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 .
Remark
This Office Action is in response to applicant’s amendment filed on January 30, 2026, which has been entered into the file.
By this amendment, the applicant has amended claims 34 and 44.
Claims 22-25, 27-36, and 38-44 remain pending in this application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 27 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 27 recites the phrase “the volume holograms of the output coupling region are arranged above one another in the first direction” that is NOT explicitly supported by the specification. Specifically in light of claim 1 (the base claim) that recites that the “input coupling region comprises at least three volume holograms being separated from each other in the first direction”. The word “above” implies that they are not in the same plane. Yet, in all of the figures disclosed in the specification, the holograms for output coupling region are in the same plane. If the at least three holograms for the input coupling region are separated from each other in the first direction, the volume holograms for the output coupling region are also separated from each other in the first direction. If the volume holograms for the input coupling are above each other in the first direction then the volume hologram for the output coupling region are above each other.
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.
Claims 27, and 44 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 27 recites the phrase “the volume holograms of the input coupling region are arranged above one another in the first direction” that is confusing and indefinite since it is not clear how could the volume holograms while being in the common plane yet to be above one another in the first direction. The scopes of the claims are unclear. For the purpose of examination, this phrase is being interpreted as the at least two holograms are adjacent to each other in the first direction. However proper correction and clarification are required.
The phrase “the deflected portion emerges from the base body … in an unexpanded state” and the phrase “an extension of the input coupling region is a second direction … is greater than an extent of the output coupling region in the second direction” recited in claim 44 is confusing and indefinite. If the deflected portion emerges from the base body us unexpanded, the extent of the input coupling region to the extent of the output coupling region should be identical. Clarifications and correction are required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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) 22-25, 27-32, and 38-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over the patent issued to US patent application publication by Basset et al (US 2017/0205618 A1) in view of the patent issued to Mukawa et al (PN. 7,747,113), US patent issued to Alexander et al (PN. 10,527,855) and US patent application publication by Wall et al (US 2019/0155046 A1).
Basset et al teaches a functionalized waveguide for detector system that is comprised of a transparent base body (20, Figure 2), having a front side and a rear side wherein the base body comprises a partially transparent input coupling region (28, Figure 2) and output coupling region (22a) spaced apart therefrom in a first direction. The input coupling region comprises a diffraction grating or hologram (please see paragraphs [0036] and [0051]), which deflects radiation coming from an object (14) to be detected and imaging on the front side such that the deflected radiation propagates as coupled-in radiation in the base body as far as the output coupling region (22a) via reflections and impinges on the output coupling region, (please see Figure 2). Basset et al teaches that the output coupling region deflects at least a portion of the coupled-in radiation imagining on it such that the deflected radiation emerges from the base body via the front side in order to impinge on an imaging system (50) serves as the detector system, (please see paragraphs [0050] to [0057]).
Claim 22 has been amended (in previous amendment) to include the phrase “the input coupling region comprises at least three volume holograms”.
This reference has met all the limitations. It however does not teach explicitly that the input coupling region comprises at least three volume holograms. Mukawa et al in the same field of endeavor teaches an optical device that includes an input coupling region (24, Figure 11) that comprises at least three volume holograms (24R, 24B or 24G, please see Figure 12, column 12, lines ) each of which deflects only a portion of a radiation coming from an object source wherein the at least three volume holograms of the input coupling region differ in their deflection function comprises different spectral angular properties. Mukawa et al also teaches that the each of the at least two volume holograms lie in a common plane, (please see Figure 12). It would then have been obvious to one skilled in the art to apply the teachings of Mukawa et al to modify the diffraction grating or hologram of the input coupling region of Basset et al to comprise at least three volume holograms each for a different spectral portion of the input radiation for the benefit of allowing a color image of the object may be detected.
These references however do not teach explicitly that the at least three volume holograms are separated from each other in the first direction.
