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 .
Response to Arguments
Applicant's arguments filed 08/21/2025 have been fully considered but they are not persuasive.
Applicant has amended claims 15-20 such that they depend from previously elected Claim 1, however they are still directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Invention I. Claims 1-14, drawn to a lens system with a prism comprising interior aperture masks, classified in G02B 5/04 and C03C 2217/73 and C03C 17/00.
Invention II. Claims 15-20, drawn to the method of making a prism with interior aperture masks using a notch and glass vias, classified in C03C 2218/30, and C03C 17/007.
The inventions are independent or distinct, each from the other because: Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product of Invention I can be made without using the notch and glass vias of the process of Invention II. The product could be made by coating the interior of the glass prism by a different
method, or forming a composite glass structure.
Further, Examination Inventions 1 and II would constitute undue search burden because of the following:
1) The inventions have attained recognition in the art as separate fields of inventive endeavor, as is indicated by their separate classifications.
2) The inventions would require separate fields of search, since searches for a particular prism with interior aperture masks would require specific search queries and terminology that are unlikely to yield relevant results for methods of making aperture masks include notched glass vias.
Thus, despite its dependency on Claim 1, Claims 15-20 still comprise an invention directed a method of making an apparatus, that is distinct from the apparatus of Invention I (Claims 1-14), and thus without the presence of an allowable linking claim, the Restriction is sustained.
Regarding the rejection of Claims 1 and 10, under 35 USC 103, Applicant argues that Arns in view of Hoose does not teach the following limitation of Claim 1 and 10, “interior aperture mask…configured to mitigate flare caused by stray light in the prism, wherein mitigate flare comprises block or absorb stray light.” Applicant argues that the limitation recited above is functionally reciting a feature of the apparatus [MPEP 2114 (I)], and further that diffraction gratings do not “block or absorb stray light.”
The Examiner respectfully disagrees. Firstly, the limitation recited above does not recite or otherwise point to any structural aspect of the claimed “interior aperture masks”, that performs the function of blocking or absorbing stray light. There is no claimed structural or compositional arrangement of the claimed interior aperture mask that would distinguish its ability to perform the claimed function of “blocking or absorbing stray light.”, from any other interior aperture mask.
Because the structure of the claimed system, as identified above and in the original action, is the same as that claimed, it must inherently perform the same function. See MPEP §2114(I)) “If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011).”
Further, Arns teaches a diffraction grating 302 serving as an interior aperture mask in prism P of Fig. 3. Diffraction gratings inherently, diffract “out of band wavelengths” at “different angles” [Par 09].This is an inherent quality of diffraction gratings, and the “different angles” are dependent on the diffraction order m, wavelength
λ
, groove spacing d, and incident angle of light
α
, wherein the angle of reflected light is
β
, according to the following equation:
m
λ
=
d
s
i
n
α
+
s
i
n
β
Diffraction gratings are not perfect optical elements and have many orders of diffraction angles, that are not actively utilized by the designer. Further the inherent imperfections of diffraction gratings also result in efficiency loss between incident and diffracted light, this loss is due to energy being absorbed by the diffraction grating itself or diffraction orders that are reflected away from the intended diffraction angle. Therefore, the diffraction 302 of Arns would inherently “block or absorb light”, since the grating would experience at least some partial loss, due to absorption or reflected light rays due to extenuating diffraction orders.
More explicitly, due to the thermal properties of light, any material or structure on which light impinges, regardless of its intended to function or composition, would inherently block or absorb light. The reflection, diffraction, or transmission of light upon contact with material (even air) would result in at least minor thermal conduction (and thus absorption) of energy from the light to the incident material. Further, the nature of diffraction gratings, as described above, is to effectively choose which wavelengths of light will be reflected (thus becoming blocked stray light), and which bands are transmitted (thus becoming unblocked light).
Therefore, Arn’s teaching of diffraction gratings would also inherently read on the claimed limitation, “interior aperture mask…configured to mitigate flare caused by stray light in the prism, wherein mitigate flare comprises block or absorb stray light.”.
Therefore, the rejection of Claim 1, and 10, and by extension Claims 5-8, 10, and 13-14, is sustained.
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 t he invention was made.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arns (US 20050243421 A1) in view Hoose (US 20030142405 A1).
Re Claim 1, Arns discloses, on Fig. 2-3, a prism (unlabeled prism in Fig. 3, annotated by examiner as prism P in the Figure below), comprising: a single, prism (prism P is a single prism) comprising: at least four surfaces (Surfaces of prism P annotated by examiner as surfaces S1-S4); and one or more interior aperture masks (diffraction grating 302); wherein a first surface (S1) of the at least four surfaces is parallel to a third surface (S1 is parallel to S3) of the at least four surfaces; wherein a second surface (S2) of the at least four surfaces is parallel to a fourth surface (S2 is parallel to S4); and wherein an angle where the first surface meets the second surface is less than 90 degrees (angle between S1 and S2 is less than 90º).
