Invalidity dossier
US 11054242
Shape measurement system, probe tip unit, and shape measurement method
Current assignee: Hitachi Ltd
Added 9/24/2026, 5:12:56 PM
Active provider: DeepSeek · deepseek-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative information on this patent, including any litigation activity.
Let me run additional targeted searches to check for any litigation or PTAB activity on this specific patent.
Summary — US 11,054,242 B2
Caveat on method and sources. I ran targeted web searches rather than querying the USPTO PatentCenter API or the CAFC docket system directly, so I cannot certify completeness of the litigation/PTAB check. The bibliographic and technical content below is grounded in the Google Patents full-text record you supplied (https://patents.google.com/patent/US11054242/en) plus a Justia confirmatory listing (https://patents.justia.com/patent/[11054242](/patent/11054242)). Where the retrieved document did not contain a section (notably the verbatim claim set), I say so explicitly.
Bibliographic data (from the authoritative full text)
| Field | Value |
|---|---|
| Patent number | US 11,054,242 B2 |
| Title | Shape measurement system, probe tip unit, and shape measurement method |
| Application no. | US 16/694,390 (US 2019/16694390 A) |
| Filing date | 2019-11-25 |
| Priority date | 2018-11-28 (as listed; the record indicates a JP priority) |
| Pre-grant publication | US 2020/0166327 A1, published 2020-05-28 |
| Issue/grant date | 2021-07-06 |
| Inventors | Tatsuo Hariyama; Masahiro Watanabe; Atsushi Taniguchi; Kenji Maruno |
| Original assignee / current assignee | Hitachi, Ltd. (assignment of the four inventors recorded 2021-01-05 to HITACHI, LTD.) |
| Legal status | Active; anticipated expiration 2039-11-25 |
| Related family item | A later application, US 17/338,207 (to which 11,054,242 is listed as a priority document), is identified as US 11,421,976 B2 |
| Classifications | G01B 11/2441 (interferometric contour/curvature measurement); G01B 11/002, 11/005, 11/007 (CMMs and feeler heads); G01B 11/12 (internal diameters); G01B 9/02015, 9/0205 (probe head), 9/02091 (OCT-type); G01B 2290/70 (polarization in interferometer) |
Abstract
The record as retrieved renders the abstract (and the mirroring "means for solving" passage) as follows — this is the source's wording, condensed:
A shape measurement system includes a measurement probe, a probe tip unit, and a calculation unit. The measurement probe includes a motor configured to rotate the fixed probe tip unit, a light source configured to irradiate an optical element to which the probe tip unit is locked with measurement light, and a probe control unit configured to calculate an optical path length from the probe tip unit to an object based on reflected light. The probe tip unit includes an optical element configured to irradiate the object with the measurement light, a fixing mechanism configured to fix to the measurement probe so as to be detachable and replaceable, and a cylindrical unit configured to lock the optical element and provided with the fixing mechanism. The calculation unit receives model number information or specification information of the probe tip unit as input information, receives the optical path length from the probe control unit, and calculates a three-dimensional shape of the object based on the input information and the optical path length.
Uncertainty flag: the retrieved document did not include the abstract as a separate labeled block; the passage above is the specification's summary-of-invention text that corresponds to the claimed subject matter, so treat it as a faithful paraphrase rather than certified verbatim abstract text.
Plain-language overview of the independent claims
Important limitation: the fetch of the Google Patents page you supplied stopped partway through the Figure 34 description and did not include the numbered claims. The overview below is derived from the summary-of-invention passage, which is structured one-to-one with the independent claims, and from the title, which names three statutory categories (system, article/unit, method). Claim numbering and exact claim language should be verified against the granted claim set in PatentCenter or the patent PDF.
Shape measurement system (independent claim, likely claim 1). A system combining (a) a measurement probe, (b) a removable probe tip unit, and (c) a calculation unit. The probe has a motor that rotates the tip unit, a light source that sends measurement light into an optical element locked in the tip unit, and probe-side control electronics that compute the optical path length from the tip unit to the object from the returning reflected light. The tip unit carries an optical element that emits measurement light at the object, a detachably/replaceably fixed mounting mechanism, and a cylindrical body that holds the optical element and bears the mounting mechanism. The calculation unit takes in the tip unit's model number or specification information, takes in the optical path length from the probe control unit, and computes the object's three-dimensional shape from those two inputs. In substance, the inventive hook is: the tip unit is hot-swappable and self-identifying, and the math is corrected using the tip unit's own stored specification data (e.g., the "substantial length H" and beam irradiation angle θ used in the coordinate formulas), so shape results stay accurate across different tip geometries.
Probe tip unit (independent claim, likely a mid-set claim). A standalone, removable/replaceable tip assembly for a measurement probe: the optical element that irradiates the object, the fixing mechanism that makes it detachable and replaceable relative to the probe, and the cylindrical unit that locks the optical element and carries the fixing mechanism. Key disclosed details: an information tag (barcode, QR code, character string, or RFID) on the probe side carrying model/specification information (at least the substantial length H and beam irradiation angle θ), an emission window (optionally glazed), a hollow cylindrical body (low mass, low moment of inertia, low center-of-gravity offset, reduced dust/dirt contamination of the beam path), and key-groove/key-block features that uniquely fix the mounting angle.
Shape measurement method (independent claim, likely a later claim). A method of measuring shape using the above, corresponding to the Figure 23 flowchart: read the probe tip unit's model/specification information (e.g., by imaging the information tag and looking the spec up in a database), measure the optical path length to the object while rotating the tip unit and tracking rotation angle, then compute the object coordinate from the measured optical path length together with the tip unit's substantial length and irradiation angle, and sweep in the rotation-axis direction to build up the 3D image.
The specification also discloses the underlying measurement physics (FMCW / SS-OCT, SD-OCT, and white-confocal variants), polarization- or wavelength-based optical path switching (polarization beam splitter, birefringent plate + mirror, dichroic mirror), and ten alternative detachable tip-unit configurations (1641–16410) including Wollaston-prism and quarter-wave-plate variants.
Litigation / CAFC 2026 check — negative result
I found no CAFC 2026 docket, appeal, IPR, or PGR proceeding tied to US 11,054,242, and no district-court litigation asserting it. My searches were flooded with unrelated "542" documents, which I want to flag so they are not mistaken for this patent:
- U.S. 7,341,542 B2 (IPR2017-00493) — exercise device.
- U.S. 10,492,542 (PGR2020-00071) — smoking articles.
- A "542 patent" in CAFC appeal 2023-2387 (ST1/Samsung, voice-activity earphone claims) — a different patent.
- JP 11054242 A — a 1999 Japanese publication cited as prior art in U.S. 9,760,045 (Konica Minolta).
- Also appearing: an SEC REGDEX filing ID 11054242 (Five Prime Therapeutics), a Volvo dumper part number VOE11054242, and a PubMed ID 11054242 — all coincidental numeric matches.
Confidence statement: bibliographic fields and the technical overview are high-confidence (they come from the patent's own full text). The claim-by-claim overview is medium-confidence because the granted claim text was not present in the retrieved document. The absence of CAFC/PTAB activity is a negative search result from general web search, not an authoritative docket query — a direct check of USPTO PatentCenter, the PTAB API, and PACER/CAFC dockets would be needed to state that definitively.
Generated 9/29/2026, 4:02:24 PM
Cases on file (0)
Specific litigation cases in our database that name US patent 11054242. The free-form analysis below may also discuss cases beyond this list.
No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation involving US patent 11054242.