Mukawa et al teaches that the three volume holograms each for diffracting a portion of the wavelength spectra, (such as red, green or blue), may be recorded in a single recording region. It however does not teach explicitly that they are alternatively be recorded so that they are separated from each other in the first direction. Alexander et al in the same field of endeavor teaches an optical waveguide system wherein the input coupler may comprise at least three in-couplers, (which may comprise three, 2B holograms) that each diffracts or deflects a corresponding light beam (250a, 250b and 250c, Figures 2A, 2B and 2C), that may have different wavelength, (please see column 10, line 20). Alexander et al teaches that the different in-couplers may either be recorded in the same region (please see Figures 2A, 2B and 2C) or be separated from each other in the first direction (421, 422 and 423, Figure 4) such that each in-coupler respectively diffracts or deflects corresponding incident light beams (451, 452 or 453). As demonstrated by the disclosure of Mukawa et al the volume hologram that diffracts different wavelength will have different fringe spacing, (please Figure 12 of Mukawa et al) which are identified as different holograms. This means the at least three in-couplers (421, 422 and 423) of Alexander et al, that may comprise volume deflection grating or hologram, (please see column 6, lines 3-24 of Alexander et al), each for diffracting different wavelength of light has to be a different hologram from each other. The at least three in-couplers (421, 422 and 423) therefore are three different holograms that are separated from each other.
It would then have been obvious to one skilled in the art to apply the teachings of Alexander et al to modify the two volume holograms to alternatively be arranged as separated from each other in the first direction, for the benefit of allowing the volume holograms of the input coupler to have an alternative arrangement.
These references further do not teach that the “deflected portion emerges from the base body via the front side or rear side in an unexpanded state”.
Both Basset et al and Mukawa et al teaches that the input coupling region and the output coupling region may have the same dimension which implies that the deflected portion emerges from the base body may be in an unexpanded state. Wall et al in the same field of endeavor teaches a functionalized waveguide wherein the relative dimension of the input coupling region (30, Figures 4A to 4D) and the output coupling region (34) may be either identical or different in order for the radiation guided through the waveguide to be either of unexpanded state (Figure 4A) or expanded state (please see Figure 4B). It would then have been obvious to one skilled in the art to apply the teachings of Wall et al to ensure the guided portion emerged from the base body is unexpanded so that the true size of the object be detected.
With regard to claims 23 and 25, Alexander et al teaches the input coupler (420, Figure 4) may comprise a two or more volume holographic gratings (421, 422, and 423, Figure 4) arranged adjacently in the first direction (i.e. spaced apart direction), and the output coupler (470) may comprise two or more volume holographic gratings (471, 472 and 473) that are arranged adjacently in the first direction.
With regard to claim 24, Mukawa et al teaches that the output coupling region comprises for each volume holographic grating of the input coupling region an assigned volume holographic grating, such as (25R, 35B or 25G Figure 13), which provides the same spectral angular property during deflection as the corresponding volume holographic grating of the input coupling region.
With regard to claim 27, the claims are rejected under 35 USC 112, second paragraph for the reasons set forth above. These claims may only be examined in the broadest interpretation. Mukawa et al in light of Alexander et al teaches that the output coupling region comprises for each volume hologram of the input coupling region an assigned volume hologram (25R, 25G or 25B, Figure 11 of Mukawa et al, or 470, 471, 471, Figure 4 of Alexander et al) which provides the same spectral angular property during deflection as the corresponding volume hologram of the input coupling region, wherein the volume holograms of the output coupling region are arranged above one another transverse to the first direction, (Figure 18).
With regard to claim 28, Mukawa et al teaches that each volume hologram of the input coupling region comprises a reflective volume hologram, (please see Figures 11-13).
With regard to claim 29 and 30, Mukawa et al teaches that the at least two volume holograms of the input coupling region may comprise a single volume hologram as demonstrated in Figure 12, (24). The output coupling region may also comprise a single volume hologram (25), which comprises the properties of at least two different volume holograms, which provides the same spectral angular properties during deflection as the volume holograms of the input coupling region.
With regard to claim 31, Basset et al in light of Mukawa et al teaches that the input coupling and/or the output coupling regions provides image to the viewer. Basset et al specifically teaches that the object image (14) may be detected at the imaging system (50, Figure 2) which means the input coupling and/or the output coupling region comprises image function.
With regard to claim 32, Basset et al teaches that the input coupling region transmits a portion of the radiation coming from the object (14, Figure 1) to be detected and impinging on the front side such that the portion emerges from the base body via the rear side (please see Figure 1).
