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 Amendments
The present office action is made in response to the amendment filed by applicant on 03/09/2026. It is noted that in the amendment, applicant has made changes to the abstract and the claims. There is not any change being made to the drawings and the specification.
2A) Regarding the abstract, applicant has submitted a new abstract in a separated sheet; and
2B) Regarding the claims, applicant has amended claim 1-12 and added a new claim, i.e., claim 16, into the application.
Response to Arguments
The amendments to the abstract and the claims as provided in the amendment of 03/09/2026 and applicant's arguments provided in the mentioned amendment, pages 9-12, have been fully considered and resulted the following conclusions:
3A) Regarding the claims, the following conclusions are made:
3Aa) because applicant has added a new claim, i.e., claim 16, into the application and has not canceled any claim from the application in the amendment of 03/09/2026, thus as newly-added, the pending claims are claims 1-12 and 16. Note that claims 13-15 were canceled in the Pre-amendment of 11/14/2022.
3Ab) a review of the newly-added claim 16 has resulted that the scope of the new claim is similar to that claimed in the elected claim 3, thus claim 16 is grouped into the elected group I and are examined in the present office action.
In other words, claims 1-6, 9 and 16 are examined in the present office action, and claims 7-8 and 10-12 have been withdrawn from further consideration as being directed to non-elected inventions. Applicant should note that claims 7-8 and 10-12 will be rejoined if the independent claim 5 is later found as an allowable claim.
3Ac) the amendments to claim 1 fails to comply with the requirement of rule 37 CFR 1.121 because the claim contains an addition of term(s) into the claim without underlined. In particular, on line 17 of the claim, the term “a” before “centre” is newly-added but applicant has not underlined that term. In the spirit of cooperation, the list of claims as filed in the amendment of 03/09/2026 has been entered and used to examine the pending claims; however, applicant should take into account the mentioned rule whenever applicant makes change(s) to the claim(s).
3B) Regarding the objections to the drawings as set forth in the office action of 09/08/2025, applicant’s arguments provided in the amendment of 03/09/2026, page 9, have been fully considered and are sufficient to overcome the objections to the drawings as set forth in the mentioned office action.
3C) Regarding the objections to the abstract and the specification as set forth in the office action of 09/08/2025, the following conclusions are made:
3Ca) Regarding the objection to the abstract, the new abstract submitted by applicant In the amendment of 03/09/2026 is acceptable. Thus, the objection to the abstract set forth in the mentioned office action is now withdrawn.
3Cb) Regarding the objections to the specification, because applicant has not amended the specification in the amendment of 03/09/2026 and applicant’s statements provided in the mentioned amendment, pages 9-10, have been fully considered but are not sufficient to overcome the objections to the specification, thus the objections to the specification is repeated in the present office action.
3D) Regarding the objections to claims 1-6 and 9 as set forth in the office action of 09/08/2025, the amendments to the claims as provided in the amendment of 03/09/2026 and applicant’s arguments provided in the mentioned amendment, page 10, have been fully considered and are sufficient to overcome the objections to claims 1-6 and 9 set forth in the mentioned office action.
3E) Regarding the rejections of claims 1-6 and 9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the office action of 09/08/2025, the amendments to the claims as provided in the amendment of 03/09/2026 and applicant’s arguments provided in the mentioned amendment, page 10, have been fully considered and are sufficient to overcome only some of the rejections to claims 1-6 and 9 set forth in the mentioned office action.
The claims 1-6 and 9 are still rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as provided in the present office action. It is noted that the rejections are modified due to the changes/absent of response by applicant as provided in the amendment of 03/09/2026.
3F) Regarding the rejection of claim 1-5, now applied to claims 1-5 and 16, under 35 U.S.C. 103 as being unpatentable over Savant et al (US Patent No. 5,922,238) in view of Vasylyev (US Publication No. 2016/0011346) as set forth in the office action of 09/08/2025, the amendments to the claims as provided in the amendment of 03/09/2026, and applicant’s arguments provided in the mentioned amendment, pages 10-12, have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument or the new ground of rejection is based on the same applied arts but is modified due to the changes to the claims as provided in the mentioned amendment.