Let me search more specifically using litigation databases and the patent number in quotes.
Let me run additional targeted searches on litigation databases and the specific patent number.
Litigation Search Results for U.S. Patent No. 11,054,242
Summary: No litigation involving U.S. Patent No. 11,054,242 was found.
Searches performed
I ran multiple searches across litigation-oriented sources and general web indexes, including:
portal.unifiedpatents.comlitigation caselist (targeted query)- CAFC / PACER / CourtListener-style docket results
- Docket-related queries combining the patent number with the title and assignee
- Queries on
US11054242,"11,054,242","US11054242", and'542 Patentin connection with the patent's title and owner
Findings
| Query type | Result |
|---|---|
| Litigation caselist (Unified Patents) | No case listing for 11,054,242 |
| CAFC / PACER / CourtListener | No case referencing 11,054,242 |
| Patent number + "litigation/lawsuit/defendant" | No relevant hits |
| Title/assignee-based queries (Hitachi shape measurement) | No relevant hits |
Every returned "match" was a false positive that I specifically did not treat as this patent:
- "JP 11054242 A" (Japanese Patent Application Publication No. H11‑54242) — an image-forming/fuser prior-art reference cited in the prosecution of US 9,760,045 B2. This is a different patent document (a Japanese published application about a toner-image fixer), not US 11,054,242. The literal string "11054242" matched, but the identifiers are unrelated.
- Assorted Hitachi-related litigations (e.g., Mondis/Hitachi patent transfers, Rambus v. Hitachi, Blue Spike v. Hitachi America, Kyocera Senco v. Hitachi at the ITC, CDN v. Hitachi, TPV/Insignia TV cases, Top Victory Electronics v. Hitachi) — these involve entirely different patents and products (TVs, 802.11 devices, gas-spring nailers, memory controllers) and do not assert U.S. 11,054,242.
- Random unrelated causes citing a "'542 Patent" (e.g., a Western District of Pennsylvania case) where the "542" number does not correspond to U.S. 11,054,242's title ("Shape measurement system, probe tip unit, and shape measurement method") or assignee (Hitachi, Ltd.).
Conclusion
Based on the available search results, there is no known litigation (district court, ITC, or Federal Circuit appeal) involving U.S. Patent No. 11,054,242. No plaintiff(s), defendant(s), jurisdiction, case number, filing date, or outcome can be reported, because no case asserting or challenging this specific patent was identified.
Caveats and recommendations
- This conclusion rests on the searches completed; it is possible a case exists that is not well-indexed in publicly searchable sources.
- Because litigation data in the sources I could reach was incomplete, I recommend a direct, authoritative check to confirm:
- USPTO Patent Center / Patent Assignment & "Notice of Lawsuits" (35 U.S.C. § 290) records for Patent No. 11,054,242.
- PACER docket search (all district courts) for "11,054,242."
- Unified Patents Portal — https://portal.unifiedpatents.com/litigation/caselist — filtered by patent number.
- Docket Navigator and RPX Insight litigation trackers.
- Note: A continuation/related patent, US 11,421,976 B2 (from the same family, priority date 2018-11-28), also appeared in the record; if your interest is in the family, that patent should be searched separately.
If litigation exists but is not publicly indexed, I cannot confirm it — I am stating only what the searches returned, and I am not able to fabricate case numbers, parties, or dates.
Generated 9/29/2026, 4:02:18 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll verify the structured block's "no proceedings" default against live sources before writing.
Two more checks — one for any PTAB filing tied to the patent family, one for assertion/litigation context.
Proceedings overview
Zero AIA trial proceedings are on file for US 11,054,242 — 0 active, 0 with claims invalidated, 0 with claims sustained, 0 settled, 0 institution denials — so the bottom-line defensive posture is not "the patent is hardened by surviving IPRs" but rather "the claims are entirely untested at the PTAB and no § 315(e)(2) estoppel has been created by anyone." That cuts both ways for a defendant: no prior petitioner has burned prior art that you could have relied on, but you also have no free kill shot and no roadmap from a prior FWD.
I ran targeted web searches to test the ODP default and found nothing on point. Two near-miss hits are worth naming so nobody mistakenly imports them into this file:
- A PGR petition against US 10,492,542 (a smoking-article patent, App. No. 16/564,902) — a different patent whose number differs by one leading digit. Not this patent.
- JP 11054242 A (a 1999 Japanese publication cited as prior art in an unrelated Konica Minolta toner-fixing patent) — a Japanese publication number, not this US patent. Per operating rules I have not auto-corrected either identifier; they are simply not US 11,054,242.
- The searches returned no district court docket, no ITC action, and no press release tying US 11,054,242 to an assertion campaign. Absence of search hits is weak evidence, not proof — see verification limits below.
No proceedings to report
There is no IPR, PGR, or CBM number to populate the per-proceeding template with. I will not fabricate one. For completeness, the fields a defendant would want (petitioner, panel, grounds, institution date, FWD claim-level disposition, settlement, appeal) are all empty because no trial exists, not because they are sealed.
Verification trail (as of 2026-09-29):
- USPTO Open Data Portal AIA-trial proceedings API: no proceedings returned for US 11,054,242 (canonical source per the structured block in this prompt).
- USPTO PTAB E2E / PTAB Decisions searches for the patent number: no hits.
- CourtListener / general web: no CAFC appeal, no PTAB decision, no litigation hit.
- Sanity check on the family: the '242 patent issued 2021-07-06 on App. No. 16/694,390, filed 2019-11-25, priority 2018-11-28, assignee Hitachi, Ltd., anticipated expiration 2039-11-25. A continuation US 11,421,976 B2 (App. No. 17/338,207, priority claim recorded 2021-06-03) sits in the family and is a separate potential assertion/validity target. No PTAB activity was found on that continuation either.
Strategic summary
Claim status: everything is UNTESTED. No claim of US 11,054,242 has been canceled, confirmed, or even addressed in an institution decision, because no petition has ever been filed. Practically, that means there is no "surviving claim set" to work from and no claim-level narrowing to exploit. Claim 1, as summarized in the patent's own Definitions section, is directed to a shape measurement system comprising a measurement probe (motor that rotates a fixed probe tip unit, light source, probe control unit computing optical path length from reflected measurement light), a probe tip unit (optical element, detachable/replaceable fixing mechanism, cylindrical unit locking the optical element), and a calculation unit that receives model-number/specification information plus the optical path length and computes a three-dimensional shape from the input information and the optical path length. Dependent claims appear to add polarization-based optical path switching, half-wave-plate/beam-splitter angle relationships, dichroic (wavelength) switching, and condensing-lens/probe-tip variants. None of that has been construed or adjudicated — treat it as claim-drafting observation, not as an outcome.
Estoppel landscape: clean slate. Because no IPR/PGR was ever instituted, § 315(e)(2) estoppel is not triggered against anyone. There is no petitioner, no privy, and no real party in interest whose grounds are foreclosed. For a defendant being asserted today, that means the full universe of § 102/§ 103 art remains available — including art that a hypothetical earlier petitioner would have been expected to raise. The § 315(b) one-year bar is likewise unmet for you: it runs from service of your complaint, so if you have just been served (or are about to be), you still control the clock. Note also the family-level point: a challenge to the '242 patent does not automatically estop you as to US 11,421,976 B2, and vice versa — but concurrent petitions across a family do invite General Plastic / § 314(a) discretionary arguments, so sequence and consolidate deliberately rather than filing a second petition after seeing how the first panel reacts.
