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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/16/2026 has been entered.
Response to Amendments
Applicant’s amendment filed 01/16/2026 has been considered and entered.
The objections to the claims set forth in the office action mailed 10/17/2025 are withdrawn in view of the applicant’s amendments.
The rejections under 35 USC 112 set forth in the office action mailed 10/17/2025 are withdrawn in view of the applicant’s amendments.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 16 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 Objections
Claim 5 is objected to because of the following informalities:
Line 3 of claim 5 should read “…the second microheater.”.
Lines 3-4 of claim 20 should read “…second refractive index are based…”.
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.
Claim 13 is 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.
With regards to claim 13, lines 2-3 recite “…the diffractive grating comprises two or more of an incoupling grating, an outcoupling grating, or an expansion grating…”. This limitation suggests that the diffractive grating may or may not comprise an outcoupling grating. The claim then recites “…each of the first portion and the second portion is included in the outcoupling grating” in line 4, which suggests that the diffractive grating must comprise at least one outcoupling grating. The claim is indefinite because it contains opposing limitations which create confusion regarding the intended scope.
Examiners note: For the purposes of further examination, claim 13 is being interpreted as only requiring the “first portion and the second portion” to be included in the outcoupling grating in the event of at least one outcoupling grating being one of the “two or more” present.
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 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.
Claims 1-5, 7-13, 15-17, 20, and 98-100 are rejected under 35 U.S.C. 103 as being unpatentable over Park (US 20060078257 A1).
With regards to claim 1, Park discloses a head-mounted display, comprising:
an image source configured to provide an image beam (Park/Fig13/Image source 72);
an optical element (Fig13/Optical element 73) comprising a diffractive grating (Fig13/Diffractive grating [Outlined below]);
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a first microheater (Fig13/First microheater 78) corresponding to a first portion (Fig13/First portion 77) of the diffractive grating, wherein a first refractive index of the first portion of the diffractive grating is selectively modulated (Fig13; Paragraph 83): and
a second microheater (Fig13/Second microheater 80) corresponding to a second portion (Fig13/Second portion 79) of the diffractive grating, wherein the second portion of the diffractive grating is distinct from the first portion of the diffractive grating, wherein a second refractive index of the second portion of the diffractive grating is selectively modulated (Fig13; Paragraph 83):
wherein the optical element is configured to convert the image beam into an output image (Paragraph 5/Lines 8-12) by diffracting the image beam through the diffractive grating, propagating the image beam through the optical element, and directing the image beam through a surface of the optical element.
Park does not explicitly state how the first and second heaters are powered and controlled, and by extension does not explicitly state that a first voltage source is electrically coupled to the first microheater to apply a first voltage to the first microheater, or that a second voltage source is electrically coupled to the second microheater to apply a second voltage to the second microheater. However, the use of voltage as a means to power and control a respective heater was well known in the art at the time of filing. It would have been obvious to one having ordinary skill in the art effective filing date of the invention to electrically control the first and second heaters of Park with first and second voltage sources since it was known in the art that an individual heater can reliably be controlled and powered via electrical means.
With regards to claims 3 and 4, Park discloses the head-mounted display of claim 1, wherein each of the first microheater and the second microheater comprise a transparent conductive material. Park does not explicitly disclose the material from which the first and second microheater are formed. However, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select indium tin oxide as the material from which the first and second microheater of Park are formed since doing so would allow for the microheaters simultaneously be light permeable and electrically controlled.
With regards to claim 5, Park discloses the head-mounted display of claim 1, wherein the diffractive grating comprises each of the first microheater and the second microheater (Fig13/Diffractive grating [Outlined below]).
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With regards to claim 7, Park discloses the head-mounted display of claim 1, wherein the first portion of the diffractive grating embedded at a first position along a length of the optical element and the second portion of the diffractive grating is embedded at a second position along the length of the optical element (Fig13).
With regards to claim 8, Park discloses the head-mounted display of claim 1, wherein the first portion of the diffractive grating is embedded at a first depth in the optical element and the second portion of the diffractive grating is embedded at a second depth in the optical element (Fig13).
With regards to claim 9, Park discloses the head-mounted display of claim 1, wherein the diffractive grating is a surface relief grating (Figs3&13) or a buried diffractive grating.
With regards to claim 11, Park the head-mounted display of claim 1, wherein the diffractive grating is a surface relief grating, and the optical element further comprises a buried diffractive grating (Fig13/Buried diffractive grating 81).
With regards to claims 12, Park discloses the head-mounted display of claim 1, wherein:
the optical element is configured to selectively modulate the first portion of the diffractive grating and the second portion of the diffractive grating by:
causing, based on applying the first voltage and the second voltage, a temperature of the second portion to be higher than a temperature of the first portion (Fig13; Paragraph 96/Lines 19-24).
