DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. For clarity of the record, Applicant indicates in “Remarks”, page 8, filed February 25, 2026, that the amended claims submitted on the same date constitute amendments to claims 1, 3-8, and 11-14, with cancellations to claims 7 and 13. The amended claims submitted February 25, 2026, have amendments to claims 1-5, 7-9, 11-12, and 14, with cancellations to claims 6 and 13, and are examined as such.
3. Applicant’s arguments, see "Remarks", page 8, filed February 25, 2026, with respect to the claim objections of claims 4 and 11 and the rejections of claims 2-7 and 9-14 under 35 U.S.C. §112(a) and §112(b) have been fully considered and are persuasive. The claim objections of claims 4 and 11 and the rejections of claims 2-7 and 9-14 under 35 U.S.C. §112(a) and §112(b) of December 3, 2025, have been withdrawn.
4. For clarity of the record, Applicant indicates in “Remarks”, page 9, filed February 25, 2026, that Examiner stated that the arguments of October 28, 2025, were persuasive regarding the rejections of claims 1-14 under 35 U.S.C. §103 that occurred in the Non-Final Rejection of July 29, 2025. Examiner would, respectfully, draw Applicant’s attention that Examiner had written:
“Applicant’s arguments, see "Remarks" pages 9-11, filed October 28, 2025, with respect to the amended claims overcoming the rejections of claims 1-14 under 35 USC §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of 35 USC §112 and §103” [emphasis added]. As explained in telephonic communications, Examiner had expressed that the amendments to the claims succeeded in overcoming the prior art rejections of July 29, 2025, and necessitated a new grounds of rejection – as indicated on page 3 para. 3 and page 18 of the Final Rejection mailed December 3, 2025.
Respectfully, Examiner in no way indicated that the remainder of Applicant’s arguments regarding the rejections of 35 U.S.C. §103 were persuasive, as Examiner went on to state that those arguments were not persuasive on pages 3-4 para. 4.
5. Applicant's arguments filed February 25, 2026, regarding improper combinations of Sao (US 20180166489 A1; provided in prior PTO-892), in view of Courter (US 7516557 B2; provided in prior PTO-892) have been fully considered but they are not persuasive.
Regarding page 9 para. 3 – page 10 para. 1, 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 at the time the claimed invention was made, 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).
Regarding page 11 para. 2 – page 12 para. 1, page 13 para. 2 – page 16 para. 2, and page 17 para. 1 – page 18 para. 1, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that Sao is an imaging device for modulating light (pages 10, 12-14, and 19-20), 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. As Sao is a digital imaging device capable of modulating light, it is certainly capable of modulating sunlight.
In response to applicant’s argument that Sao does not teach “a dual-surfaced patterned light mask having patterned markings on both the top surface and the bottom surface that are laterally aligned with each other”, Examiner would, respectfully, draw Applicant’s attention to Sao Fig. 2 [Image 1 below], where it can be clearly seen that the patterns (104, 105) along the top and bottom surface (dual-surfaced) of the grid substrate 102a (light mask) are laterally aligned with each other.
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Image 1 – Sao, Fig. 2
In response to applicant's argument that Courter is a "solar site selection apparatus and method" that "relies on a solar trace chart" which is different than "sun tracking" (pages 14, 18, and 20), 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. As Courter uses a digital imaging device to record a sun track [col. 1 lines 43-49] to make a sun trace chart, it is certainly capable of tracking the sun.
6. Applicant’s arguments with respect to claims 1-5 and 8-12 rejected under 35 U.S.C. §103 as being unpatentable over Sao in view of Courter, and in further view of Rogers (US 9691873 B2; cited in prior PTO-892) have been 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.
7. Applicant’s arguments with respect to claims 6-7 and 13-14 rejected under 35 U.S.C. §103 as being unpatentable over Sao in view of Courter, and in further view of Rogers, and in further view of Liebe ("MEMS based Sun sensor", 2001; cited in prior PTO-892) have been 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.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
8. Claims 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Sao in view of Courter and in further view of Uppili (US 20220406601 A1).
In regard to claim 1, Sao teaches a miniaturized apparatus [imaging device 101], comprising: a light mask [modulator 102]; a pixilated image sensor [image sensor 103]; wherein the light mask has a top surface and a bottom surface [shown in Fig. 1]; wherein the light mask comprises a dual-surfaced patterned light mask having patterned markings on both the top surface and bottom surface [shown in Fig. 2] that are laterally aligned with each other [Fig. 24 shows an embodiment with a linear component that would require lateral alignment, Fig. 14 shows an embodiment with lateral alignment]; wherein the patterned markings are aligned to control light transmissivity through the dual-surfaced patterned light mask [shown in Fig. 14]; and wherein the bottom surface is in closer proximity to the pixilated image sensor than the top surface [shown in Fig. 1]; an image processing unit [image processing unit 106]; wherein the dual-surface patterned light mask comprises a light mask made from a transparent or semi-transparent material {described in para. [0059]} - grid substrate 102a is composed of a transparent material such as glass or plastic}; and wherein the dual-surface patterned light mask is flexible or rigid [plastic can be flexible], wherein the light mask comprises a wafer-thin light mask with markings on its top [first grating pattern 104] and bottom surface [second grating pattern 105]; and wherein the wafer-thin light mask with markings on its top and bottom surface is in contact with the pixilated image sensor [shown in Fig. 2].