Pattern signals: none. No repeat petitioner, no serial filings, no Patent Owner appeal activity (there is nothing to appeal), and no defensive aggregator (e.g., Unified Patents) appears anywhere in the chain. The patent has been asserted-against-approximately-never in public sources; this is a Hitachi industrial metrology asset (FMCW/SS-OCT and SD-OCT based shape measurement with a rotatable, polarization-switched probe tip), which reads as a portfolio/defensive patent or an on-machine measurement product patent rather than a monetization vehicle. That profile is exactly why no IPR exists: IPRs are petitioned when a patent is asserted, and this one has not been.
Recommended next steps
- If you have been served with a complaint asserting US 11,054,242: you have the strong position that no claim has ever been tested, and you inherit zero estoppel. The § 315(b) one-year clock starts from service, so take a validity snapshot immediately and decide between (a) an IPR on the FMCW/SS-OCT + rotatable-polarization-switching probe-tip combination, and (b) invalidity in the district court. Because there is no prior FWD to anchor claim construction, your petition should lead with the claim-construction positions you want the panel to adopt (e.g., the "optical path length from the probe tip unit to an object" and the "specification information … substantial length H / beam irradiation angle" limitations, which are computationally defined and may be narrowable).
- Before filing, confirm the negative with the primary source, since my conclusion rests on a structured feed plus search: run the patent number (and "11054242," "11,054,242," and the App. No. 16/694,390) through USPTO PTAB E2E and the PTAB Decisions search, and docket-check the family via USPTO PatentCenter. Also search CourtListener for "11,054,242" and for U.S. Patent & Trademark Office v. / Hitachi appeals in case you are dealing with a very recent filing that the ODP ingest has not yet indexed. I found no such filing, but a <60-day-old petition would plausibly not yet appear in a snapshot feed.
- If no PTAB activity exists and you are not yet in suit, treat the absence as informative but not comforting: the patent has not been battle-tested, so its claims have unknown strength and its file history has not been narrowed. A pre-suit reexamination or a proactive IPR (if you have standing concerns, coordinate with your own § 315(b) posture) is a legitimate way to create the estoppel-free record you currently lack.
- Do not cite any claim as "canceled." No claim of this patent is canceled, and no FWD exists to link to. Any demand letter or brief that characterizes US 11,054,242 as PTAB-narrowed would be unsupported — the accurate statement is: no AIA trial has ever been instituted against this patent.
Generated 9/29/2026, 4:02:27 PM
Ownership chain (1)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 2021-01-05 · Assignment
Tatsuo HARIYAMA; Masahiro WATANABE; Atsushi TANIGUCHI; Kenji MARUNOHitachi, Ltd.
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record and ownership chain for US 11,054,242.
Assignment Record Reconstruction — U.S. Patent No. 11,054,242
Application: US 16/694,390 · filed 2019-11-25 · granted 2021-07-06
Title: Shape measurement system, probe tip unit, and shape measurement method
Priority: 2018-11-28 (JP) · Anticipated expiration: 2039-11-25
Source of record checked: Google Patents "Legal Events" table for US11054242B2 (https://patents.google.com/patent/US11054242/en) and the USPTO Assignment Center (https://assignmentcenter.uspto.gov/). See verification note below.
Inventors
| Inventor | Employer at filing (determinable) |
|---|---|
| Tatsuo HARIYAMA | Hitachi, Ltd. (inferred from the recorded assignment of assignors' interest to HITACHI, LTD.) |
| Masahiro WATANABE | Hitachi, Ltd. (same) |
| Atsushi TANIGUCHI | Hitachi, Ltd. (same) |
| Kenji MARUNO | Hitachi, Ltd. (same) |
Pattern note: No unusual departure pattern is observable from the assignment record. The only recorded assignment is the inventor→Hitachi transfer itself, and the four assignors are listed collectively on a single conveyance — i.e., no inventor carved out a separate interest, and there is no recorded evidence of inventor departure, standalone inventor-side assignment, or subsequent re-assignment of the inventors' interests to a third party. The record does not support (nor refute) any "all inventors departed within 12 months" narrative; that determination would require employment data outside the assignment file.
Original assignee
Hitachi, Ltd. (HITACHI, LTD.), 6-6, Marunouchi 1-chome, Chiyoda-ku, Tokyo, Japan. Named on the face of the patent as both original assignee and current assignee.
- Primary line of business: Diversified Japanese industrial/technology conglomerate. The subject matter (FMCW / SS-OCT-based non-contact shape measurement, on-machine measurement on processing machines, multi-degree-of-freedom robot integration — see FIGS. 8–9 and ¶¶ describing the xz/y-axis moving stages and sample stage) sits in Hitachi's metrology, inspection, and industrial-systems line, not in a passive-licensing line.
- Product embodiment: The specification is written as an engineering/product disclosure (probe tip unit variants 1641–16410, detachable/replaceable tip units with information tags and RFID, servo-motor polarization drive vs. ~0.1 ms liquid-crystal switching in the third embodiment). This is consistent with a commercial instrument family rather than a paper patent, though no specific marketed model number is identified in the document text. I cannot confirm a specific shipping product from the sources consulted — flag this as not independently verified.
- Current status: Operating, publicly traded (TSE: 6501). No bankruptcy, no dissolution, no acquisition of the patent owner. Hitachi, Ltd. remains an active operating entity.
Assignment timeline
Chronological list of recorded assignments per the Legal Events record. Only one assignment appears.
- 2019-11-(exact execution date not exposed in the sources consulted) / recorded 2021-01-05 — Reel NNNNNN/NNNN (not exposed in the sources I could reach — see verification note)
- Conveyance: Assignment ("ASSIGNMENT OF ASSIGNORS' INTEREST (SEE DOCUMENT FOR DETAILS)")
- Assignor: Tatsuo HARIYAMA; Masahiro WATANABE; Atsushi TANIGUCHI; Kenji MARUNO (four joint inventors)
- Assignee: HITACHI, LTD.
- Correspondent: Not obtainable from the sources consulted. The Google Patents Legal Events entry does not surface the correspondent of record, and my searches of the assignment indexes did not return the recordation cover sheet for this application. I will not guess a correspondent name or firm. If a correspondent is needed for the repeat-player analysis, it must be read off the face of the recordation notice at the Assignment Center (see verification note).
- Context: Initial inventor assignment to the operating-company employer. Routine; not a reorg, securitization, or third-party transfer.
No other recorded assignments exist on this patent. There is no post-issuance transfer to any IP-holding LLC, no security agreement, no merger, no change of name, and no release. The only other Legal Events entries are (a) filing by Hitachi, Ltd. (2019-11-25); (b) publication of US20200166327A1 (2020-05-28); (c) the 2021-01-05 assignment above; (d) a priority claim to continuation US 17/338,207 on 2021-06-03 — this is a family/continuation event, not an assignment (US 17/338,207 later issued as US 11,421,976 B2, same priority date); and (e) grant (2021-07-06).
Verification note (important): The reel/frame number and the correspondent of record are the two data fields this analysis is specifically asked to capture, and neither is exposed in the Google Patents Legal Events feed for US11054242B2. My indexing searches for the recordation cover sheet ("11054242" / "16/694,390" + Hitachi + assignor names) returned only false positives (notably JP 11054242 A, a Japanese toner-fixer publication cited in US 9,760,045 B2 — an unrelated document, and the Georgia entity ID 11054242 for "MWS Enterprises, LLC" — unrelated). I am therefore reporting the assignment without fabricating a reel/frame or correspondent. To close this gap, pull the record at the Assignment Center by patent number: https://assignmentcenter.uspto.gov/ (search "11054242") or https://assignment.uspto.gov/patent/index.html.
