DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1- This office action is a response to an application filed on 5/28/2025, in which claims 1-15 are currently pending. The Application is a Continuation of PCT/EP2023/081138 , filed 11/08/2023, and claims foreign priority to 10 2022 129 497.8, filed 11/08/2022.
Information Disclosure Statement
2- The submitted information disclosure statement(s) (IDS) is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is(are) being considered by the examiner.
Specification
3- The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which application may become aware in the specification.
Drawings
4- The drawings were received on 5/28/2025. These drawings are acceptable.
Claim Interpretation - 35 USC § 112
5- 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.
6- 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:
Detection unit in claim 6,
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 § 112
7- 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.
8- Claims 6 is 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 pre-AIA the applicant regards as the invention.
As to claim 6, which reads “…with a respective position of the deflection element of the detection unit…”, the underlined clauses appear to present antecedence issues.
Claim Rejections - 35 USC § 103
7- 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
8- Claims 1-15 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Daw et al. (PGPUB No. 20220341783), in view of Didomenico et al. (DE 69929086), both cited by Applicants.
As to claims 1-3, 9, 15, Daw teaches an apparatus for examining a material sample via [
an illumination device to generate the electromagnetic radiation, the illumination device comprising at least two radiation sources; (Claim 2) wherein the at least two of the radiation sources have substantially identical structures; (Claim 3) wherein the at least two of the radiation sources have different structures (¶ 32-37; source 32 with two diodes, i.e. same overall laser type, but with different wavelengths, i.e. different internal structure), radiation of which being adapted to be selectively directed at the material sample (for ex. through slots 45/47 and/or the sequential switching between the two diodes and their respective spectral outputs); and
a detection device having at least two detectors (Figs. 2-3; detectors 36/26 or 36/48) to capture an electromagnetic radiation emanating from the material sample (¶ 32-33, 36-37),
the detection device comprising a deflection element (22) via which the radiation emanating from the material sample is adapted to be selectively steered onto one of the detectors (¶ 33).
Daw does not teach expressly wherein the deflection element of the detection device comprises a mirror via which the radiation emanating from the material sample is adapted to be selectively steered onto one of the detectors, and wherein the mirror rotatable about an axis that extends substantially perpendicular to optical axes of the detectors and (Claim 15) wherein the mirror is a concave mirror; (Claim 9) wherein the deflection element of the illumination device comprises a mirror via which radiation from one of the radiation sources is selectively guided onto the material sample.
However, in a similar field of endeavor, Didomenico teaches an apparatus and method of detection of UV and IR emission from a sample (Abstract and Figs. 1-2) wherein a deflection element (9/13) of the detection device comprises a mirror (13), which can be selected with a concave or convex surface according to the geometrical needs and disposition of the detectors (See MPEP 2143 Sect. I. B-D), and via which the radiation emanating from the material sample is adapted to be selectively steered onto one of the detectors (Fig. 2), and wherein the mirror rotatable about an axis that extends substantially perpendicular to optical axes of the detectors (Fig. 2). As to claim 9, Didomenico’s mirror 9/13 suggests the use of a rotating mirror to direct the illumination light from the source to the sample in a sequential fashion to replace the rotating disk with similar selectivity results (See MPEP 2143 Sect. I. B-D).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Daw in view of Didomenico’s suggestions so that the deflection element of the detection device comprises a mirror via which the radiation emanating from the material sample is adapted to be selectively steered onto one of the detectors, and wherein the mirror rotatable about an axis that extends substantially perpendicular to optical axes of the detectors; wherein the mirror is a concave mirror; wherein the deflection element of the illumination device comprises a mirror via which radiation from one of the radiation sources is selectively guided onto the material sample, with the advantage of effectively optimizing the selectivity of the spectral measurements.
Moreover, Daw teaches:
(claim 4) wherein the at least two radiation sources are LED diodes (¶ 32).
(claim 5) wherein the illumination device comprises a rotatable disk (30) which is provided with cutouts (21, 45 and 47) and via which radiation from one of the radiation sources is adapted to be selectively steered onto the material sample (Figs. 2-4, ¶ 32-34).
(claim 6) wherein the respective angular position of the disk of the illumination device is adapted to be synchronized with a respective position of the deflection element of the detection unit (¶ 33; the use of transceiver 48 in association with slots and wheel 22 in Fig. 3).
(claim 7) wherein the illumination device comprises a deflection element via which radiation from one of the radiation sources is adapted to be selectively steered onto the material sample (Fig. 3; optical fibers in conjunction with wheel 22 used to direct light from transceiver 48).
(claim 8) wherein the deflection element of the illumination device has beam-shaping properties (¶ 33; transceiver 48 with lens).
(claim 10) wherein the deflection element is rotatable about an axis that is substantially parallel to a propagation direction of the deflected radiation (Fig. 3).
(claim 11) wherein the deflection element has an opening for the passage of electromagnetic radiation (Figs. 3-4; the openings of wheel 22).
(claim 12) wherein a light-guiding rod is arranged in the region of the opening (Fig. 3; the optical fibers care considered as light guiding rods).
(claim 13) wherein respective settings of the deflection element of the illumination device and of the deflection element of the detection unit are synchronizable (the position of the wheel slots are/can be designed to synchronize the illumination and the emission lights).
(claim 8) wherein the deflection element of the detection device has beam-shaping properties (Fig. 3; the transceiver 48 presents a lens module for the transmission and reception of light).
Relevant Prior art
US 4744667 appears relevant to the use of deflecting/reflective elements in optical measurement systems.
US 20060001739, US 11789250 appear to teach most of the elements of the claimed apparatus and its method of use but fail the claimed invention as a whole.
Conclusion
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877
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