Sao does not teach a miniaturized apparatus for tracking the apparent motion of the sun.
However, Courter teaches an apparatus for tracking the apparent motion of the sun [solar exposure device 100].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sao’s imaging device with Courter’s solar exposure device [which comprises an imaging device] for the purpose of better imaging a solar trace, as taught by Courter [col. 8, lines 25-39].
Sao in view of Courter does not teach a miniaturized apparatus wherein the light mask ranges between 10-300 microns.
However, the use of silicon wafers as a light mask is well-known within the art, and Uppili teaches a manufacturing process for thin, translucent silicon wafers {para. [0035]} from ranges of 40 microns {para. [0054]} to 300 microns {para. [0035]}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Uppili’s 40-300 micron thin silicon wafer as Sao in view of Courter’s light mask for the purpose of cost saving compared to traditional lithography, as taught by Uppili {para. [0050]}.
In regard to claim 8, Sao teaches a method for making a miniaturized apparatus [imaging device 101], comprising: a light mask [modulator 102]; a pixilated image sensor [image sensor 103]; wherein the light mask has a top surface and a bottom surface [shown in Fig. 1]; wherein the light mask comprises a dual-surfaced patterned light mask having patterned markings on both the top surface and bottom surface [shown in Fig. 2] that are laterally aligned with each other [Fig. 24 shows an embodiment with a linear component that would require lateral alignment, Fig. 14 shows an embodiment with lateral alignment]; wherein the patterned markings are aligned to control light transmissivity through the dual-surfaced patterned light mask [shown in Fig. 14]; and wherein the bottom surface is in closer proximity to the pixilated image sensor than the top surface [shown in Fig. 1]; and an image processing unit [image processing unit 106]; wherein the dual-surface patterned light mask comprises a light mask made from a transparent or semi-transparent material {described in para. [0059]} - grid substrate 102a is composed of a transparent material such as glass or plastic}; and wherein the dual-surface patterned light mask is flexible or rigid [plastic can be flexible].
Sao does not teach a method for making a miniaturized apparatus for tracking the apparent motion of the sun.
However, Courter teaches an apparatus for tracking the apparent motion of the sun [solar exposure device 100].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sao’s imaging device with Courter’s solar exposure device [which comprises an imaging device] for the purpose of better imaging a solar trace, as taught by Courter [col. 8, lines 25-39].
Sao in view of Courter does not teach a miniaturized apparatus wherein the light mask ranges between 10-300 microns.
However, the use of silicon wafers as a light mask is well-known within the art, and Uppili teaches a manufacturing process for thin, translucent silicon wafers {para. [0035]} from ranges of 40 microns {para. [0054]} to 300 microns {para. [0035]}.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Uppili’s 40-300 micron thin silicon wafer as Sao in view of Courter’s light mask for the purpose of cost saving compared to traditional lithography, as taught by Uppili {para. [0050]}.
9. Claims 2-5, 7, 9-12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sao in view of Courter and in further view of Uppili and in further view of Roger.
In regard to claim 2, Sao in view of Courter and Uppili does not teach that the patterned markings of the dual-surfaced patterned light mask have patterned markings of 3 micron line widths and apertures of 9 microns.
However, Rogers teaches that patterned markings and the spaces between (apertures) can have 1-100 micron widths [col. 14 line 11 – col. 15 line 10 discuss how the different dimensions can be advantageous dependent on the application].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Rogers 1-100 microns wide markings and apertures for Sao in view of Courter and Uppili’s imaging device’s patterned marking in order to better align the light passing through the markings and aperture to a desired location, as described by Sao {para. [0071]}.
In regard to claim 3, Sao teaches the miniaturized apparatus for tracking the apparent motion of the sun of claim 2, wherein light transmitted through the wafer-thin light mask with markings on its top and bottom surface, together with the image processing unit {described in para. [0061]}.
Sao does not teach the use of sunlight as the light source, nor does it teach a device making time, latitude, direction, and date measurements.
However, Courter also teaches an apparatus for tracking the apparent motion of the sun [solar exposure device 100] that utilizes sunlight [solar radiation 97b] transmitted through the light mask [image receiver 114] and the image processing unit [image analyzer 108] to make time [col. 1 lines 50-57], latitude [col. 7 lines 20-33 describe calculation using known date], direction [using compass 106, or using an image analysis calibrator as described in col. 2 lines 22-26], and date [described in col. 7 lines 20-33] measurements; and wherein the image processing unit is configured to analyze intensity patterns formed by the light mask to output one or more of time, latitude, direction, or date [using an image analysis calibrator as described in col. 2 lines 22-26].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sao’s imaging device with Courter’s use of solar radiation and image analyzer to make time, latitude, direction, and date measurements for the purpose of better imaging the solar exposure of a location, as described by Courter [col. 7 lines 43-61].