Timeline diagram
timeline
title Ownership of US 11054242
2018 : JP priority date 2018-11-28
2019 : US application filed by Hitachi Ltd
2020 : Published as US20200166327A1
2021 : Inventor assignment recorded to Hitachi Ltd
: Continuation filed US17338207
: Patent granted 2021-07-06
(The 2021 row stacks three same-year events with leading colons, per the parser convention. Event text kept short and punctuation-free.)
NPE / troll-pattern signals
| # | Signal | Call | Basis |
|---|---|---|---|
| 1 | Shell-entity transfer | Not present | No assignment to any entity with an "IP / Patents / Licensing / Holdings / Ventures" suffix. The sole recorded assignee is HITACHI, LTD., an operating conglomerate. No single-purpose LLC, no registered-agent-service address. |
| 2 | Known asserter in the chain | Not present | Current assignee Hitachi, Ltd. does not match Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Round Rock, Lumen View, Spangenberg entities, or any Unified Patents / RPX high-frequency-plaintiff list on the records I checked. The only prior assignees are the four individual inventors. |
| 3 | Repeat correspondent across the chain | Unclear — cannot be scored | There is only one recorded conveyance, so recurrence is definitionally impossible to establish within this chain. The correspondent field is not exposed in the sources I reached, so I also cannot cross-check the recording attorney against NPE-assertion lists. Not a finding either way — flagged as a data gap, not as an absence of the signal. |
| 4 | Cascading transfers | Not present | One assignment total (inventors → Hitachi). Zero chained LLC-to-LLC transfers; nothing within 24 months of anything. |
| 5 | Pre-litigation transfer | Not present | The previously generated litigation section found no infringement suit naming US 11,054,242 in any district court, the ITC, or the Federal Circuit. With no suit, there is no pre-suit transfer window to test. The single assignment predates grant and is an employer onboarding transfer. |
| 6 | Bankruptcy fire-sale | Not present | No Chapter 7/11 proceeding involving Hitachi, Ltd. identified; no assignment out of an estate; no Reel/Frame evidencing a court-supervised sale. |
| 7 | Privateering | Not present | No transfer of this patent from Hitachi to any asserting entity; no SEC 8-K/10-K disclosure language identifiable for this patent; no Patent Progress / EFF coverage located. |
| 8 | Defensive aggregator (anti-NPE) | Not present | Chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. It terminates at the original operating-company inventor-assignee. |
Verdict
Insufficient data — because the chain consists of only the original inventor assignment
Justification (2–3 sentences): The sole recorded conveyance is the joint inventory assignment from Tatsuo Hariyama, Masahiro Watanabe, Atsushi Taniguchi, and Kenji Maruno to HITACHI, LTD., recorded 2021-01-05, i.e., a routine employer-onboarding transfer executed after the 2019-11-25 filing and before the 2021-07-06 grant. There is no post-issuance assignment of any kind, which by the rubric means the record is "only the original assignment" and therefore falls in the Insufficient data category — while substantively indicating that Hitachi, Ltd. still owns the patent and that no NPE, shell-entity, cascading-transfer, pre-litigation-transfer, bankruptcy, privateering, or defensive-aggregator signal is present. This is consistent with, and corroborated by, the previously generated litigation section, which found no suit asserting this patent (Google Patents Legal Events: https://patents.google.com/patent/US11054242/en).
Two caveats, stated plainly: (1) the reel/frame and correspondent of record were not retrievable from the sources I could reach, so the repeat-correspondent signal is unscorable rather than absent; and (2) no specific Hitachi product embodying the claims was confirmed. Neither gap changes the verdict, but both are resolvable with a direct record pull.
Verification link: https://assignmentcenter.uspto.gov/ (search by patent number 11054242) — also mirrored at https://assignment.uspto.gov/patent/index.html. Also cross-check the sibling US 11,421,976 B2 (continuation US 17/338,207, priority 2018-11-28) separately, since a family-level assignment would touch both.
Generated 9/29/2026, 4:02:47 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior art citations for US 11,054,242, starting with the patent's own front-page references and the "PTL 1" reference mentioned in the specification.
The initial searches returned mostly unrelated results. Let me directly target the patent's front-page citation data and the associated family member patents.
I've identified the key spec-cited prior art (PTL 1 = JP-A-2007-271601) and several same-family Hitachi references. Now let me pin down the full citation details for the primary reference and locate the front-page U.S. patent citations for US 11,054,242.
Prior Art Analysis — U.S. Patent No. 11,054,242 B2
1. Important scope note (read first)
The task asks me to "look at each patent citation for 11054242." I was able to confirm the prior-art reference that the '242 specification itself cites and discusses, but I was not able to retrieve the complete front-page "References Cited" list (the U.S. patent documents and foreign documents printed on the face of US 11,054,242) from the sources I could reach. The full-text feed provided for this analysis is truncated before the "Related Art Literature" citation line and the granted claim set.
Therefore:
- I report with high confidence the one reference the '242 disclosure expressly characterizes as prior art.
- I report separately the closely related Hitachi family art I encountered, clearly labeled as not confirmed to be on the face of '242.
- I do not fabricate a front-page citation list. Where I could not confirm something, I say so.
2. The patent under analysis
| Item | Value |
|---|---|
| Patent | US 11,054,242 B2 — "Shape measurement system, probe tip unit, and shape measurement method" |
| Assignee | Hitachi, Ltd. |
| Application | 16/694,390 (filed 2019‑11‑25) |
| Priority | 2018‑11‑28 (JP 2018‑222227) |
| Granted | 2021‑07‑06 |
| Inventors | Tatsuo Hariyama; Masahiro Watanabe; Atsushi Taniguchi; Kenji Maruno |
| Continuation | US 11,421,976 B2 (from Ser. No. 17/338,207) — same specification |
Effective prior-art date for § 102: the 2018‑11‑28 JP priority (Jan. 5, 2021 assignment record and the '976 continuation confirm the priority linkage).
Claim structure (from the '242 disclosure/abstract, not the verbatim granted claims): a shape measurement system comprising a measurement probe (motor rotating a fixed probe tip unit; light source irradiating an optical element; probe control unit computing an optical path length from reflected light), a probe tip unit (optical element; fixing mechanism detachably/replaceably fixing to the probe; cylindrical unit locking the optical element and carrying the fixing mechanism), and a calculation unit (receiving model number/specification information as input + the optical path length, and computing a 3‑D shape). Specific configuration examples (FIGS. 19–33) add mirrors, Wollaston prism, prisms, wedge prisms, quarter-wave plates, etc.
3. Confirmed cited prior art
Reference A — JP-A-2007-271601 ("PTL 1")
| Item | Detail |
|---|---|
| Full citation | Japanese Unexamined Patent Application Publication No. JP‑A‑2007‑271601 (Kokai) |
| Publication date | 2007 (Japanese Kokai publication; exact day/month not confirmed by my searches — do not treat the precise date as verified) |
| Status vs. '242 | Prior art under 35 U.S.C. § 102(a)(1) — published ~11 years before the 2018‑11‑28 priority date |
| Applicant/subject | Optical measuring instrument (probe with a movable reflection mirror in a housing) |
How the '242 specification characterizes it (Background Art): the '242 states that PTL 1 discloses that "measurement light is deflected in a direction other than the direction of the main axis 19 of the processing machine by reflecting the measurement light," enabling "three-dimensional shape measurement of the standing wall (or side wall) and the hole inner surface of the measurement object 4," including circumferential unevenness of a nut thread, a spline hole, and a key groove, with the measurement performed by selecting one of the methods of FIGS. 12 and 13 depending on groove direction (see the '242 "Definitions"/Background and the identical text in US 11,421,976).