With regard to claim 38, Basset et al teaches an imaging system or a detector system comprises the functionalized waveguide, (please see Figures 1 and 2).
With regard to claim 39, Basset et al teaches that the imaging system (50) on which that portion of the radiation is deflected by the output coupling region imagines may comprise a CCD camera, (please see paragraphs [0055] and [0056]).
With regard to claim 40, Basset et al teaches that the imaging system (50) is connected to the front side (Figure 2) or rear side (Figure 1) of the base body.
With regard to claims 41 and 42, Basset et al teaches that no separate imaging optical element is arranged between the detector or imaging system (50) and the front and/or rear side, (please see Figures 1 and 2). With regard to claim 42, alternatively it is known in the art to provide an imaging optical element between the base body and imaging system for the benefit of ensure the focus of the image light on the detector. Since the optically imaging element is not critical to the operation of the detector such feature is considered to be obvious matters of design choice to one skilled in the art.
Claim(s) 33 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Basset et al, Mukawa et al, Alexander et al and Wall et al as applied to claim 22 above, and further in view of the US patent application publication by Cohen et al (US 2010/0177388).
The functionalized waveguide taught by Basset et al in combination with the teachings of Mukawa et al, Alexander et al and Wall et al as described in claim 22 above has met all the limitations of the claims.
With regard to claim 33 and 34, these references do not teach explicitly that the extend of the input coupling region in a second direction transverse to the first direction is greater than an extend of the output coupling region in a second direction.
Cohen et al in the same field of endeavor teaches a waveguide that is comprised of a first input coupling region (130, Figures 2a, 2b and 7a) and a first output coupling region (15) wherein an extent of the first input coupling region (WI) in a second direction (i.e. x direction) traverse to the first direction (i.e. y direction) is greater than an extent of the first output coupling region (WO) in the second direction, namely WI being greater than WO, (please see paragraph [0164]). It would then have been obvious to one skilled in the art to apply the teachings of Cohen et al to modify the extents of the first input coupling region and the first output coupling region in the second direction that extent for the input coupling region to be greater than the extent of the output coupling region for the benefit of determining the desired field of view.
With regard to amended claim 34, Cohen et al teaches that the input coupling region and the output coupling region are arranged with respective to each other, (please see Figure 2a) with the midpoint of the input coupling region along an axis parallel to the second direction is aligned along the axis parallel to the first direction with a midpoint of the output coupling region along the axis parallel to the second direction.
Claim(s) 35 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Basset et al, Mukawa et al, Alexander et al and Wall et al as applied to claim 22 above, and further in view of the patent issued to Robbins et al (PN. 8,233,204).
The functionalized waveguide taught by Basset et al in combination with the teachings of Mukawa et al, Alexander et al and Wall et al as described in claim 22 above has met all the limitations of the claims.
With regard to claims 35 and 36, these references do not teach explicitly that the base body further comprises a provision for a plurality of output coupling regions arranged next to one another in the second direction. Robbins et al in the same field of endeavor teaches a waveguide arrangement wherein the output coupling region may comprise additional regions arranged next to each other in the second or transverse direction respect to the separation direction with the input coupling regions, (please see Figure 10). With regard to claim 36, it is implicitly true or obvious modification by one skilled in the art to make the light deflected by the output coupling regions also in direction transversely to the first direction. It would then have been obvious to one skilled in the art to apply the teachings of Robbins et al to modify the waveguide display of Lee et al for the benefit of allowing better field of view for the image formed.
Claim(s) 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over the patent issued to US patent application publication by Basset et al (US 2017/0205618 A1) in view of the patent issued to Mukawa et al (PN. 7,747,113), US patent issued to Alexander et al (PN. 10,527,855) and US patent application publication by Wall et al (US 2019/0155046 A1).
Claim 43 has been amended to necessitate the new grounds of rejection.