In regard to claim 4, Sao further teaches the miniaturized apparatus for tracking the apparent motion of the sun of claim 3, wherein the light mask comprises a dual-surface patterned light mask [shown in Fig. 2]; and wherein the pixilated image sensor comprises independent photodetectors [pixels 103a].
In regard to claim 5, Sao further teaches the miniaturized apparatus for tracking the apparent motion of the sun of claim 4, wherein the pixilated image sensor collects light intensity after sunlight passes through the dual-surface patterned light mask; and wherein the light intensity is received by the image processing unit {described in para. [0061]}.
In regard to claim 7, Sao further teaches that the light mask is patterned on the top surface and the bottom surface with semi- transparent to opaque layers {made of metal or ink, or other blocking materials as described in para. [0059]} to define the intensity of light transmitted through it {described in para. 0067]}; and wherein the patterned markings on the top surface and bottom surface of the light mask are aligned with each other [shown in Fig. 1].
In regard to claim 9, Sao teaches a method for making miniaturized apparatus wherein the light mask comprises a wafer-thin light mask with markings on its top [first grating pattern 104] and bottom surface [second grating pattern 105]; and wherein the wafer-thin light mask with markings on its top and bottom surface is in contact with the pixilated image sensor [shown in Fig. 2].
Sao in view of Courter and Uppili does not teach that the patterned markings of the dual-surfaced patterned light mask have patterned markings of 3 micron line widths and apertures of 9 microns.
However, Rogers teaches that patterned markings and the spaces between (apertures) can have 1-100 micron widths [col. 14 line 11 – col. 15 line 10 discuss how the different dimensions can be advantageous dependent on the application].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Rogers 1-100 microns wide markings and apertures for Sao in view of Courter and Uppili’s imaging device’s patterned marking in order to better align the light passing through the markings and aperture to a desired location, as described by Sao {para. [0071]}.
In regard to claim 10, Sao teaches the miniaturized apparatus for tracking the apparent motion of the sun of claim 9, wherein light transmitted through the wafer-thin light mask with markings on its top and bottom surface, together with the image processing unit {described in para. [0061]}.
Sao does not teach the use of sunlight as the light source, nor does it teach a device making time, latitude, direction, and date measurements.
However, Courter also teaches an apparatus for tracking the apparent motion of the sun [solar exposure device 100] that utilizes sunlight [solar radiation 97b] transmitted through the light mask [image receiver 114] and the image processing unit [image analyzer 108] to make time [col. 1 lines 50-57], latitude [col. 7 lines 20-33 describe calculation using known date], direction [using compass 106, or using an image analysis calibrator as described in col. 2 lines 22-26], and date [described in col. 7 lines 20-33] measurements; and wherein the image processing unit is configured to analyze intensity patterns formed by the light mask to output one or more of time, latitude, direction, or date [using an image analysis calibrator as described in col. 2 lines 22-26].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sao’s imaging device with Courter’s use of solar radiation and image analyzer to make time, latitude, direction, and date measurements for the purpose of better imaging the solar exposure of a location, as described by Courter [col. 7 lines 43-61].
In regard to claim 11, Sao further teaches the miniaturized apparatus for tracking the apparent motion of the sun of claim 10, wherein the light mask comprises a dual-surface patterned light mask [shown in Fig. 2]; and wherein the pixilated image sensor comprises independent photodetectors [pixels 103a].
In regard to claim 12, Sao further teaches the miniaturized apparatus for tracking the apparent motion of the sun of claim 11, wherein the pixilated image sensor collects light intensity after sunlight passes through the dual-surface patterned light mask; and wherein the light intensity is received by the image processing unit {described in para. [0061]}.
In regard to claim 14, Sao teaches that the light mask is patterned on the top surface and the bottom surface with semi- transparent to opaque layers {made of metal or ink, or other blocking materials as described in para. [0059]} to define the intensity of light transmitted through it {described in para. 0067]}; and wherein the patterned markings on the top surface and bottom surface of the light mask are aligned with each other [shown in Fig. 1].
Sao in view of Courter and in view of Uppili does not teach fabricating patterned markings using conventional lithography.
However, Rogers teaches a light mask [substrate] with patterned markings that range in size from 1-1000 microns that are fabricated using conventional photolithography [described in para. 30].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Rogers’ markings printed using photolithography for Sao in view of Courter and in view of Uppili’s imaging device’s patterned marking in order to effectively fabricate the device without said device’s light mask being exposed to aqueous processing, as described by Rogers [col. 16 line 64 – col. 17 line 27].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL QUINN whose telephone number is (571)272-2690. The examiner can normally be reached M-F 7:30-5:30 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOHN BREENE can be reached at (571)272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL M QUINN/Examiner, Art Unit 2855
/JOHN E BREENE/Supervisory Patent Examiner, Art Unit 2855