Park does not explicitly disclose that the second voltage exceeds the first voltage. However, examiner notes that "…wherein: the second voltage exceeds the first voltage…" is an intended use of the optical element. It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)); and that if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)). See MPEP § 2111.02, II and MPEP § 2114, II.
With regards to claim 13, Park discloses the head-mounted display of claim 12, wherein: the diffractive grating comprises two or more of an incoupling grating, an outcoupling grating, or an expansion grating, and each of the first portion and the second portion is included in the outcoupling grating (Fig13; [See the 35 USC 112 section of this office action]).
With regards to claim 15, Park discloses the head-mounted display of claim 1, wherein the optical element is configured to selectively modulate the first refractive index and the second refractive index (Fig13/[Heaters located near respective gratings]).
Park does not explicitly disclose that the selective modulation is based at least in part on user preferences indicated in a profile of a user associated with the head-mounted display. However, examiner notes that "…based at least in part on user preferences indicated in a profile of a user associated with the head-mounted display…" is an intended use of the optical element. It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)); and that if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)). See MPEP § 2111.02, II and MPEP § 2114, II.
With regards to claim 16, Park discloses a method comprising:
directing an image beam into an optical element (Fig13/Optical element 73), the optical element comprising a diffractive grating (Fig13/Diffractive grating [Outlined below]);
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wherein a first microheater (Fig13/First microheater 78) corresponds to a first portion (Fig13/First portion 77) of the diffractive grating;
wherein a second microheater (Fig13/Second microheater 80) corresponding to a second portion (Fig13/Second portion 79) of the diffractive grating, wherein the second portion of the diffractive grating is distinct from the first portion of the diffractive grating;
selectively modulating a first refractive index of the first portion of the diffractive grating and a second refractive index of the second portion of the diffractive grating by:
converting the image beam into an output image (Paragraph 5/Lines 8-12) by diffracting the image beam through the diffractive grating while selectively modulating the first refractive index and the second refractive index along the diffractive grating, and directing the image beam through a surface of the optical element (Fig13; Paragraph 83).
Park does not explicitly disclose how the first and second heaters are powered and controlled, and by extension does not disclose a first voltage source is electrically coupled to the first microheater, a second voltage source is electrically coupled to the second microheater, applying, application of a first voltage to the first microheater, or application a second voltage to the second microheater. However, the use of voltage as a means to power and control a respective heater was well known in the art at the time of filing. It would have been obvious to one having ordinary skill in the art effective filing date of the invention to electrically control the first and second heaters of Park with first and second voltage sources since it was known in the art that an individual heater can reliably be controlled and powered via electrical means.
With regards to claim 17, Park discloses the method of claim 16, wherein the diffractive grating comprises each of the first microheater and the second microheater (Fig13/Diffractive grating [Outlined below]).
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With regards to claim 20, Park discloses the method of claim 16, wherein the first and second voltages, and time periods for applying the first and second voltages, for selectively modulating the first refractive index and the second refractive index is based at least in part on user preferences indicated in a profile associated with a user of a head-mounted display comprising the optical element (Paragraph 58/Lines 4-10).
With regards to claim 98, Park discloses the method of claim 16. Park does not explicitly state that the first and second voltages, and time periods for applying the first and second voltages, for selectively modulating the first refractive index and the second refractive index is based at least in part on a current ambient temperature of an environment that the optical element is in. However, the ambient temperature an element is in will necessarily influence the temperature of said element. Thus, said ambient temperature must necessarily be taken into consideration when actively controlling the temperature of said element. In turn, the claimed properties of claim 98 are presumed to be inherent to the structure of the optical fiber of claim 98. When a structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (see MPEP 2112.01). The patentability of a product depends only on the claimed structural limitations of the product. Since Park discloses an optical element that is substantially identical to that of the claimed invention, the claimed properties or functions are thus presumed to be inherent. The burden is on the applicant to show that the prior art device does not possess the claimed properties or is not capable of these functional characteristics. (See MPEP 2112.01). The examiner notes that if the claimed structure does not possess the claimed properties or is not capable of performing the claimed functions, then the claims would be incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections necessary to clearly and precisely define the invention, wherein the structure necessary to provide the claimed properties or perform the claimed functions is essential.
With regards to claim 99, Park discloses the head-mounted display of claim 1, further comprising control circuitry (Fig2/Control circuitry WCC and DCC). Park does not explicitly state that the control circuitry is configured to
determine a first temperature of the first portion of the diffractive grating;
determine a second temperature of the second portion of the diffractive grating;
compare the first temperature to the threshold temperature;
compare the second temperature to the threshold temperature;
based at least in part on the comparing of the first temperature to the threshold temperature, causing the first voltage source to apply the first voltage to the first portion of the diffractive grating; and
based at least in part on the comparing of the second temperature to the threshold temperature, causing the second voltage source to apply the second voltage to the second portion of the diffractive grating.
However, examiner notes that the above limitations represent an intended use of the control circuitry. It has been held that “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)); that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all of the structural limitations of the claim (Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987)); and that if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim (In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)). See MPEP § 2111.02, II and MPEP § 2114, II.
