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 .
DETAILED ACTION
Response to Arguments
Applicant’s arguments filed 08/24/2026 have been fully considered but they are not persuasive.
The applicant argues that Erler does not disclose the grating 11A as a reflective diffractive in-coupler and the grating 11B as a transmissive diffractive in-coupler. The examiner respectfully disagrees. Erler et al. discloses The input coupling grating (11, 11A, 11B) does not necessarily have to diffract a plane wave as light beam 20, 20A, 20B, but can for example also be configured to diffract a divergent wave, which is produced for example by an imaging device, as a plane wave in the direction of the expander grating (see at least paragraph 0060). In other words, Erler et al. (figure 7) discloses coupling light of the first color into the waveguide using the reflective diffractive in-coupler (11B); and coupling light of the second color into the waveguide using the first transmissive diffractive in-coupler (11A).
The applicant further argues that a person of ordinary skill in the art of near-eye displays would have had no motivation to consult the unrelated medical and chemical biosensing art of Sinclair. The Examiner's combination of Sinclair with Erler is a classic example of impermissible hindsight reconstruction. The examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill before the effective filing date of the claimed invention, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, one of ordinary skill in the art would recognize combining Sinclair with Erler, in order to achieve a higher evanescent field than bulk field and provide a maximum field of view.
In other words, Sinclair et al. (figures 1-2) teaches Si waveguide having a thickness near 220 nm (see at least paragraphs 0028-0031). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spacing as taught by Sinclair et al. in order to achieve a higher evanescent field than bulk field and provide a maximum field of view. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to since it was known in the art that a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being no greater than 400 nm. One of ordinary skill in the art before the effective filing date of the claimed invention to have the spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being less than 400 nm, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In addition, it is well known to one of ordinary skill in the art before the effective filing date of the claimed invention that in arrayed waveguide gratings (AWGs), the assertion that spacing "doesn't matter" for diffraction is shorthand for a specific design reality: the phase shifts required for diffraction are completely controlled by the individual path length differences (Δ L) of the waveguides, rather than the physical distance between them.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
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 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.
Claims 1, 3, 9, 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Singer et al. (US 2018/0299678) in view of Valera et al. (US 2015/0086163); further in view of Sinclair et al. (WO 2010/063116).
Regarding claim 1, Singer et al. (figure 12D) discloses an optical system comprising:
a waveguide (44) having a first surface and a second surface substantially opposite the first surface;
a reflective diffractive in-coupler in the waveguide between the first and second surfaces (48, 50; the first input coupling element and/or the at least one second input coupling element have/has a transmissive optical diffraction grating structure or a reflective optical diffraction grating structure; see at least paragraph 0048); and
a first transmissive diffractive in-coupler (48, 50; the first input coupling element and/or the at least one second input coupling element have/has a transmissive optical diffraction grating structure or a reflective optical diffraction grating structure; see at least paragraph 0048) in the waveguide between the reflective diffractive in-coupler and the second surface; and
wherein the reflective diffractive in-coupler and the first transmissive diffractive in-coupler each comprise a periodic array of elements (48, 50).
Singer et al. discloses the limitations as shown in the rejection of claim 1 above. However, Singer et al. is silent regarding the refractive indices and wherein a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler is no greater than 400 nm. Valera et al. (figures 1A-1B) teaches the reflective diffractive in-coupler and the first transmissive diffractive in-coupler (8-9; see at least paragraphs 0053-0056) each having a refractive index higher than a refractive index of the waveguide (the reflective coatings may be TiO.sub.2 having a refractive index of 2.4 (for light of 550 nm wavelength) whereas the first substrate (3) may be a Silica glass (SiO.sub.2) having a refractive index of 1.46 (for light of 550 nm wavelength); see at least paragraph 0057). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the refractive indices as taught by Valera et al. in order to enhance the diffractive efficiency of the blazed grating structure at the first and second diffractive regions and suppress the diffractive efficiency of all other regions of the grating structure. In addition, it is well known to one of ordinary skill in the art before the effective filing date of the claimed invention to have the refractive indices of the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being higher than a refractive index of the waveguide. One of ordinary skill in the art before the effective filing date of the claimed invention would recognize achieving a balance of those parameters in order to increase diffraction efficiency and tightly control how light is coupled in or out.
