632) to the polarizing beam splitter (1677) with a linear polarization, (column 23, lines 11-20) to define said optical state comprises a state of polarization. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify McAdam to include the modulated polarization image light as taught by Tobiason as an optical state comprises a state of polarization in order to acquire a clean signal used to accurately determine a relative position between the readhead and the scale. As to claim 15, McAdam discloses (fig. 1) an apparatus (2) comprising due to a filtering effect of the optics, the readhead (4) is largely immune to a disruption to the periodicity of the periodic scale marks (14) wherein the interference fringe detected by the incremental detector (22) is not affected, (column 8, lines 46-51). McAdam fail to explicitly disclose the first sensor filter and/or the second sensor filter comprise a polarizing filter. Tobiason discloses (fig. 16) a polarizer filter (1676), (column 23, lines 5-7). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify McAdam to include the polarizer taught by Tobiason as the first sensor filter in order to permit the passing of specific and/or selective wavelengths while blocking unwanted light resulting in accurately determining a relative position between the readhead and the scale. As to claim 17, McAdam discloses (fig. 1, fig. 2) a position measurement encoder apparatus (2), comprising: a scale (6) comprising a series of periodic features (series of periodic scale marks 10, 12, 14) configured to diffract (diffract) light (light) into multiple diffraction orders (diffracted orders), (column 5, lines 28-45), including (fig. 3) a 0th diffraction order (0 diffracted order), (column 7, lines 59-67, column 8,lines 1-15); (fig. 1, fig. 2) a readhead (4) comprising a light source (18) for illuminating the scale (6), (column 6, lines 1-35), and at least one sensor (22, 24) configured to detect a resultant field (26) which changes with relative motion (relative movement) of the scale (6) and readhead (4), the resultant field (26) being produced by the diffraction orders (diffraction orders) from the scale (6) at the at least one sensor (22, 24), (column 8, lines 15-25). McAdam fail to disclose the readhead is configured such that the 0th diffraction order does not contribute to the production of the resultant field at the at least one sensor. Tobiason discloses (fig. 22) the blocking element (2292) is configured to block any zero-order components from the first grating (2290) and the aperture element (2293) at least partially filtering out (filtering out) at least one diffraction order (any additional orders of light diffracted from the second gating (2291), (column 28, lines 27-38). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify McAdam to use the blocking element and/or the aperture element as taught by Tobiason as a filter configured to filter and/or block 0th diffraction order such the 0th diffraction order does not contribute to the production of the resultant field at the sensor resulting in accurately determining a relative position between the readhead and the scale Allowable Subject Matter Claim 10 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art of record fail to teach either singly or in combination an apparatus configured such that diffraction orders greater than the +/-1 diffraction orders are not sensed by the at least first sensor. Claim 16 is allowed over the prior art of record. The following is an examiner’s statement of reasons for allowance: Regarding claim 16, the prior art of record fail to teach either singly or in combination a position measurement encoder apparatus comprising: the interference fringe pattern/fringe field being produced by the diffraction orders from the scale at the at least one sensor; in which the period of the fringe is M.p/2, where M is the magnification factor of the encoder's optical system, and p is the period of the scale. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON J WILLIAMS whose telephone number is (571)272-8538. The examiner can normally be reached M-F 8 a.m.-5 p.m.. 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, Georgia Epps can be reached at 571-272-2328. 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. /DON J WILLIAMS/Examiner, Art Unit 2878
Read full office action

Prosecution Timeline

Jun 16, 2025
Application Filed
Sep 23, 2026
Non-Final Rejection mailed — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12747983
OPTICAL CONCENTRATION MEASURING DEVICE AND SIGNAL PROCESSOR
1y 7m to grant Granted Sep 29, 2026
Patent 12730002
QUANTUM-ENGINEERED SUPERCONDUCTOR METAMATERIAL DEVICES
2y 4m to grant Granted Sep 08, 2026
Patent 12730060
SYSTEMS AND METHODS FOR PHOTOACOUSTIC MICROSCOPY
2y 2m to grant Granted Sep 08, 2026
Patent 12723919
LIGHT DETECTION DEVICE
2y 1m to grant Granted Sep 01, 2026
Patent 12716708
DISPLACEMENT ESTIMATION APPARATUS, DISPLACEMENT ESTIMATION METHOD, AND COMPUTER-READABLE RECORDING MEDIUM
2y 1m to grant Granted Aug 25, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

1-2
Expected OA Rounds
84%
Grant Probability
89%
With Interview (+5.1%)
2y 8m (~1y 5m remaining)
Median Time to Grant
Low
PTA Risk
Based on 902 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month