PNG
media_image1.png
426
519
media_image1.png
Greyscale
Examiner Annotated Arns Figure 2
The teaching of Arns would inherently comprise, “…configured to mitigate flare caused by stray light in the prism, wherein mitigate flare comprises block or absorb stray light…”, this being reasonably assumed from the disclosure of Arns, of “…volume-phase holographic transmission diffraction grating [Par 20], since diffraction gratings inherently combine selective reflection and selective transmittance to control output light, reflected would also mean it is “blocked”, and further diffraction gratings intrinsically have imperfections, which include absorption loss wherein the grating absorbs at least a small percentage of incident light.
But Arns does not explicitly disclose, wherein the prism is a single monolithic prism, and wherein the one or more interior aperture masks at least partially extend into an interior of the single, monolithic, prism from an exterior surface of the single, monolithic, prism
However, within the same field of endeavor, Hoose teaches, on Fig. 3, that it is desirable in prisms to include, wherein the prism is a single monolithic prism (prism 32 ), and the one or more interior aperture masks at least partially extend into an interior of the single, monolithic, prism from an exterior surface of the single, monolithic, prism (can have grating 34 with grooves 35 fabricated into it and filled with a dielectric coating in a monolithic prims 32 wherein a composite prims is only presented as an alternate embodiment, “The grating profile of the rectangular volume grating 34 can be fabricated directly on one of the prism faces, for example, by reactive ion etching. Alternatively, the grating structure can be fabricated on a separate semiconductor wafer, for example, a Si wafer, that is subsequently bonded to the prism face 31”) [Par 26].
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Arns with Hoose in order to reduce polarization dependence, as taught by Hoose [Par 26].
Claim(s) 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Arns in view of Hoose as applied to claim 1 above, and further in view of Gao (US 20140071400 A1).
Re Claim 5, Arns in view of Hoose discloses, the prism of claim 1.
But Arns in view of Hoose, does not disclose, further comprising a highly reflective coating covering, at least partially, the second surface or the fourth surface.
However, within the same field of endeavor, Gao teaches, on Fig. 2, that it is desirable in prisms to include a highly reflective coating covering, at least partially, the second surface or the fourth surface (Second surface 217 has a highly reflective coating) [Par 55].
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Arns in view of Hoose with Gao in order obtain high reflection at the illumination wavelength, as taught by Gao [Par 55].
Re Claim 8, Arns in view of Hoose discloses, on Fig. 2, the prism of claim 1, further comprising: wherein the prism comprises a parallelogram shape (prism P is a parallelogram).
But Arns in view of Hoose does not disclose, wherein the angle between the first surface and the second surface is between 25 and 35 degrees.
However, within the same field of endeavor, Gao teaches, on Fig. 2, that it is desirable in prisms to include wherein the angle between the first surface and the second surface is between 25 and 35 degrees (the angle between first surface 216 and second surface 217 is 27.5 º) [Par 55].
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Arns in view of Hoose with Gao in order to fold light from a wide angle of field positions as taught by Gao [Par 28].
Claim(s) 6-7, 10, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Arns in view of Hoose as applied to Claim 1, above and further in view of Deok (KR 20200113459 A).
Re claim 6, Arns in view of Hoose discloses, the prism of claim 1.
But Arns in view of Hoose does not explicitly disclose, further comprising an anti-reflective coating covering, at least partially, the first surface or the third surface.
However, within the same field of endeavor, Deok teaches, on Fig. 3, that it is desirable in prisms to include an anti-reflective coating (uneven structure covering the inside of prism 30) covering, at least partially, the first surface or the third surface (uneven structure covers a first and second surface in prism 30) [Page 3, Par 11-12].
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Arns in view of Hoose with Deok in order to reduce noise as taught by Deok [Page 3, Par 11-12].
Re claim 7, Arns in view of Hoose discloses, the prism of claim 1.
But Arns in view of Hoose does not explicitly disclose, it further comprising a dark masking covering, at least partially, the first surface or the third surface.
However, within the same field of endeavor, Deok teaches, on Fig. 3, that it is desirable in prisms to include a dark masking covering (uneven structure covering the inside of prism 30 can include a material that absorbs light well) covering, at least partially, the first surface or the third surface (uneven structure covers a first and second surface in prism 30) [Page 3, Par 11-12].
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Arns in view of Hoose with Deok in order to reduce noise as taught by Deok [Page 3, Par 11-12].
Re Claim 10, Arns discloses, on Fig. 2-3, a prism (unlabeled prism in Fig. 3, annotated by examiner as prism P in the Figure below), comprising: a single, prism (prism P is a single prism) comprising: at least four surfaces (Surfaces of prism P annotated by examiner as surfaces S1-S4); and one or more interior aperture masks (diffraction grating 302); wherein a first surface (S1) of the at least four surfacs is parallel to a third surface (S1 is parallel to S3) of the at least four surfaces; wherein a second surface (S2) of the at least four surfaces is parallel to a fourth surface (S2 is parallel to S4); and wherein an angle where the first surface meets the second surface is less than 90 degrees (angle between S1 and S2 is less than 90º).