Basset et al teaches a functionalized waveguide for detector system that is comprised of a transparent base body (20, Figure 2), having a front side and a rear side wherein the base body comprises a partially transparent input coupling region (28, Figure 2) and output coupling region (22a) spaced apart therefrom in a first direction. The input coupling region comprises a diffraction grating or hologram (please see paragraphs [0036] and [0051]), which deflects radiation coming from an object (14) to be detected and imaging on the front side such that the deflected radiation propagates as coupled-in radiation in the base body as far as the output coupling region (22a) via reflections and impinges on the output coupling region, (please see Figure 2). Basset et al teaches that the output coupling region deflects at least a portion of the coupled-in radiation imagining on it such that the deflected radiation emerges from the base body via the front side in order to impinge on an imaging system (50) serves as the detector system, (please see paragraphs [0050] to [0057]).
Claim 43 has been amended to include the phrase “the input coupling region comprises at least three volume holograms”.
This reference has met all the limitations. It however does not teach explicitly that the input coupling region comprises at least three volume holograms. Mukawa et al in the same field of endeavor teaches an optical device that includes an input coupling region (24, Figure 11) that comprises at least three volume holograms (24R, 24B or 24G, please see Figure 12, column 12, lines ) each of which deflects only a portion of a radiation coming from an object source wherein the at least two volume holograms of the input coupling region differ in their deflection function comprises different spectral angular properties. Mukawa et al also teaches that the each of the at least two volume holograms lie in a common plane, (please see Figure 12). It would then have been obvious to one skilled in the art to apply the teachings of Mukawa et al to modify the diffraction grating or hologram of the input coupling region of Basset et al to comprise at least two volume holograms each for a different spectral portion of the input radiation for the benefit of allowing a color image of the object may be detected. The different wavelengths of the radiation coming from the object to be detected that are coupled by the at least two volume holograms propagate in the same channel in the waveguide, (please see Figure 11 of Mukawa et al).
These references however do not teach explicitly that the at least three volume holograms are separated from each other in the first direction.
Mukawa et al teaches that the three volume holograms each for diffracting a portion of the wavelength spectra, (such as red, green or blue), may be recorded in a single recording region. It however does not teach explicitly that they are alternatively be recorded so that they are separated from each other in the first direction. Alexander et al in the same field of endeavor teaches an optical waveguide system wherein the input coupler may comprise at least three in-couplers, (which may comprise three, 2B holograms) that each diffracts or deflects a corresponding light beam (250a, 250b and 250c, Figures 2A, 2B and 2C), that may have different wavelength, (please see column 10, line 20). Alexander et al teaches that the different in-couplers may either be recorded in the same region (please see Figures 2A, 2B and 2C) or be separated from each other in the first direction (421, 422 and 423, Figure 4) such that each in-coupler respectively diffracts or deflects a corresponding incident light beam (451, 452 or 453). As demonstrated by the disclosure of Mukawa et al the volume hologram that diffracts different wavelength will have different fringe spacing, (please Figure 12 of Mukawa et al), which identified as different holograms. This means the at least three in-couplers (421, 422 and 423) of Alexander et al, that may comprise volume deflection grating or hologram, (please see column 6, lines 3-24 of Alexander et al), each for diffracting different wavelength of light has to be a different hologram from each other. The at least three in-couplers (421, 422 and 423) therefore are three different holograms that are separated from each other.
It would then have been obvious to one skilled in the art to apply the teachings of Alexander et al to modify the two volume holograms to alternatively be arranged as separated from each other in the first direction, for the benefit of allowing the volume holograms of the input coupler to have an alternative arrangement.
These references further do not teach that the “deflected portion emerges from the base body via the front side or rear side in an unexpanded state”.
Both Basset et al and Mukawa et al teaches that the input coupling region and the output coupling region may have the same dimension which implies that the deflected portion emerges from the base body may be in an unexpanded state. Wall et al in the same field of endeavor teaches a functionalized waveguide wherein the relative dimension of the input coupling region (30, Figures 4A to 4D) and the output coupling region (34) may be either identical or different in order for the radiation guided through the waveguide to be either of unexpanded state (Figure 4A) or expanded state (please see Figure 4B). It would then have been obvious to one skilled in the art to apply the teachings of Wall et al to ensure the guided portion emerged from the base body is unexpanded so that the true size of the object be detected.