Corroboration of the citation identity: U.S. 11,421,976 (a continuation of the same application 16/694,390) and the related Hitachi application US 2020/0041259 A1 (= US 10,900,773 B2) both expressly list "PTL 1: JP‑A‑2007‑271601" and describe the same reference in detail — a rod‑shaped shaft (36), a reflection mirror (37) held pivotably, and a holding member (35) in a housing portion (34) constituting a "direction control unit" that changes the measurement‑light travel direction (e.g., 90°) between a first position and a second position (their paragraphs [0034]–[0036]; the '242 cites paragraph 0064 of the same document). This is high‑confidence confirmation that '242's PTL 1 = JP‑A‑2007‑271601.
§ 102 anticipation assessment:
- Potentially anticipating: none clearly. JP‑A‑2007‑271601 discloses the general idea of a probe that redirects measurement light via a mirror to measure a wall/hole inner surface.
- Why it does not appear to anticipate: the '242 patentee expressly distinguishes PTL 1 on the ground that its probe-tip length and focus position are fixed and its irradiation angle is fixed, and that the mirror is moved inside the housing, which limits miniaturization. PTL 1 as described does not appear to disclose (i) a detachable/replaceable probe tip unit with a fixing mechanism and a cylindrical unit carrying that fixing mechanism, (ii) model-number/specification information input driving the 3‑D computation, or (iii) the optical-path-length-based 3‑D reconstruction based on that input.
- Practical role: closest cited art and a § 103 (obviousness) starting reference rather than a § 102 anticipation reference for the independent claims.
4. Other relevant art encountered (NOT confirmed to be on the face of '242)
These are same-field / same-assignee references that surfaced in the search and are the most likely "most relevant prior art" for a § 102 analysis of the '242 probe-tip-unit and distance-measuring concepts. I could not confirm whether any of them is printed as a citation on US 11,054,242, so treat the § 102 columns as provisional.
| Ref | Full citation | Pub./Filing | Brief description | Claims it could potentially anticipate (§ 102) |
|---|---|---|---|---|
| B | US 10,900,773 B2 (= US 2020/0041259 A1), Watanabe et al., Hitachi, Ltd. | A1 pub. 2020‑02‑06; priority JP 2017‑111271 (2017‑06‑06) & JP 2018‑046769 (2018‑03‑14) | Distance measuring device with light emitting unit, polarization state control unit, and optical path switching element selectively emitting measurement light in a plurality of directions; measurement probe tip end unit (164). | Potentially § 102(a)(2) as to '242 claims reciting the measurement probe / optical-path-switching and probe-tip structure. Same assignee (Hitachi) → for obviousness it may be disqualified as prior art under § 102(b)(2)(C)/§ 103(c) common-ownership; for anticipation it remains § 102(a)(2) art as of its 2017 effective filing date. |
| C | US 2020/0018823 A1, Hitachi, Ltd. | Publ. 2020‑01‑16 | "Distance measuring device, distance measuring method, and three‑dimensional shape measuring apparatus" — first/second polarization state control units + optical path switching element (PB splitter or birefringent plate + mirror). | Potentially § 102(a)(2)/§ 103 as to the polarization-based optical path switching features. |
| D | US 2019/0011249 A1, Hitachi, Ltd. | Publ. 2019‑01‑09 | "Three‑dimensional shape measuring apparatus, three‑dimensional shape measuring probe" — rotating measurement beam, probe 160, angle detection markers, distance computation unit. | Potentially § 102(a)(2)/§ 103 as to the rotating-probe 3‑D measurement claims. |
| E | US 9,541,380 B2, Kasai, Hariyama & Watanabe, Hitachi, Ltd. | Granted 2017‑01‑10; PCT filed 2013‑10‑02; priority JP 2012‑221808 | Shape measuring method/device: a distance sensor irradiating measurement light, a separating unit splitting it to multiple measuring points, and a selecting unit choosing which beam to irradiate. | § 102(a)(1) prior art (granted 2017). Could anticipate claims reciting splitting/selecting measurement light; not the detachable probe-tip + specification-info features. |
Note on dates: US 10,900,773 / US 2020/0041259 and US 2020/0018823 have effective filing dates (2017–2018) before the '242 priority date, so they are § 102(a)(2) art if their subject matter meets the other conditions. US 2019/0011249's priority must be verified before relying on it.
5. Bottom line
- The only prior-art reference the '242 specification itself cites and discusses is JP‑A‑2007‑271601 (PTL 1) — a 2007 Japanese Kokai for an optical measuring instrument with a pivotable mirror in the probe housing. It is unambiguously prior art (§ 102(a)(1)) but, on the '242's own characterization, it does not disclose the detachable/replaceable probe-tip unit, the cylindrical unit + fixing mechanism, or the model-number/specification-driven 3‑D computation, so it is not a strong § 102 anticipation reference and is better characterized as the § 103 springboard the patentee distinguished.
- The closest technical prior art to the '242 probe-tip/replaceable-tip and polarization-switching concepts lies in the same Hitachi family (US 10,900,773 B2 / US 2020/0041259 A1; US 2020/0018823 A1; US 2019/0011249 A1) and US 9,541,380 B2. For § 102 these are date-dependent and (for the common-owned ones) may be removed as prior art for obviousness by common ownership; for anticipation they are evaluated purely on dates and content.
- I could not verify the complete front-page "References Cited" list of US 11,054,242. To complete a rigorous § 102 citation-by-citation analysis you should pull that list directly from an authoritative source.
Recommended authoritative verification
- USPTO Patent Center / Patent Public Search for application 16/694,390 — open the "References Cited" and "Foreign Patent Documents" sections on the face of the granted patent and in the file wrapper (IDS/892 forms).
- Google Patents and Espacenet pages for US11054242B2 — their "Cited By / Similar Documents / Cited Documents" tabs.
- Verify JP‑A‑2007‑271601's exact publication date and full text, and confirm the priority date of US 2019/0011249 A1.
If you can supply the front-page "References Cited" list (or the granted claim set verbatim) for US 11,054,242, I will complete the reference-by-reference § 102 mapping precisely, including element-by-element comparisons against each independent claim.
Generated 9/29/2026, 4:02:59 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll gather prior-art context before analyzing. Let me run targeted searches.
Let me search for the specific prior-art reference (PTL 1) identified in the patent text and for similar/related prior art.
Let me pull details on the closest Hitachi-family prior art and attempt to identify PTL 1.
Obviousness Analysis — U.S. Patent No. 11,054,242 B2
"Shape Measurement System, Probe Tip Unit, and Shape Measurement Method"
35 U.S.C. § 103
0. Scope, sources, and a limitation you must read first
Two things I cannot do, and I will not paper over either.
The "Prior Art section" of the page was not retrieved. The Google Patents full text you supplied contains no labeled References Cited, Similar Documents, or Cited By table. The only prior-art reference actually identified anywhere in the authoritative text is "PTL 1" (the background section). Everything else below is prior art I located by independent search of the same technical field and the same patent family. I flag each reference's provenance and its § 102 date status explicitly so you can tell what is grounded in your page and what I supplied.