Sinclair et al. (figures 1-2) teaches Si waveguide having a thickness near 220 nm (see at least paragraphs 0028-0031). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spacing as taught by Sinclair et al. in order to achieve a higher evanescent field than bulk field and provide a maximum field of view. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to since it was known in the art that a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being no greater than 400 nm. One of ordinary skill in the art before the effective filing date of the claimed invention to have the spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being less than 400 nm, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In addition, it is well known to one of ordinary skill in the art before the effective filing date of the claimed invention that in arrayed waveguide gratings (AWGs), the assertion that spacing "doesn't matter" for diffraction is shorthand for a specific design reality: the phase shifts required for diffraction are completely controlled by the individual path length differences (Δ L) of the waveguides, rather than the physical distance between them. Therefore, Singer et al. as modified by Valera et al. and Sinclair et al. teaches wherein a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler is no greater than 400 nm.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 3, Singer et al. as modified by Valera et al. and Sinclair et al. (see at least paragraphs 0028-0031) teaches wherein the spacing between the reflective diffractive in-coupler and the transmissive diffractive in-coupler is in the range of 200 nm to 350 nm.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 9, Singer et al. discloses the limitations as shown in the rejection of claim 1 above. However, Singer et al. is silent regarding d1M1<d2M2. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have d1M1<d2M2, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
Regarding claim 16, Singer et al. (figure 12D) discloses an optical system comprising:
forming a first diffraction grating on a first waveguide substrate layer (48, 50; the first input coupling element and/or the at least one second input coupling element have/has a transmissive optical diffraction grating structure or a reflective optical diffraction grating structure; see at least paragraph 0048);
forming a second diffraction grating on a second waveguide substrate layer (48, 50; the first input coupling element and/or the at least one second input coupling element have/has a transmissive optical diffraction grating structure or a reflective optical diffraction grating structure; see at least paragraph 0048); and
combining the first and second waveguide substrate layers into a combined waveguide with the first and second diffraction gratings on the interior of the combined waveguide (figure 12D).
Singer et al. discloses the limitations as shown in the rejection of claim 16 above. However, Singer et al. is silent regarding the refractive indices and wherein a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler is no greater than 400 nm. Valera et al. (figures 1A-1B) teaches the reflective diffractive in-coupler and the first transmissive diffractive in-coupler (8-9; see at least paragraphs 0053-0056) each having a refractive index higher than a refractive index of the waveguide (the reflective coatings may be TiO.sub.2 having a refractive index of 2.4 (for light of 550 nm wavelength) whereas the first substrate (3) may be a Silica glass (SiO.sub.2) having a refractive index of 1.46 (for light of 550 nm wavelength); see at least paragraph 0057). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the refractive indices as taught by Valera et al. in order to enhance the diffractive efficiency of the blazed grating structure at the first and second diffractive regions and suppress the diffractive efficiency of all other regions of the grating structure. In addition, it is well known to one of ordinary skill in the art before the effective filing date of the claimed invention to have the refractive indices of the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being higher than a refractive index of the waveguide. One of ordinary skill in the art before the effective filing date of the claimed invention would recognize achieving a balance of those parameters in order to increase diffraction efficiency and tightly control how light is coupled in or out.
Sinclair et al. (figures 1-2) teaches Si waveguide having a thickness near 220 nm (see at least paragraphs 0028-0031). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spacing as taught by Sinclair et al. in order to achieve a higher evanescent field than bulk field and provide a maximum field of view. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to since it was known in the art that a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being no greater than 400 nm. One of ordinary skill in the art before the effective filing date of the claimed invention to have the spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being less than 400 nm, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In addition, it is well known to one of ordinary skill in the art before the effective filing date of the claimed invention that in arrayed waveguide gratings (AWGs), the assertion that spacing "doesn't matter" for diffraction is shorthand for a specific design reality: the phase shifts required for diffraction are completely controlled by the individual path length differences (Δ L) of the waveguides, rather than the physical distance between them. Therefore, Singer et al. as modified by Valera et al. and Sinclair et al. teaches wherein a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler is no greater than 400 nm.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 17, Singer et al. as modified by Valera et al. and Sinclair et al. (see at least paragraphs 0028-0031) teaches wherein the spacing between the reflective diffractive in-coupler and the transmissive diffractive in-coupler is in the range of 200 nm to 350 nm.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Claims 13, 15, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Erler et al. (US 2019/0187465) in view of Valera et al. (US 2015/0086163); further in view of Sinclair et al. (WO 2010/063116) and Singer et al. (US 2018/0299678).
Regarding claim 13, Erler et al. (figure 7) discloses an optical method comprising:
providing light having at least first and second colors at an input region of a waveguide, wherein the waveguide includes a first surface and a second surface substantially opposite the first surface, and wherein the input region includes a reflective diffractive in-coupler in the waveguide between the first and second surfaces and a first transmissive diffractive in-coupler in the waveguide between the reflective diffractive in-coupler and the second surface (70);
coupling light of the first color into the waveguide using the reflective diffractive in-coupler (11B); and
coupling light of the second color into the waveguide using the first transmissive diffractive in-coupler (11A).
Erler et al. discloses the limitations as shown in the rejection of claim 13 above. However, Erler et al. is silent regarding the refractive indices, color, and wherein a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler is no greater than 400 nm. Valera et al. (figures 1A-1B) teaches the reflective diffractive in-coupler and the first transmissive diffractive in-coupler (8-9; see at least paragraphs 0053-0056) each having a refractive index higher than a refractive index of the waveguide (the reflective coatings may be TiO.sub.2 having a refractive index of 2.4 (for light of 550 nm wavelength) whereas the first substrate (3) may be a Silica glass (SiO.sub.2) having a refractive index of 1.46 (for light of 550 nm wavelength); see at least paragraph 0057). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the refractive indices as taught by Valera et al. in order to enhance the diffractive efficiency of the blazed grating structure at the first and second diffractive regions and suppress the diffractive efficiency of all other regions of the grating structure. In addition, it is well known to one of ordinary skill in the art before the effective filing date of the claimed invention to have the refractive indices of the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being higher than a refractive index of the waveguide. One of ordinary skill in the art before the effective filing date of the claimed invention would recognize achieving a balance of those parameters in order to increase diffraction efficiency and tightly control how light is coupled in or out.