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over the patent issued to US patent application publication by Basset et al (US 2017/0205618 A1) in view of the patent issued to Mukawa et al (PN. 7,747,113), US patent issued to Alexander et al (PN. 10,527,855), US patent application publication by Wall et al (US 2019/0155046 A1) and US patent application publication by Cohen et al (US 2010/0177388 A1).
Claim 44 has been newly added to necessitate the new grounds of rejection.
Basset et al teaches a functionalized waveguide for detector system that is comprised of a transparent base body (20, Figure 2), having a front side and a rear side wherein the base body comprises a partially transparent input coupling region (28, Figure 2) and output coupling region (22a) spaced apart therefrom in a first direction. The input coupling region comprises a diffraction grating or hologram (please see paragraphs [0036] and [0051]), which deflects radiation coming from an object (14) to be detected and imaging on the front side such that the deflected radiation propagates as coupled-in radiation in the base body as far as the output coupling region (22a) via reflections and impinges on the output coupling region, (please see Figure 2). Basset et al teaches that the output coupling region deflects at least a portion of the coupled-in radiation imagining on it such that the deflected radiation emerges from the base body via the front side in order to impinge on an imaging system (50) serves as the detector system, (please see paragraphs [0050] to [0057]).
Claim 44 has been amended to include the phrase “the at least three volume holograms”.
This reference has met all the limitations. It however does not teach explicitly that the input coupling region comprises at least two volume holograms. Mukawa et al in the same field of endeavor teaches an optical device that includes an input coupling region (24, Figure 11) that comprises at least two volume holograms or at least three volume holograms (24R, 24B or 24G, please see Figure 12, column 12, lines ) each of which deflects only a portion of a radiation coming from an object source wherein the at least two volume holograms of the input coupling region differ in their deflection function comprises different spectral angular properties. Mukawa et al also teaches that the each of the at least two or at least three volume holograms lie in a common plane, (please see Figure 12). It would then have been obvious to one skilled in the art to apply the teachings of Mukawa et al to modify the diffraction grating or hologram of the input coupling region of Basset et al to comprise at least two volume holograms or at least three volume holograms each for a different spectral portion of the input radiation for the benefit of allowing a color image of the object may be detected. The different wavelengths of the radiation coming from the object to be detected that are coupled by the at least two volume holograms propagate in the same channel in the waveguide, (please see Figure 11 of Mukawa et al).
These references however do not teach explicitly that the at least three volume holograms are separated from each other in the first direction.
Mukawa et al teaches that the three volume holograms each for diffracting a portion of the wavelength spectra, (such as red, green or blue), may be recorded in a single recording region. It however does not teach explicitly that they are alternatively be recorded so that they are separated from each other in the first direction. Alexander et al in the same field of endeavor teaches an optical waveguide system wherein the input coupler may comprise at least three in-couplers, (which may comprise three, 2B holograms) that each diffracts or deflects a corresponding light beam (250a, 250b and 250c, Figures 2A, 2B and 2C), that may have different wavelength, (please see column 10, line 20). Alexander et al teaches that the different in-couplers may either be recorded in the same region (please see Figures 2A, 2B and 2C) or be separated from each other in the first direction (421, 422 and 423, Figure 4) such that each in-coupler respectively diffracts or deflects a corresponding incident light beam (451, 452 or 453). As demonstrated by the disclosure of Mukawa et al the volume hologram that diffracts different wavelength will have different fringe spacing, (please Figure 12 of Mukawa et al), which identified as different holograms. This means the at least three in-couplers (421, 422 and 423) of Alexander et al, that may comprise volume deflection grating or hologram, (please see column 6, lines 3-24 of Alexander et al), each for diffracting different wavelength of light has to be a different hologram from each other. The at least three in-couplers (421, 422 and 423) therefore are three different holograms that are separated from each other.
It would then have been obvious to one skilled in the art to apply the teachings of Alexander et al to modify the two volume holograms to alternatively be arranged as separated from each other in the first direction, for the benefit of allowing the volume holograms of the input coupler to have an alternative arrangement.
These references further do not teach that the “deflected portion emerges from the base body via the front side or rear side in an unexpanded state”.