The granted claim text is still missing. The fetched document stops mid-description of FIG. 34 and contains no numbered claims. This is the same gap flagged in the earlier "Patent summary" section of this analysis — no contradiction, the gap persists. Consequently this is a claim-concept-level § 103 analysis keyed to the summary-of-invention passage, which is drafted one-to-one with the independent claims. Do not treat the element labeling below as verbatim claim language.
I also flag one date/framing inconsistency between the earlier sections and this task: the earlier sections were written against a "2026" litigation check; this task specifies April 26, 2026 as the current date. Not material to § 103, but noted.
1. Governing law, critical date, and the POSITA
The '242 patent has a priority date of 2018-11-28 (listed in the record; a JP priority is indicated). It is therefore an AIA patent governed by §§ 102/103 as amended. Prior art must be publicly available before 2018-11-28 (§ 102(a)(1)), or be a U.S. patent/application publication effectively filed before 2018-11-28 (§ 102(a)(2), subject to the § 102(b)(2) exceptions).
Person having ordinary skill in the art (POSITA). A POSITA here would be a person with a bachelor's degree in mechanical, optical, or precision engineering (or equivalent) and 2–4 years' experience in non-contact optical metrology — specifically interferometric/OCT or FMCW ranging, coordinate-measuring-machine (CMM) probe heads, and machine-tool on-machine measurement. Such a person is familiar with: swept-source OCT (SS-OCT), spectral-domain OCT (SD-OCT), FMCW distance measurement, polarization beam splitters and half-wave plates, kinematic tool mounting, and coordinate-frame transformation from a rotating probe head. This is a mechanical/optical-instrumentation arts level, not a Ph.D. research level.
Claim-construction note with § 103 bite. The argument that "an irradiation angle of the measurement light emitted onto the measurement object from the probe tip unit is fixed… [so] when the wall surface… is inclined like a screw hole, the measurement accuracy may decrease" (the '242 specification's own statement of the problem) is an admission that the fixed-irradiation-angle architecture was known. Under In re Nomiya / Constant v. Advanced Micro-Devices, that passage is admitted prior art usable in any § 103 combination.
2. The prior art identified
2.1 The only reference cited in the patent text: "PTL 1"
| Field | Content (verbatim from your page) |
|---|---|
| Identity | "PTL 1" — described as "a technology related to an optical measurement instrument." I could not resolve PTL 1 to a specific publication number from the retrieved text or by search. Do not assume a number. |
| Disclosure | Para. 0064: "measurement light is deflected in a direction other than the direction of the main axis 19 of the processing machine by reflecting the measurement light, and measurement such as three-dimensional shape measurement of the standing wall… and the hole inner surface of the measurement object 4 is performed… three-dimensional measurement is performed on the circumferential unevenness of the hole like a screw thread of a nut, a spline hole… and a key groove… the measurement is performed by selecting one of the methods shown in FIGS. 12 and 13 according to the direction in which the groove is formed." |
| What it teaches | A probe mounted on a machine-tool spindle that transversely deflects measurement light to measure side walls, hole inner surfaces, threads, spline holes and key grooves, with selection between deflection modes. |
| § 102 status | Cited by the applicant; also applicant-admitted prior art. Solid § 102(a)(1) art regardless of provable date. |
This is the single most important reference in your record. It already discloses the transverse-emission concept and the "select the mode according to the groove direction" concept — i.e., variable beam geometry.
2.2 Same-family / same-assignee art located by search (Hitachi, Ltd.)
These are the strongest § 103 references because they share reference numerals with the '242 patent almost verbatim (lens system 161, rotation mechanism 162, optical path switching element 163, measurement probe tip end unit 164, polarization state control unit 165, driving device 166).
| Ref | Title / assignee | Key disclosure | § 102 date status |
|---|---|---|---|
| US 9,541,380 B2 (Kasai, Hariyama, Watanabe; Hitachi; issued 2017-01-10; WO 2014/054666) | "Shape measuring method and device" | "a distance sensor that calculates the distance to the object… by irradiating measurement light… and detecting the reflected light; a separating unit that separates the measurement light… into a plurality of measurement light rays to be irradiated onto a plurality of measuring points; and a selecting unit that selects… the measurement light to irradiate the object." | § 102(a)(1) — published well before 2018-11-28. Two of its three inventors (Hariyama, Watanabe) are inventors of the '242 patent. |
| US 10,900,773 B2 / US 2020/0041259 A1 (Watanabe et al.; Hitachi; PCT/JP2018/019625) | "Distance measuring device and three-dimensional shape measuring apparatus" | Probe 160 = lens system 161, rotation mechanism 162, optical path switching element 163, measurement probe tip end unit 164, polarization state control unit 165, driving device 166; "tip end unit 164 locks the optical path switching element 163… is, for example, a tubular shape having an opening portion… rotates about the rotation axis parallel to the measurement light"; and a FIG. 17 "measurement probe tip end unit according to a fourth embodiment." | § 102(a)(2) (effectively filed 2018-05-22 via PCT, before the 2018-11-28 priority date). Common-ownership caveat below. |
| US 2019/0011249 A1 (Hitachi; pub. 2019-01-10) | "Three-Dimensional Shape Measuring Apparatus, Three-Dimensional Shape Measuring Probe" | Measurement probe with motor 162 rotating measurement beam 300, half mirror 164, mirror 163, transparent part 165; angle detection markers 170 used so the controller "corrects a rotation angle." | § 102(a)(2) only (published after priority date; effectively filed earlier). Common-ownership caveat. |
| US 2020/0018823 A1 (Hitachi; pub. 2020-01-16) | "Distance measuring device, distance measuring method, and three-dimensional shape measuring apparatus" | Tip end unit 164 "locks the second polarization state control unit 166 and the optical path switching element 163, and passes the light emitted… in the first direction 300a or the second direction 300b"; tubular, rotatable. | § 102(a)(2). Common-ownership caveat. |
| JP 2018-205301 A (Hitachi) | "Distance measuring device and three-dimensional shape measuring device" | "A measuring probe tip provided with the optical path switching element and a condenser lens disposed in front of or behind the optical path switching element" — i.e., the FIG. 18A/18B condensing-lens configuration of the '242 fourth embodiment. | Effectively filed before; publication ~2018-12-27 (marginal — verify). |
⚠️ Threshold § 102(b)(2)(C) issue you must resolve before relying on any of § 2.2. The '773, 2019/0011249, 2020/0018823 and JP 2018-205301 references are, like the '242 patent, owned by Hitachi, Ltd. If a reference qualifies only as § 102(a)(2) art (a U.S. application publication effectively filed earlier), then under § 102(b)(2)(C) it is not prior art if, not later than the '242 effective filing date, the subject matter and the claimed invention were commonly owned. The 2021-01-05 assignment record showing Hitachi as assignee of the '242 inventors is consistent with common ownership. A § 103 rejection built on those four references alone is therefore vulnerable. By contrast, US 9,541,380 B2 qualifies under § 102(a)(1) (issued 2017-01-10) and is not subject to the common-ownership exception, because the § 102(b)(2) exceptions apply only to § 102(a)(2) art. Build the primary rejection on the '380 patent + PTL 1, and use the others as corroborating "same-problem/same-field" evidence rather than as the sole anchors.
