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 .
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.
Response to Arguments
Applicant’s amendments have overcome the USC 101 rejection.
Applicant’s amendments have overcome the USC 112(b) rejection of claim 9 regarding the single indices of refraction, however the issue of correct(ing) aberrations remains.
Applicant’s amendments did not address the USC 112(b) rejection of claim 10.
Applicant’s amendments did not address the USC 112(d) rejection of claim 14.
Applicant’s arguments with respect to claim 9 as they pertain to the prior art have been considered but are moot in view of the new ground(s) of rejection, as necessitated by amendment.
Claim Rejections - 35 USC § 112
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 9-15 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.
As to claim 9, the claim recites “correct aberrations” which is a relative/subjective term that renders the claim indefinite (MPEP 2173.05(b)). The term “correct aberrations” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Specifically, such language appears to be both subjective and dependent upon a variable object. The second optical element has no objectively defined aberrations, thus what “correction” the GRIN lens applies appears entirely arbitrary and dependent upon the variable aberrations of the second optical element. Furthermore, what constitutes a correction is not particularly defined. Is this a reduction of aberration? Is this an elimination of aberration? Is this any and all aberrations (spherical, chromatic, coma, etc.)?
For purposes of compact prosecution, so long as the prior art teaches a second optical element and the GRIN lens in use, such aberrations will have been considered “corrected” to any arbitrary extent.
As to claim 9, the claim recites “based on surrounding lenses of the first optical element” lacks antecedent basis (MPEP 2173.05(e)). Specifically it has not been established that the first optical element has lenses.
Claims 10-15 are rejected as dependent upon claim 9.
As to claim 10, the claim recites “layered polymeric/inorganic composite structure” which is unclear if this syntax means the structure is layered polymer, or layered inorganic, or layered polymeric and inorganic. For purposes of compact prosecution, Examiner will interpret the claim as the layering can be either polymeric, inorganic, or both as is consistent with Applicant’s specification para. [0040].
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As to claim 14, the claim recites the intended use of the eyepiece of claim 9 without further specifying a limitation to the method (e.g. another step) or any structure to the eyepiece itself.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Visconti et al. (Eyepiece designs with radial and spherical polymer gradient-index optical elements - herein Visconti; of record) in view of Baer et al. (US 2005/0105191 - Baer).
As to claim 9, Visconti teaches a method for forming and using an optical eyepiece (Visconti Abstract), comprising a plurality of refractive optical elements along an optical axis (Visconti Fig. 2a), the plurality of optical elements including a first optical element and a second optical element (Visconti Fig. 2a - first and second lenses), the first optical element and the second optical element being homogeneous and having single indices of refraction (Visconti Fig. 2a; Table 3; Section 4);
manufacturing a GRIN lens such that the index of refraction of the GRIN lens transitions smoothly (Visconti Figs. 1-4; Introduction);
the GRIN lens having one or more surfaces shaped based on surrounding lenses of the first optical element (Visconti Figs. 2a,b,c - as shown, non-GRIN second lens in 2a is replaced by GRIN lens in 2b and 2c, such GRIN having surfaces shaped as per the 2-lens system design; Figs. 3a,b,c; Figs. 4a,b,c; Section 5.1 - e.g. Plossl);
replacing the first optical element with a GRIN lens having an index of refraction that varies across its volume (Visconti Fig. 2b; Fig. 2c; Table 3; Section 4), the GRIN lens being disposed adjacent to the second optical element along the optical axis (Visconti Fig. 2b; Fig. 2c), the GRIN lens being configured to correct aberrations produced by the second optical element (Visconti Fig. 2b; Fig. 2c - 20deg. HFOV and On-axis plots; Table 3; Section 4);
and passing light through the optical eyepiece (Visconti Figs. 2b, 2c).
Visconti doesn’t specify the manufacturing uses a first number of layers with varying indices of refraction stacked together, the first number of layers are formed with respective thicknesses, such that the index of refraction of the GRIN lens transitions smoothly between the first plurality of layers.
In the same field of endeavor Baer teaches manufacturing a GRIN using a first number of layers with varying indices of refraction stacked together (Baer Fig. 8; para. [0049], [0089]), wherein the number of layers are formed with respective thicknesses (Baer Fig. 8; para. [0089]-[0091]), such that the index of refraction of the GRIN lens transitions smoothly between the first plurality of layers (Baer Fig. 8; Fig. 9; para. [0090]-[0091]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to manufacture the GRIN with multilayering since, as taught by Baer, such processes allow for generating GRIN lenses with the desired refractive index gradient (Baer para. [0020]).
As to claim 10, Visconti in view of Baer teaches all the limitations of the instant invention as detailed above with respect to claim 9, and Visconti further teaches the GRIN lens is a polymeric nanolayer LGRIN lens or a layered polymeric/inorganic composite structure (Visconti Section 1 - PMMA/PS GRIN system).
As to claim 11, Visconti in view of Baer teaches all the limitations of the instant invention as detailed above with respect to claim 9, and Visconti further teaches the plurality of refractive optical elements is arranged in one of a Huygens, Ramsden, Kellner, Plossl, Orthoscopic, Erfle, Scidmore, Nagler, Brandon, Cooke (Visconti - Section 5.1).
As to claim 12, Visconti in view of Baer teaches all the limitations of the instant invention as detailed above with respect to claim 9, and Visconti further teaches the index of refraction of the GRIN lens varies smoothly from a first value at a first surface to a second value at a second surface (Visconti - Section 2, equations (1), (2); Section 4; Figs. 2b, 2c; Table 3).
As to claim 13, Visconti in view of Baer teaches all the limitations of the instant invention as detailed above with respect to claim 9, and Visconti further teaches the GRIN lens is positioned to physically contact the second optical element (Visconti - Section 5.1 - Plossl design being two sets of doublets, thus any one lens being a GRIN necessarily is in physical contact with any other second optical element).
As to claim 14, Visconti in view of Baer teaches all the limitations of the instant invention as detailed above with respect to claim 9, and Visconti further teaches the eyepieces is configured for use with one of a telescope, microscope, night vision device, binoculars, and heads-up display (Visconti Figs. 2b, c; Section 5.1).
As to claim 15, Visconti in view of Baer teaches all the limitations of the instant invention as detailed above with respect to claim 9, and Visconti further teaches positioning an optical sensor configured to receive light rays passing through the GRIN lens and second optical element (Visconti Figs. 2b, 2c - image plane and associated aberration plots).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Baer et al. (US 7,002,754) is cited as the US Pat. of Baer above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 September 5, 2025