With regards to claim 100, Park discloses a head-mounted display, comprising: an image source configured to provide an image beam (Park/Fig13/Image source 72);
an optical element (Fig13/Optical element 73) comprising a diffractive grating (Fig13/Diffractive grating [Outlined below]), and a plurality of microheaters (Fig13/First microheater 78) corresponding to respective portions of the diffractive grating, wherein refractive indexes of corresponding portions of the diffractive grating are selectively modulated (Fig13; Paragraph 83); and
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wherein the optical element is configured to convert the image beam into an output image by diffracting the image beam through the diffractive grating, propagating the image beam through the optical element, and directing the image beam through a surface of the optical element (Paragraph 5/Lines 8-12), and wherein selectively modulating the respective refractive indexes of the corresponding portions of the diffractive grating is based at least in part on a current ambient temperature of an environment that the head-mounted display is in.
Park does not explicitly state how the first and second heaters are powered and controlled, and by extension does not explicitly state that a plurality of voltages is applied to the plurality of microheaters. However, the use of voltage as a means to power and control a respective heater was well known in the art at the time of filing. It would have been obvious to one having ordinary skill in the art effective filing date of the invention to electrically control the first and second heaters of Park with first and second voltage sources since it was known in the art that an individual heater can reliably be controlled and powered via electrical means.
Park does not explicitly state that the selective modulation is based at least in part on a current ambient temperature of an environment that the optical element is in. However, the ambient temperature an element is in will necessarily influence the temperature of said element. Thus, said ambient temperature must necessarily be taken into consideration when actively controlling the temperature of said element. In turn, the claimed properties of claim 98 are presumed to be inherent to the structure of the optical fiber of claim 98. When a structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (see MPEP 2112.01). The patentability of a product depends only on the claimed structural limitations of the product. Since Park discloses an optical element that is substantially identical to that of the claimed invention, the claimed properties or functions are thus presumed to be inherent. The burden is on the applicant to show that the prior art device does not possess the claimed properties or is not capable of these functional characteristics. (See MPEP 2112.01). The examiner notes that if the claimed structure does not possess the claimed properties or is not capable of performing the claimed functions, then the claims would be incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections necessary to clearly and precisely define the invention, wherein the structure necessary to provide the claimed properties or perform the claimed functions is essential.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Park (US 20060078257 A1) as applied to claim 1 above in view of Kuo (US 20170047484 A1).
With regards to claim 6, Park discloses the head-mounted display of claim 1. Park is silent regarding each of the first microheater and the second microheater being embedded in the diffractive grating. However, the practice of embedding a microheater in a grating exists in the art as exemplified by Kuo.
Park and Kuo are considered to be analogous in the field of semiconductor light emitting structures. Park discloses an optical element comprising a diffractive grating and first and second microheaters. Kuo teaches first and second microheaters embedded in a grating of an optical element (Kuo/Fig4/Microheaters 110 and Grating 108). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to embed the microheaters of Park in the grating of Park as suggested by Kuo since doing so would allow for greater insulation of the microheaters from the exterior of the optical element.
Allowable Subject Matter
Claims 14 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
With regards to claim 14, the prior art of record fails to disclose or reasonably suggest the head-mounted display of claim 1, wherein the optical element is configured to convert the image beam into the output image by: receiving the image beam at an incoupling grating of the optical element, which diffracts the image beam towards an expansion grating of the optical element; expanding the image beam by the expansion grating of the optical element, and transmitting the image beam from the expansion grating to an outcoupling grating; and diffracting the expanded image beam by the outcoupling grating towards an eyeball of a wearer of the head-mounted display in addition to the accompanying features of the independent claim and any intervening claims. The closest prior art was relied upon in the rejection set forth above.
With regards to claim 19, the prior art of record fails to disclose or reasonably suggest the method of claim 16, wherein the diffractive grating is a first diffractive grating, the optical element further comprises a second diffractive grating, and the method further comprising: causing the second voltage applied to the second portion of the first diffractive grating to exceed the first voltage applied to the first portion of the first diffractive grating based at least in part on determining that the second portion of the first diffractive grating is further from the second diffractive grating along a length of the optical element than the first portion of the first diffractive grating; and selectively modulating the first refractive index and the second refractive index along the diffractive grating further comprises causing, based on applying the first voltage and the second voltage, a temperature of the second portion to be higher than a temperature of the first portion in addition to the accompanying features of the independent claim and any intervening claims. The closest prior art was relied upon in the rejection set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Marc E Manheim whose telephone number is (703)756-1873. The examiner can normally be reached 6:30am - 5pm E.T., Monday - Tuesday and Thursday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas A Hollweg can be reached at (571) 270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARC E MANHEIM/Examiner, Art Unit 2874
/THOMAS A HOLLWEG/Supervisory Patent Examiner, Art Unit 2874