2.3 Non-family art located by search (independent § 102(a)(1) anchors)
| Ref | Key disclosure | Relevance |
|---|---|---|
| EP 0 311 814 A1 (pub. 1989) | 3D measurement apparatus whose "detecting sensor 2 is constituted by a non-contact type detecting sensor 2a and/or a probe type detecting sensor 2b, and is detachably mounted to a Z-axis spindle 6… The mounting means is altered… depending upon whether the non-contact type… or the probe type… is to be mounted"; and "prior to measurement, an origin block… is measured… to perform an operation (the linkage of coordinate systems) for causing the coordinates of a probe 27… to correspond with the coordinates of the drive mechanism 3." | § 102(a)(1). Directly teaches detachably mounted, swappable measurement heads on a machine spindle, with a per-head coordinate-frame linkage/calibration step. |
| US 10,612,907 B2 (pub. as US 2018/… / DE family) | Tactile/optical CMM sensor; "Probe extensions 604 having different lengths can thereby be implemented"; the reference beam path optical-path distance is adapted to the measurement beam path. | Teaches interchangeable probe extensions of different lengths and optically compensating for the changed length — i.e., the "substantial length H" problem. |
| US 2018/0180400 A1 / US 10,641,598 B2 | 3D measuring device with a deflecting section comprising "first and second reflecting members" and "rotating sections configured to… rotate the first and second reflecting members"; "Wavelengths of the first and second lights may be different from each other." | Teaches motorized deflection of the measuring beam and wavelength-based channel separation. |
3. Assumed claim elements to be mapped
Because the claim text is unavailable, I map the three independent claims as structured by the summary-of-invention passage (the "means for solving" text). Treat element numbering as my construct, not the patent's.
| # | System claim (assumed cl. 1) | Tip-unit claim | Method claim |
|---|---|---|---|
| A | measurement probe + probe tip unit + calculation unit | optical element irradiating the object | read model/spec information of the tip unit |
| B | motor rotates the fixed tip unit | fixing mechanism, detachable & replaceable to the probe | measure optical path length while rotating the tip unit |
| C | light source irradiates the optical element to which the tip unit is locked | cylindrical unit locking the optical element and bearing the fixing mechanism | compute object coordinate from path length + substantial length H + beam irradiation angle θ |
| D | probe control unit computes optical path length from reflected light | (disclosed: information tag — barcode/QR/string/RFID — bearing model or spec info) | sweep along the rotation axis to build 3D image |
| E | calculation unit receives model number or specification information as input | ||
| F | calculation unit receives the optical path length | ||
| G | calculation unit computes 3D shape from E and F |
4. Combination analyses
Combination A — the core system claim (elements A–G)
Primary: US 9,541,380 B2 (Hitachi). Secondary: PTL 1. Tertiary: EP 0 311 814 A1.
Mapping.
- A (probe + tip + calculator): '380 — a distance sensor on a machine with a separating unit, a selecting unit, and a control section that "converts a measured distance… into distance information corresponding to a required coordinate system."
- B (motor rotates the locked tip unit): '380 — selection among plural beams routed to plural measurement points; PTL 1 — deflection by reflection of the measurement light relative to the machine main axis 19. Rotation of a probe head about the measurement axis is the routine mechanization of "selecting the direction."
- C (light source irradiates the optical element locked in the tip unit): '380 — the separating/selecting unit operates on the measurement light inside the probe.
- D (compute optical path length from reflected light): '380 — explicit.
- E (calculator receives model/spec info): EP 0 311 814 — "the linkage of coordinate systems" performed per-mounted-head before measurement; US 10,612,907 — different probe extension lengths with corresponding optical-path adaptation.
- F–G (compute 3D shape from E + path length): '380 control section + the elementary geometric transform of a rotated, offset emitter (see § 4.4).
Motivation to combine. (i) PTL 1 and '380 are in the identical field — optical shape measurement of walls, hole interiors, threads, splines and key grooves; (ii) PTL 1 supplies the express problem (fixed irradiation angle degrades accuracy on inclined walls such as screw holes) and the express solution direction (select the deflection mode according to the groove direction); (iii) '380 supplies the mechanism for selecting among beams; (iv) EP 0 311 814 supplies the known machine-tool practice of detachably mounting heads and re-linking coordinate systems; (v) the combination yields nothing more than the predictable result of extending a known ranging probe to a second beam direction and re-deriving the coordinate transform. Under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), a combination of known elements to yield a predictable result, where the references are in the same field and address the same design need, is obvious as a matter of law.
Strength: moderate-to-strong, keyed to whether the granted claim recites the detachable/replaceable + spec-data features as the novelty (see Combination C, which is where the real fight is).
Combination B — the "cylindrical unit locking the optical element" and the rotating-beam architecture (elements B, C)
Primary: US 9,541,380 + US 10,900,773/2020/0041259 (and/or US 2019/0011249) + PTL 1.
The '773/'259 reference is, element-for-element, the '242 probe architecture: probe 160 = lens system 161 + rotation mechanism 162 + optical path switching element 163 + measurement probe tip end unit 164 + polarization state control unit 165 + driving device 166; the tip end unit "locks the optical path switching element 163," is "a tubular shape having an opening portion" (the "cylindrical unit"), and "rotates about the rotation axis parallel to the measurement light." US 2019/0011249 supplies the motor 162 that rotates the beam plus angle detection markers 170 for rotation-angle correction.
Motivation. These are the same inventors'/assignee's own prior architecture; the motivation is the standing design need for a miniaturized, rotatable probe head capable of transverse emission, expressly recited in the '242 specification ("compared to a case where the mirror is provided at the probe tip unit 164 and the mirror is driven… a space for driving the mirror is not required in the probe tip unit 164, and a unit to be used for measurement can be efficiently formed"). Substituting a polarization-switched, statically-locked optical-path-switching element for a driven mirror is a predictable substitution of a known element for another known element performing the same function (KSR; In re Fout).
Strength: strong on the merits — but see the § 102(b)(2)(C) common-ownership defect in § 2.2. If the common-ownership exception bites, this combination collapses and you must rest Combination B on US 9,541,380 + PTL 1 alone, which is thinner on the "cylindrical unit" limitation.
Combination C — the detachable/replaceable tip unit with identification (elements E, and the tip-unit claim's tag element)
This is where the '242 patent's actual point of novelty lies: it is not the ranging physics (admitted old) and not the rotating head (its own family) — it is a hot-swappable, self-identifying tip unit whose stored specification data (H, θ) parameterizes the coordinate math.
Proposed combination:
- EP 0 311 814 A1 — detachably mounted sensor heads on a machine spindle, with per-head coordinate-system linkage before measurement.
- US 10,612,907 B2 — interchangeable probe extensions of different lengths, with the optical system adapted to the changed measurement beam path.
- US 9,541,380 B2 — the beam-selecting optical ranging probe.
- Well-known machine-tool practice — tool/holder identification tags (the '242 patent itself enumerates the alternatives: "a bar code, a QR code, a character string, and the like," or "an RFID," read by "a camera" or an "RF reader," to auto-load stored parameters).
The obviousness argument for the identification feature. Automatic parameter loading from a tag on an interchangeable component is notorious in the machine-tool art (RFID-chipped tool holders auto-loading offsets in CNC controllers) and is a textbook KSR "known technique… used to improve similar devices in the same way." The '242 patent claims no more than applying that practice: read the tag → look up H and θ → plug into the coordinate transform. The specification itself says only that this "makes it possible to prevent an error of acquiring the specification information of other probe tip unit 164" — a routine bookkeeping/error-prevention benefit, which is weak evidence of nonobviousness (In re Soni; Pfizer v. Apotex on "expected" advantages).
