DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments, see remarks, filed January 30, 2026, with respect to the prior art rejections based on TeKolste have been fully considered and are persuasive. Particularly, regarding the limitations “a second waveguide including a second set of grating structures disposed on a first surface of the second waveguide facing the interior of the stacked waveguide and the first surface of the first waveguide” – the examiner had interpreted “facing” as including functionally directed in addition to physically directed at, as applicant argues. While this interpretation may be valid in some cases, in this case the examiner agrees that applicant is using “facing” as exclusively meaning the second set of gratings are physically on a surface of the second waveguide closest to (and directed at) the first waveguide. This interpretation is reasonable and well within the grasp of the ordinarily skilled and consistent the broadest reasonable interpretation in light of the specification, as is required be the MPEP §2111. The examiner has reinterpreted the prior art and a reworked Final Rejection is set forth below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“wherein the stacked waveguide is configured to provide the first portion of light and the second portion of light to an eye of a user” in claim 9;
“wherein the first waveguide is configured to provide light having wavelengths associated with a first color to an eye of a user” in claim 15; and
“wherein the second waveguide is configured to provide light having wavelengths associated with a second color and a third color to the eye of the user” in claim 16.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 102
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5-7, 10-11 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by TeKolste et al. US Patent Application Publication 2016/0116739.
Regarding claim 1 TeKolste discloses a stacked waveguide (title e.g. figures 11A-11B set of stacked waveguides 1200), comprising: a first1 waveguide (e.g. waveguides 1220) including a first set of grating structures (e.g. incoupling optical element 1222) disposed on a first surface of the first waveguide (e.g. bottom surface of 1220) facing an interior of the stacked waveguide (e.g. see figure 11A), the first set of grating structures (e.g. 1222) forming a first incoupler configured to direct a first portion of received light (e.g. light rays 1242) into a body of the first waveguide (axiomatic e.g. see figure 11A); and a second waveguide (e.g. waveguides 1210) including a second set of grating structures (e.g. incoupling optical element 1212) disposed on a first surface of the second waveguide (e.g. bottom surface of 1210) facing the interior of the stacked waveguide and the first surface of the first waveguide (e.g. see figure 11A showing surface with 1212 physically facing into the stack and physically facing the surface of 1220 having 1222), the second set of grating structures (e.g. 1212) forming a second incoupler configured to direct a second portion of received light (e.g. light rays 1240) into a body of the second waveguide (axiomatic e.g. see figure 11A).
Regarding claim 5 TeKolste discloses the stacked waveguide of claim 1, as set forth above. TeKolste further discloses it is further comprising: a seal (e.g. layers 1216) configured to seal the first set of grating structures (e.g. 1222) and the second set of grating structures (e.g. 1212) in the interior of the stacked waveguide (e.g. see figure 11A).
Regarding claim 6 TeKolste discloses the stacked waveguide of claim 1, as set forth above. TeKolste further discloses wherein the first waveguide (e.g. 1220) is configured to direct light (e.g. 1242) having a first set of wavelengths (inter alia paragraph [0217] “ranges of wavelengths”).
Regarding claim 7 TeKolste discloses the stacked waveguide of claim 6, as set forth above. TeKolste further discloses wherein the second waveguide (e.g. 1210) is configured to direct light (e.g. 1242) having a second set of wavelengths of light, the second set of wavelengths different from the first set of wavelengths (inter alia paragraph [0217] “light rays 1240, 1242, 1244 have different properties, e.g., different wavelengths or ranges of wavelengths, which may correspond to different colors”).
Regarding claim 10 TeKolste discloses a wearable display (e.g. figure 2 wearable display system 80), comprising: an optical engine (paragraph [0216] “the light rays 1240, 1242, 1244 may be injected into the waveguides 1210, 1220, 1230 by one or more image injection devices”); and the stacked waveguide of claim 1 (as set forth above).