Regarding applicant’s arguments about the differences in the inventive product and the product yielded from the applied arts used in the rejection, see applicant’s arguments provided in the amendment of 03/09/2026, pages 10-12, it is noted that while applicant’s arguments have been fully considered but they are not persuasive.
Applicant's argument that the references fail to show certain features of the invention and/or the difference of the inventive product from the prior art, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Applicant should note that the claims with claimed language being provided/recited are examined, not the product described in the specification. Applicant is respectfully invited to review the claims with the claimed language as provided/recited in the claims. All features recited in the claims are addressed in the rejection provided in the office action of 09/08/2025. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding applicant’s arguments related to the “focusing” feature which is now added into the claim, see claim 1 on last two lines, the examiner offers the following opinions.
Regarding the feature of “the planer (planar?) preliminary product curvable for use in producing focusing light-directing slats as recited in claim 1, it is noted that the
planar strip-shaped preliminary product (10) used to product the optical element (30) as provided by Savant et al each is a curvable (curable?) resin material, see Savant et al in column 5, and the mentioned feature recited in present claim 1 is for a use of the product, Applicant should note that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Drawings
The drawings contain six sheets of figures 1, 2.1-2.2 and 3-13 were received on 11/05/2021. These drawings are approved by the examiner.
Specification
The “OBJECTS AND SUMMARY OF THE INVENTION” is objected to because it refers to the claims, see page 4, the figures and the prior art, see page 5-8. Applicant needs to provide a brief technical description of the invention in the Summary and move other detailed description to the section of “DETAILED DESCRIPTION OF THE INVENTION”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 1-6, 9 and 16 are 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.
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
a1) each of the features thereof “the vertices” (lines 10-11) and “the location” (line 17) lacks a proper antecedent basis;
a2) the features thereof “the sidewalls (F1) and (F2) … with respect to one another” (lines 12-13) are unclear. What is/are relationship(s) between the so-called “an angle” between the sidewalls in each case as recited in the claim on line 8 and the so-called “an angle ƴ” as recited in the claim on line 12? and
a3) the feature thereof “the sidewalls (F1) and (F2) … the sidewalls (F1) and (F2)” (lines 15-18) makes the claim indefinite because it is unclear which “an area of symmetry” (lines 15-16) and “the location lying in a centre (center?) between the sidewalls (F1) and (F2)” as read from claimed language of the mentioned feature?
b) Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “the angle ƴ between all pairs of side walls (F1) and (F2)” (lines 2-3). The mentioned feature make the claim indefinite because it is unclear/indefinite how a plurality of pairs of side walls has only one angle. Does applicant intend to mean “each pairs” instead of “all pairs” on line 2 of the claim?
c) Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
c1) the similar reasons as set forth in element a2) and a3) above; and
c2) the features thereof “the sidewalls have a surface” (line 18) makes the claim indefinite because it is unclear/indefinite to have only a surface for a plurality of sidewalls.
d) Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
d1) the feature thereof “an angle (σH1) of the sidewall (F1) …the light-directing slat” (lines 1-7) makes the claim indefinite because it is unclear how each angle σH1 and σH2 increases in a continuous over a width of the light-directing slat from the first to second slat longitudinal edges. Applicant should note that while the claim and its base claim 5 recite that the light-directing slat has a first and a second slat longitudinal edges; however, both do not recite sufficient structure of the slat and its edges to warrant the function/result, i.e., each angle σH1 and σH2 increases in a continuous over a width of the light-directing slat from the first to second slat longitudinal edges as claimed; and
d2) the feature thereof “the light-directing slat is curved … curved convexly” (lines 7-8) makes the claim indefinite because it is unclear how the light-directing slat is curved in both its top side and underside where in the light-directing slat is made by a planar preliminary product, see its base claim 1 on lines 3 and 23 and in claim 5 on lines 21-22.
f) Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “tangents to … the circle sector angle (β)” (lines 7-8) makes the claim indefinite. What element/component having the so-called “the circle sector angle (β)”?
It is noted that each of claims 6 and 9 is so vague and indefinite that a comprehensive search of prior art to the claim is impossible. As a result, while the examiner do his best to search but each of claims 6 and 9 is not rejected over prior art in the present office action. When the claims 6 and 9 is amended to make each comply with the requirement of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, then the claims will be examined with the prior art.
g) The remaining claim are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 103
8. 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.
9. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
10. Claims 1-5 and 16, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Savant et al (US Patent No. 5,922,238) in view of Vasylyev (US Publication No. 2016/0011346) (both of record).
Savant et al discloses an optical element and a method for making the optical element.
a) Regarding present claims 1 and 4-5, the optical element and the method for making the optical element as described in columns 5-6 and shown in figs. 1 comprises the following features:
a1) a planar strip-shaped preliminary product (10, 20) for producing a light-directing slat (30) having a top side and a planar underside wherein each top and underside have the same dimension (the horizontal side) which is larger than the dimension (the vertical side) of the product and the slat, see figs. 1A-1C;
a2) the top side of the product (10) and the top side of the optical element (30) each has a groove structure constituted by a plurality of isosceles triangular prisms, see column 5 on lines 36-38, wherein the and the ridges of the prism form an overall contour defined by the vertices/peaks of the ridges, see figs. 1A-1C wherein the plurality of isosceles triangular prisms form parallel grooves and ridges in a longitudinal direction wherein each isosceles triangular prism as understood having two sidewalls and a common ridge projected on the top side; and
a3) each of the product (10) and the optical element (30) is a curable resin material, see column 5.
It is noted that while Savant et al discloses that the top side of the product (10) and the top side of the optical element (30) each has a groove structure constituted by a plurality of isosceles triangular prisms; however, Savant et al does not positively disclose the structure of the isosceles triangular prisms. However, a planar optical element having a top side and an underside wherein the top side of the optical element has a groove structure constituted by a plurality of isosceles triangular prisms is known/disclosed in the art as can be seen in the optical device provided by Vasylyev.
In particular, Vasylyev discloses an optical device (2) having an optical element (20). The optical element (20) comprises a top side (22) having a plurality of isosceles triangular prisms (50) and a planar underside, i.e., the side in contact with the element (4), see paragraph [0102] and fig. 7 wherein each of the isosceles triangular prism as described in paragraphs [0110]-[0111] and shown in figs. 8-9 comprises the following features:
a21) the sidewalls (14, 16) are at an angle with respect to one another which is constant along a transverse and longitudinal directions of a groove structure wherein the top side (22) has an overall contour defined by the vertices/peaks of the ridge formed by the two sides (14, 16);
a22) the angle defined by the sidewalls (14, 16) of each isosceles triangular prism are constant for all prisms;
a23) the sidewalls (14, 16) are symmetrical with respect to each other in relation to an area of symmetry which is oriented at right angle with the overall contour and is arranged at a center of each prism wherein the sidewalls (14, 16) reflect light substantially according to the law of reflection that angle of incident is equal to the angle of reflection, see fig. 8-9. It is noted that the area of symmetry is an area defined by a plane extend in a horizonal direction passing through the vertex/peak of the prism and parallel to the (horizontal) light as shown in fig. 8.
Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to utilize a planar strip-shaped preliminary product for producing a light-directing slat having a top side and a planar underside wherein the top side of the product has a groove structure constituted by a plurality of isosceles triangular prisms as provided by Savant et al wherein the isosceles triangular prisms each has a structure and function for guiding light as provided/suggested by Vasylyev to guiding light in an optical; device to meet a particular application.
Regarding the feature of “focusing” recited in claim 1, such feature is recited in the preamble part of the claim(s). Applicant should note that when reading the preamble in the context of the entire claim, the recitation of “focusing” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Regarding the feature of “the planer (planar?) preliminary product curvable for use in producing focusing light-directing slats as recited in claim 1, it is noted that the
planar strip-shaped preliminary product (10) used to product the optical element (30) as provided by Savant et al each is a curvable (curable?) resin material, see Savant et al in column 5, and the mentioned feature recited in present claim 1 is for a use of the product, Applicant should note that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
b) Regarding present claim 2, it is noted that the height of each isosceles triangular prism is in a range of 0.2 to 200 µm, see Savant et al in column 5 then the dimension of each sidewall of the isosceles triangular prism is less than 1/10 mm.
c) Regarding present claim 3 and 16, the sidewalls of each of the isosceles triangular prism defines/form an angle of 900.
Conclusion
11. 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.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872