Counter-argument a patent owner would raise (and my assessment). The owner will argue that no prior art suggests parameterizing the three-dimensional coordinate calculation itself on tip-specific stored data, and that the specific tag + database + transform chain is a nonobvious integration. This is a credible but beatable position: US 10,612,907 already ties a changed probe-extension length to a corresponding change in the optical/reference path, and EP 0 311 814 already mandates a per-head coordinate linkage computation. Once you accept that different tip geometries produce different (H, θ) and that the coordinate math must therefore be re-parameterized, storing (H, θ) on the tip and reading it automatically is the obvious engineering implementation of a requirement both references already impose.
Strength: moderate. This is the combination most likely to be the actual battleground.
Combination D — the method claim (elements A–D of the method column)
Primary: US 9,541,380 + EP 0 311 814 + US 2019/0011249 (angle correction).
The method steps — (1) read model/spec info; (2) measure optical path length while rotating the tip unit and tracking rotation angle; (3) compute the coordinate from path length + H + θ; (4) sweep along the rotation axis — are the routine steps of operating the apparatus of Combinations A–C. US 2019/0011249's angle-detection markers disclose acquiring "an accurate 3D shape… in such a way that the control device corrects a rotation angle." The '242 specification itself states that the probe "is moved in the z direction, and at each z coordinate, the probe tip unit 164 is rotated by one rotation about the z-axis to obtain the optical path length D_raw" — i.e., the sweep is presented as conventional.
Motivation. Where the apparatus is obvious, a method claim reciting the inherent operation of that apparatus is obvious (In re King; In re Kalm). The ordering and the specific variables (H, θ) are routine optimization of a geometric transform within the ordinary skill level.
Strength: strong — subject to the same common-ownership caveat for the '1249 reference (fall back to US 9,541,380 + EP 0 311 814 and argued knowledge of rotation-angle tracking, which is unquestionably routine in CMM/scanning-probe metrology).
4.4 Why the "coordinate math" limitation (H, θ, D) adds no patentable weight
The '242 specification supplies the equations explicitly: the object coordinate is T = Op + L_o·D + R style decomposition (Formulas (3)–(11)), with D = D_raw − H, L_o = Rot(H_o, γ, Rot(N_o, θ, H_o)), and a rotation-angle-indexed beam vector. Every term is a closed-form rigid-body transform of a rotated, offset emitter:
D_raw − H— subtracting a fixed offset from a measured path length. Routine. US 10,612,907 already compensates for a changed extension length.L_o = Rot(...)— rotating a unit vector about known axes. Textbook.R = r·Rot(N_o, φ, H_o)— expressing an eccentrically-mounted emitter. Textbook.
A POSITA asked to compute the 3D coordinate of a point illuminated by a beam emitted from a known point at a known angle from a known origin would write these equations as a matter of course. Mathematical expression of a known physical relationship, without more, is not patentable subject matter and adds no obviousness-defeating weight (Parker v. Flook; Gottschalk v. Benson; In re Grams). This is why the information tag / specification-information limitation is doing all the work in the claim set, and why it must be attacked head-on by Combination C.
5. Motivation-to-combine summary (the KSR factors)
| KSR factor | Evidence in this record |
|---|---|
| Same field of endeavor | All references are optical/non-contact shape measurement on machine tools or CMMs. |
| Same problem, expressly stated | PTL 1 + the '242 background: fixed irradiation angle → poor accuracy on inclined walls / screw holes / grooves. |
| Reasonable expectation of success | Beams are freely selectable in '380; heads are freely swappable in EP 0 311 814; lengths are freely variable in '907. Nothing in the combination is unpredictable — it is mechanical/optical assembly plus arithmetic. |
| Known technique to improve a similar device | Tag-based auto-loading of tool parameters; per-head coordinate linkage; rotation-angle correction markers. |
| Design incentives / market pressure | The '242 specification states the incentive itself: replace "only the probe tip unit 164 instead of repairing the entire measurement probe 160" when damaged; select tip length "according to the depth of the hole." |
| Teaching away? | None found. No reference disparages interchangeable, self-identifying, or parameter-corrected tips. |
| Predictable result | Accurate 3D coordinates across different tip geometries — the expected, not an unexpected, outcome. |
6. Secondary considerations (objective indicia)
No evidence of unexpected results, long-felt but unmet need, failure of others, industry praise, or commercial success was found in this record, and none is apparent from the specification. The specification's stated benefits (miniaturization, low moment of inertia, reduced dust contamination, easy replacement, measurement-time reduction) are design-choice consequences of the selected architecture, not results that would surprise a POSITA. Absent a nexus and evidence, secondary considerations do not rebut the prima facie case (In re Huang; In re GPAC).
Notably, the '242 patent has no litigation or PTAB history (per the earlier "Litigation summary" section of this analysis — a negative search result, not an authoritative docket query), so there is no adjudicated record of validity to weigh.
7. Conclusion
| Claim (assumed) | Strongest combination | Assessment |
|---|---|---|
| Shape measurement system | US 9,541,380 + PTL 1 + EP 0 311 814 (+ US 10,900,773 / US 2019/0011249 as corroboration) | Obvious if the "detachable/self-identifying tip" limitation is met by EP 0 311 814 + tag practice; moderately strong rejection overall. |
| Probe tip unit | US 10,900,773 / US 2020/0041259 (tubular tip end unit locking the optical path switching element) + EP 0 311 814 (detachable mounting) + US 10,612,907 (variable extension length) + tag practice | Obvious, but the '773/'259 anchor is exposed to the § 102(b)(2)(C) common-ownership exception; fall back to US 9,541,380 + EP 0 311 814. |
| Shape measurement method | US 9,541,380 + US 2019/0011249 (rotation-angle correction) + routine geometric transform | Obvious — inherent operation of an obvious apparatus plus routine optimization. |
Bottom line. The '242 patent's ranging physics (FMCW/SS-OCT/SD-OCT/white-confocal) is admitted old; its rotating, polarisation-switched probe head is its own assignee's earlier work; and its coordinate mathematics is closed-form geometry. The only limitation with any nonobviousness potential is reading tip-specific specification information and using it to parameterize the coordinate transform — and that is squarely met by the combination of detachable-head coordinate linkage (EP 0 311 814) + length-change compensation (US 10,612,907) + well-known tag-based parameter loading, motivated by the problem PTL 1 itself identifies.
8. Explicit confidence and verification flags
- Claim text unavailable. All element mapping is inferred from the summary-of-invention passage. Verify the granted claims in USPTO PatentCenter or the patent PDF before filing any office action or invalidity contention. Element letters used above are mine, not the patent's.
- PTL 1 is unresolved to a publication number. The retrieved text identifies it only as "PTL 1"; the paragraph-0064 quotation is verbatim from your page. Do not cite PTL 1 by number.
- § 102(b)(2)(C) common-ownership exposure is a live risk for US 10,900,773 B2/US 2020/0041259 A1, US 2019/0011249 A1, US 2020/0018823 A1 and JP 2018-205301 A. Anchor any rejection on US 9,541,380 B2 and the § 102(a)(1) references.
- Publication dates for US 2019/0011249 A1 (2019-01-10) and US 2020/0041259 A1 (2020-02-06) fall after the 2018-11-28 priority date; they can only be § 102(a)(2) art. Their effective filing dates must be confirmed on the face of the documents.
- JP 2018-205301 A's publication date (~2018-12-27) is close to or after the critical date — verify.
- The Google Patents "Prior Art section" (References Cited / Similar Documents / Cited By) was not present in the retrieved page. A direct fetch of those tables from PatentCenter, Global Dossier, or the patent PDF could add § 102(a)(1) references that materially strengthen these combinations — in particular a resolution of PTL 1.
Generated 9/29/2026, 4:03:33 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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