Regarding claim 11 TeKolste discloses the wearable display of claim 10, as set forth above. TeKolste further discloses wherein the first portion of light emitted by the optical engine includes light having a first set of wavelengths (e.g. 1242) and the second portion of light emitted by the optical engine includes light having a second set of wavelengths (e.g. 1240), the second set of wavelengths different from the first set of wavelengths (inter alia paragraph [0217] “light rays 1240, 1242, 1244 have different properties, e.g., different wavelengths or ranges of wavelengths, which may correspond to different colors”).
Regarding claim 14, the limitations of claim 14 are the same as the limitations of claim 5 and claim 14 is rejected for the same reasons.
Regarding claim 15 TeKolste discloses the wearable display of claim 10, as set forth above. TeKolste further discloses wherein the first waveguide (e.g. 1220) is configured to provide light having wavelengths associated with a first color (e.g. 1242 inter alia paragraph [0217]) to an eye of a user (inter alia paragraph [0155] “… utilized to provide different images to each eye.”)
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-4, 8-9, 12-13 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over TeKolste et al. US Patent Application Publication 2016/0116739.
Regarding claims 2 and 8 TeKolste discloses the stacked waveguide of claim 1, as set forth above. TeKolste figures 11A-11B does not disclose wherein the first portion of received light includes wavelengths associated with a red color (as required by claim 2) and/or wherein the second portion of received light includes wavelengths associated with a green color and a blue color (as required by claim 8). TeKolste further teaches a range of wavelengths corresponding to a different colors coupled into different waveguides of the plurality of stacked waveguides (inter alia paragraph [0105]) including the first portion of received light being red (inter alia paragraph [0106]) and the wavelengths of coupled light encompassing two colors (inter alia paragraph [0183] “the first plurality of wavelengths encompasses light of two component colors”). This would be using a teaching and suggestion that would have led one of ordinary skill to rearrange the colors associated with each waveguide to arrive at the claimed invention with predictable results, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), see MPEP 2143. Further, it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) see MPEP 2144.04. Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the outcoupler gratings in the stacked waveguide as disclosed by TeKolste figures 11A-11B to have the first portion of received light includes wavelengths associated with a red color and wherein the second portion of received light includes wavelengths associated with a green color and a blue color since TeKolste further includes teachings and suggestions that would have led one of ordinary skill to rearrange the colors associated with each waveguide to arrive at the claimed invention with predictable results and rearranging parts of an invention involves only routine skill in the art.
Regarding claims 3-4 TeKolste discloses the stacked waveguide of claim 1, as set forth above. TeKolste further discloses wherein the first waveguide (e.g. 1220) further includes outcoupler gratings (e.g. outcoupling optical element 1252), as required by claim 3; and wherein the second waveguide (e.g. 1210) further includes outcoupler gratings (e.g. outcoupling optical element 1250), as required by claim 4.
TeKolste figures 11A-11B does not disclose the outcoupler gratings are disposed on the first surface of the first waveguide (as further required by claim 3) and/or on the first surface of the second waveguide (as further required by claim 4). TeKolste further teaches (inter alia paragraph [0181]) that outcoupling optical coupling elements can be implemented in several ways including on both major surfaces or on either one of the major surfaces. This would be using a teaching TeKolste that would have led one of ordinary skill to modify the embodiment seen in figures 11A-11B to arrive at the claimed invention with predictable results, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), see MPEP 2143. Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the outcoupler gratings in the stacked waveguide as disclosed by TeKolste figures 11A-11B to be disposed on the first surface of the first waveguide and on the first surface of the second waveguide as further taught by TeKolste since this further teaching would have led one of ordinary skill to modify the embodiment seen in figures 11A-11B to arrive at the claimed invention with predictable results.
Regarding claim 9 TeKolste teaches the stacked waveguide of claim 8, as set forth above. TeKolste further discloses wherein the stacked waveguide is configured to provide the first portion of light and the second portion of light to an eye of a user (inter alia paragraph [0155] “Embodiments disclosed herein may be implemented as display systems generally … a stack of waveguides … may be configured to be worn positioned in front of the eyes of a user, or viewer … utilized to provide different images to each eye”).
Regarding claims 12-13, the limitations of claims 12-13 are the same as the limitations of claims 3-4, respectively, and claims 12-13 are rejected for the same reasons.