Singer et al. (figure 12D) teaches wherein the reflective diffractive in-coupler and the first transmissive diffractive in-coupler each comprise a periodic array of elements (48, 50). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the in-couplers as taught by Singer et al. in order to correct induced chromatic aberrations.
Sinclair et al. (figures 1-2) teaches Si waveguide having a thickness near 220 nm (see at least paragraphs 0028-0031). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spacing as taught by Sinclair et al. in order to achieve a higher evanescent field than bulk field and provide a maximum field of view. In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to since it was known in the art that a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being no greater than 400 nm. One of ordinary skill in the art before the effective filing date of the claimed invention to have the spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being less than 400 nm, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In addition, it is well known to one of ordinary skill in the art before the effective filing date of the claimed invention that in arrayed waveguide gratings (AWGs), the assertion that spacing "doesn't matter" for diffraction is shorthand for a specific design reality: the phase shifts required for diffraction are completely controlled by the individual path length differences (Δ L) of the waveguides, rather than the physical distance between them. Therefore, Erler et al. as modified by Valera et al., Sinclair et al., and Singer et al. teaches wherein a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler is no greater than 400 nm.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 15, Erler et al. (figure 7) discloses wherein the reflective diffractive in-coupler has a grating period selected to couple blue light into the waveguide, and wherein the transmissive diffractive in-coupler has a grating period selected to couple red light into the waveguide (see at least paragraphs 0075-0076).
Regarding claim 19, Sinclair et al. (figures 1-2) teaches Si waveguide having a thickness near 220 nm (see at least paragraphs 0028-0031). However, Erler et al. as modified by Sinclair et al. is silent regarding wherein a spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler is in the range of 200 nm to 350 nm. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spacing in order to provide a maximum field of view. In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the spacing between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler being in the range of 200 nm to 350 nm, since it has been held that where the general conditions of a claim, including are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955).
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Claims 2, 7-8, 10-11, 18, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Singer et al. (US 2018/0299678) in view of Valera et al. (US 2015/0086163); further in view of Sinclair et al. (WO 2010/063116) and Erler et al. (US 2019/0187465).
Regarding claim 2, Singer et al. discloses the limitations as shown in the rejection of claim 1 above. However, Singer et al. is silent regarding wherein the reflective diffractive in-coupler has a grating period selected to couple blue light into the waveguide, and wherein the transmissive diffractive in-coupler has a grating period selected to couple red light into the waveguide. Erler et al. (figure 7) discloses wherein the reflective diffractive in-coupler has a grating period selected to couple blue light into the waveguide, and wherein the transmissive diffractive in-coupler has a grating period selected to couple red light into the waveguide (see at least paragraphs 0075-0076). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical system as taught by Erler et al. in order to reduce crosstalk between the channels.
The limitation, “the reflective diffractive in-coupler has a grating period selected to couple blue light into the waveguide, and wherein the transmissive diffractive in-coupler has a grating period selected to couple red light into the waveguide” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Singer et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 7, Erler et al. (figure 7) discloses an image generator operative to provide an image at an input region including the reflective diffractive in-coupler and the first transmissive diffractive in-coupler (13; figure 4; see at least paragraph 0076).
Regarding claim 8, Erler et al. (figure 7) discloses wherein the optical system is configured to substantially replicate the image at at least one output pupil region, the output pupil region including at least one reflective diffractive out-coupler and at least one transmissive diffractive out-coupler (12A and 12B).
Regarding claim 10, Erler et al. (figure 7) discloses an air gap between the reflective diffractive in-coupler and the first transmissive diffractive in-coupler.
Regarding claim 11, Erler et al. (figure 7) discloses wherein the reflective diffractive in-coupler and the first transmissive diffractive in-coupler have different grating periods.
Regarding claim 12, Erler et al. (figure 7) discloses wherein the reflective diffractive in-coupler has a grating period smaller than a grating period of the first transmissive diffractive in-coupler.
Regarding claim 18, Erler et al. (figure 7) discloses wherein the reflective diffractive in-coupler and the first transmissive diffractive in-coupler have different grating periods.
Regarding claim 20, Erler et al. (figure 7) discloses wherein the reflective diffractive in-coupler has a grating period smaller than a grating period of the first transmissive diffractive in-coupler.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN NGUYEN whose telephone number is (571)270-1428. The examiner can normally be reached on Monday - Thursday, 8:00 AM -6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Carruth, can be reached at 571-272-9791. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871