Both Basset et al and Mukawa et al teaches that the input coupling region and the output coupling region may have the same dimension which implies that the deflected portion emerges from the base body may be in an unexpanded state. Wall et al in the same field of endeavor teaches a functionalized waveguide wherein the relative dimension of the input coupling region (30, Figures 4A to 4D) and the output coupling region (34) may be either identical or different in order for the radiation guided through the waveguide to be either of unexpanded state (Figure 4A) or expanded state (please see Figure 4B). It would then have been obvious to one skilled in the art to apply the teachings of Wall et al to ensure the guided portion emerged from the base body is unexpanded so that the true size of the object be detected.
Basset et al in light of Mukawa et al and Alexander et al teaches that different wavelengths of the radiation coming from the object may be detected that are coupled by the at least three volume holograms propagates in the same channel in the waveguide and the first input coupling region deflects the deflected portion such that a diffraction is performed in a region that is defined by the front side and the rear side that extends in the first direction.
These references do not teach explicitly that an extent of the input coupling region in a second direction traverse to the first direction is greater than an extent of the output coupling region in the second direction.
Cohen et al in the same field of endeavor teaches a waveguide that is comprised of a first input coupling region (130, Figures 2a, 2b and 7a) and a first output coupling region (15) wherein an extent of the first input coupling region (WI) in a second direction (i.e. x direction) traverse to the first direction (i.e. y direction) is greater than an extent of the first output coupling region (WO) in the second direction, namely WI being greater than WO, (please see paragraph [0164]). It would then have been obvious to one skilled in the art to apply the teachings of Cohen et al to modify the extents of the first input coupling region and the first output coupling region in the second direction that extent for the input coupling region to be greater than the extent of the output coupling region for the benefit of determining the desired field of view.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 22-24, 25-36 and 38-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21) of U.S. Patent No. 12,130,461 (application number 17/427,265) in view of US patent issued to Alexander et al (PN. 10,527,885). Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite a functionalized waveguide with transparent base body and input coupling regions and output coupling regions that the input coupling region deflects a portion of the radiation that propagates to output coupling region via reflections and the output coupling region deflects the deflected portion so it emerged from the base body. The smaller dimension of the output coupling region recited in the cited co-pending application reads on the “unexpanded state” limitation of the instant application. Furthermore, with regard to the amendments to claims 22 and 43 and the newly added claim 44, Alexander et al teaches an alternative arrangement for the input coupling region to have the in-couplers that each deflects a corresponding light beam be separated from each other in the first direction. Such modification is therefore considered obvious to one skilled in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed January 30, 2026, have been fully considered but they are not persuasive. The newly amended have been fully considered and they are rejected for the reasons stated above.
In response to applicant’s arguments concerning the rejections of the claims under 35 USC 112, first and second paragraphs, the examiner respectfully disagrees the arguments for the reasons stated below. The applicant is respectfully reminded that Figures 16 and 17 discloses that the both input coupling regions and the output coupling regions are arranged on the X-Y plane which is parallel to the object (9, Figure 1) and detector (11). There is no description or disclosure of the specification to have the output coupling regions to be arranged above each other along the first direction. With regard to claim 44, if the extend of the input coupling region and the output coupling region are different, then the emerging light will either be expanded (positive expansion) or reduced (negative expansion).
In response to applicant’s arguments concerning the rejections of claims under 35 USC 103 rejection, the applicant being one skilled in the art must understand whether the different input coupling regions being separated from each other or not is not critical or novel for the operation of the waveguide. Mukawa reference teaches that it is known in the art to have input coupling regions that each has different modulation properties. Alexander reference teaches that the input coupling regions each has different modulation properties may be either spatially separated from each other or not. One skilled in the art must have the basic knowledge that to have different input coupling regions with different modulation properties is crucial for operation however whether spatially separated from each or not does not affect the operation.
Applicant fails to provide arguments concerning double patent rejection, it therefore still holds.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Applicant’s arguments are mainly drawn to the newly amended and newly added claims that have been fully addressed in the reasons for rejection set forth above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREY Y CHANG whose telephone number is (571)272-2309. The examiner can normally be reached M-TH 9:00AM-4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone B Allen can be reached on 571-272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
AUDREY Y. CHANG
Primary Examiner
Art Unit 2872
/AUDREY Y CHANG/ Primary Examiner, Art Unit 2872