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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 September 2025 has been entered.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 8, 11-14, and 20-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent 3,759,590 to Arnaud.
In regards to claims 1, 11 and 14, Arnaud recites an optical apparatus/method of using the optical apparatus/method of making the optical apparatus, comprising: a waveguide comprising a waveguide material (core material 35 and cladding material 36), the waveguide having (i) a plurality of optical components (30, 31, 32) embedded within the waveguide material (Column 5, Lines 40-46), and (ii) a section of the waveguide material disposed between and contacting a first optical component (30) and a second optical component (31) of the plurality of components, the waveguide configured to receive light rays at an end of the waveguide and internally redirect the light rays through at least one optical component of the plurality of optical components, wherein the light rays define a lensing period, within the waveguide material section. Although Arnaud does not expressly state wherein the light rays represent at least a portion of an image, and wherein the plurality of optical components is configured to preserve a wave front of the represented image such that the image can be reconstructed on an imagining plane from the redirected light rays, this limitation does not define any structure. The manner in which a claimed apparatus is intended to/configured to be employed does not differentiate the claimed apparatus from the prior art apparatus. An apparatus claim must be structurally distinguishable from the prior art. It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)). See MPEP § 2111.02, II and MPEP § 2114, II. Since all of the claimed structural limitations are met by the prior art, it is presumed the device is capable of operating in the claimed manner.
In regards to claim 3, Arnaud recites the plurality of optical components comprises a lens.
In regards to claim 8, Arnaud recites wherein the plurality of optical components are configured in series relative to the travelling light rays.
In regards to claims 12 and 13, although Arnaud does not expressly recite using the optical apparatus comprises performing one or more of single or multiphoton fluorescence imaging, optical coherence tomography (OCT), endoscopy, microscopic imaging, in situ drug delivery monitoring, or replacement of Graded Index (GRIN) Lenses in an application and using the optical apparatus comprises performing one or more of internal inspection of hardware, surveillance, examination of explosive devices, or microscopy for identifying fraudulent artwork, this limitation does not define any structure. The manner in which a claimed apparatus is intended to/configured to be employed does not differentiate the claimed apparatus from the prior art apparatus. An apparatus claim must be structurally distinguishable from the prior art. It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)). See MPEP § 2111.02, II and MPEP § 2114, II. Since all of the claimed structural limitations are met by the prior art, it is presumed the device is capable of operating in the claimed manner.
In regards to claim 20, Arnaud recites the optical component to be a lens.
In regards to claim 21, Arnaud recites the first optical component defines a first lensing period and the second optical component defines a second lensing period.
In regards to claim 22, Arnaud recites the first optical component has at least one of a size and a focal length that is different from the second optical component.
In regards to claim 23, Arnaud recites the plurality of optical components are embedded in a material having a lower refractive index (Column 5, Lines 40-46).
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) 2, 4-7, 9-10, 15-19, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 3,759,590 to Arnaud as applied to claims 1, 11 and 14 above.
In regards to claim 2, Arnaud fails to expressly recite the waveguide is formed from a polymeric material. However, the use of polymeric materials to form waveguides is commonly known. Therefore, it would have been obvious before the effective filing date to a person having ordinary skill in the art to choose a commercially available material such as a polymeric material to form a waveguide.
In regards to claims 4-6, although Arnaud does not expressly recite the plurality of optical components comprises a mirror, the plurality of optical components comprises an optical filter, and the plurality of optical components comprises at least two different optical components, Arnaud does teach the plurality of optical components to comprise a lens. Since Applicant claims a lens as one of the plurality of optical components as well as several alternatives and further since Applicant has not claimed any of the plurality of optical components to solve a stated problem or is for a particular purpose and it further appears any of the claimed components would allow for the apparatus to function equally as well, it would have been obvious before the effective filing date to a person having ordinary skill in the art to have chosen a mirror, filter, or at least two different optical components.
In regards to claims 7 and 19, although Arnaud does not expressly recite a polymeric material forming at least one of a refractive lens, diffractive lens and a metasurface lens, Arnaud does teach the lens to be a converging lens. Since a converging lens functions by bending and focusing light based on the principles of refraction, a converging lens is inherently a refractive lens. Additionally, polymeric materials are commonly chosen materials to form lenses for their desired manufacturing characteristic. Since polymeric lenses are readily available and commonly found in the optical art, it would have been obvious before the effective filing date to a person having ordinary skill in the art for a polymeric material to form at least one of a refractive lens, diffractive lens and a metasurface lens.
In regards to claims 9 and 10, although Arnaud does not expressly recite a type of optical components or a spacing of two or more of the plurality of optical components to be selected to correct aberration of the image, Arnaud does teach a plurality of optical components to form an image. Since choosing a known type of optical component and desired spacing would be advantageous in order to optimize the device and provide an improved image, it would have been obvious before the effective filing date to a person having ordinary skill in the art to have chosen a type of optical components or a spacing of two or more of the plurality of optical components to be selected to correct aberration of the image.
In regards to claims 15-17, although Arnaud does not expressly state making the optical apparatus comprising molding and photolithography (claim 15), lithography (claim 16) or addictive manufacturing (claim 17), Applicant has clearly claimed all three methods of forming the optical apparatus to be suitable methods, each providing the same optical apparatus device. Since Applicant has not provided any of the specific methods to solve a stated problem or is for a particular purpose and it appears any claimed method would form the same optical apparatus, it would have been obvious before the effective filing date to a person having ordinary skill in the art to have provided the method steps of molding and photolithography (claim 15), lithography (claim 16) or addictive manufacturing (claim 17).
In regards to claim 18, although Arnaud does not expressly recite stacking materials along a first direction and cutting he stack along the first direction, laminating a plurality of layers and cutting the laminated layers is a common type of method in forming stacked optical devices. It is a well-known type of method in the industry and can be manufactured with common manufacturing tools. Therefore, it would have been obvious before the effective filing date to a person having ordinary skill in the art to have stacking materials along a first direction and cutting he stack along the first direction.
In regards to claim 24, although Arnaud does not expressly recite the waveguide to further comprise at least one of a section of a liquid waveguide material and a section of a solid waveguide material, Arnaud does teach the lenses to be embedded within the core material. In order for the lenses to be embedded within the core material, the core must be formed from a material, such as a liquid or a solid, to be capable of embedding and securing the lenses within the core. Therefore, it would have been obvious before the effective filing date to a person having ordinary skill in the art for the waveguide to further comprise at least one of a section of a liquid waveguide material and a section of a solid waveguide material.
Response to Arguments
Applicant's arguments filed 30 September 2025 have been fully considered but they are not persuasive. Applicant argues Arnaud fails to teach a waveguide material, and has (i) a plurality of optical components embedded within the waveguide material, and (ii) a section of the waveguide material disposed between and contacting a first optical component and a second optical component. Applicant further states Arnaud teaches the plurality of optical components to be through free space and points to Figure 3. However, the rejection above relies on Figure 5 of Arnaud. In Figure 5 and Column 5 of Arnaud, Arnaud clearly shows and recites a core and cladding layer and the optical components embedded within the waveguide material.
References Cited
The references cited made of record and not relied upon is considered pertinent to applicant’s disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TINA M WONG whose telephone number is (571)272-2352. The examiner can normally be reached M-F 8:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached at (571) 272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TINA WONG/Primary Examiner, Art Unit 2874