The teaching of Arns would inherently comprise, “…configured to mitigate flare caused by stray light in the prism, wherein mitigate flare comprises block or absorb stray light…”, this being reasonably assumed from the disclosure of Arns, of “…volume-phase holographic transmission diffraction grating [Par 20], since diffraction gratings inherently combine selective reflection and selective transmittance to control output light, reflected would also mean it is “blocked”, and further diffraction gratings intrinsically have imperfections, which include absorption loss wherein the grating absorbs at least a small percentage of incident light.
But Arns does not explicitly disclose; A camera, comprising: one or more lenses; an image sensor; and a prism between the one or more lenses and the image sensor, wherein the prism is a single monolithic prism, and the one or more interior aperture masks at least partially extend into an interior of the single, monolithic, prism from an exterior surface of the single, monolithic, prism
However, within the same field of endeavor, Hoose teaches, on Fig. 3, that it is desirable in prisms to include, wherein the prism is a single monolithic prism (prism 32 ), interior aperture masks that at least partially extend into an interior of the single, monolithic, prism from an exterior surface of the single, monolithic, prism (can have grating 34 with grooves 35 fabricated into it and filled with a dielectric coating in a monolithic prims 32 wherein a composite prims is only presented as an alternate embodiment, “The grating profile of the rectangular volume grating 34 can be fabricated directly on one of the prism faces, for example, by reactive ion etching. Alternatively, the grating structure can be fabricated on a separate semiconductor wafer, for example, a Si wafer, that is subsequently bonded to the prism face 31”) [Par 26]Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Arns with Hoose in order to reduce polarization dependence, as taught by Hoose [Par 26].
But Arns in view of Hoose does not explicitly disclose, A camera, comprising: one or more lenses; an image sensor; and a prism between the one or more lenses and the image sensor,
Within the same field of endeavor, Deok teaches on Fig. 3, that it is desirable in prism systems to include a camera (Fig. 3) is comprising: one or more lenses (lens 20); an image sensor (detection unit 14); and a prism between the one or more lenses and the image sensor (prism 30 is between lens 20 and detection unit 14),
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Arns in view of Hoose with Deok in order to increase incident light, which is then imaged as taught by Deok [Page 3, Par 6].
Re claim 14, Arns in view of Hoose and Deok discloses, the prism of claim 10, and Deok further comprises on Fig. 3, an anti-reflective coating (uneven structure covering the inside of prism 30) covering, at least partially, the first surface or the third surface (uneven structure covers a first and second surface in prism 30) [Page 3, Par 11-12].
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Arns in view of Hoose and Deok as applied to claim 10 above, and further in view of Gao.
Re Claim 13, Arns in view of Hoose and Deok discloses, the camera of claim 10.
But Arns in view of Deok does not disclose, the prism further comprising a highly reflective coating covering, at least partially, the second surface or the fourth surface.
However, within the same field of endeavor, Gao teaches, on Fig. 2, that it is desirable in prisms to include a highly reflective coating covering, at least partially, the second surface or the fourth surface (Second surface 217 has a highly reflective coating) [Par 55].
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify the system of Arns in view of Hoose with Gao in order obtain high reflection at the illumination wavelength, as taught by Gao [Par 55].
Allowable Subject Matter
Claims 2-4, 9, and 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Re Claim 2, and 11 the closest prior art of record is Arns, but the prior art neither teaches nor suggests interior aperture masks comprising: a first channel in a left side surface between the first surface and the third surfaces; a second channel in a right side surface opposite the channel in the left side surface; and a third channel in the first surface connecting the first and second channels to a depth less than a thickness of the prism between the first surface and the third surface.
Claims 3-4, and 12 depend from claims 2 and 11 respectively and thus are also objected to as being dependent on a rejected based claim, but are otherwise allowable as dependent claims from Claims 2 and 11.
Re Claim 9, Arns is the closest prior art of record but, but the prior art neither teaches nor suggests wherein, the prism is configured to: transmit light passing through a first surface into the prism; reflect, at a second surface of the prism, at least some of the light passing through the first surface of the prism; reflect, at the first surface of the prism, at least some of the light reflected from the second surface of the prism; reflect, at a third surface of the prism, at least some of the light reflected from the first surface of the prism; and reflect, at a fourth surface of the prism, at least some of the light reflected from the third surface of the prism to pass through the third surface out of the prism.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Parichehreh (US 20200096873 A1) and Hirai (US 5969869 A) teach prisms that include apertures or gratings. Owen (US 5530565 A) teaches a prism that includes a grating and an external aperture mask. Gutin (US 8243353 B1) teaches coded aperture imaging.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAY ALEXANDER DEAN whose telephone number is (571)272-4027. The examiner can normally be reached Monday-Friday 7:30-5:00.
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, Bumsuk Won can be reached at (571)-272-2713. 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.
/RAY ALEXANDER DEAN/Examiner, Art Unit 2872
/BALRAM T PARBADIA/Primary Examiner, Art Unit 2872
Prosecution Insights