Regarding claims 16-18 TeKolste discloses the wearable display of claim 15 and 10, as set forth above. TeKolste figures 11A-11B does not disclose wherein the second waveguide is configured to provide light having wavelengths associated with a second color and a third color to the eye of the user (as required by claim 16), or wherein the second color includes blue and the third color includes green (as required by claim 17), or wherein the first color includes red (as required by claim 18). TeKolste further teaches a range of wavelengths corresponding to a different colors coupled into different waveguides of the plurality of stacked waveguides (inter alia paragraph [0105]) including the first portion of received light being red (inter alia paragraph [0106]) and the wavelengths of coupled light encompassing two colors (inter alia paragraph [0183] “the first plurality of wavelengths encompasses light of two component colors”). This would be using a teaching and suggestion that would have led one of ordinary skill to rearrange the colors associated with each waveguide to arrive at the claimed invention with predictable results, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), see MPEP 2143. Further, it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) see MPEP 2144.04. Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the outcoupler gratings in the stacked waveguide as disclosed by TeKolste figures 11A-11B to have the first portion of received light includes wavelengths associated with a red color and wherein the second portion of received light includes wavelengths associated with a green color and a blue color since TeKolste further includes teachings and suggestions that would have led one of ordinary skill to rearrange the colors associated with each waveguide to arrive at the claimed invention with predictable results and rearranging parts of an invention involves only routine skill in the art.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over TeKolste et al. US Patent Application Publication 2016/0116739 in view of Mills et al. international patent document WO2021/030908, of record.
Regarding claims 19-20 TeKolste discloses the wearable display of claim 10, as set forth above. TeKolste further discloses it is further comprising: an arm (e.g. see temple of wearable frame 64 in figure 2) as required by claim 19; and that it is further comprising: an optical combiner including the stacked waveguide (abstract “combiner uses multiple stacked waveguides”), as required by claim 20.
TeKolste does not disclose said arm is configured to include the optical engine and at least a portion of the stacked waveguide (as further required by claim 19) and/or said optical combiner also includes a lens (as further required by claim 20).
Mills teaches a similar waveguide based HWD (e.g. figure 1) including an optical engine (e.g. figure 1 light engines 108 and/or 110) emitting light to an incoupler (e.g. incoupler 130 and/or 134) into a waveguide/combiner (page 3 lines 25-27 “each of waveguides 116 and 118 can be carried by a transparent optical carrier so as to form an optical combiner” e.g. waveguides 116 and/or 118) and an arm (e.g. arms 102 and/or 104); and further teaches said arm is configured to include the optical engine (see figure 1) and at least a portion of the stacked waveguide (e.g. combination of arms 102 and/or 104 and portions of 106 vertically above 102 & 104 including portions of 116 & 118 with 130 & 1342), which would be combining prior art elements according to known methods to yield predictable results, KSR, see MPEP 2143; and it is further comprising a lens (page 28 lines 25-26 “FIGS. 7-13 illustrate embodiments of optical combiners including transparent carrier or lens structures carrying a waveguide to be positioned in a field of view of a user”) for the purpose of providing prescription light correction for a user (page 3 line 25-page 4 line 2). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the stacked waveguide as disclosed by TeKolste to have said arm is configured to include the optical engine and at least a portion of the stacked waveguide and said optical combiner also includes a lens as taught by Mills for the purpose of providing prescription light correction for a user and since this would be combining prior art elements according to known methods to yield predictable results.
Conclusion
THIS ACTION IS MADE FINAL. 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 George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/George G. King/Primary Examiner, Art Unit 2872 February 9, 2026
1 It is noted that “first” and “second” in “first waveguide” and “second waveguide” do not require and any particular order, sequence or position. See MPEP 2111.03: “The court also emphasized that reference to "first," "second," and "third" blades in the claim was not used to show a serial or numerical limitation but instead was used to distinguish or identify the various members of the group.” Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371-73, 74 USPQ2d 1586, 1589-91 (Fed. Cir. 2005).
2 This interpretation of arm is consistent with applicant’s usage of the term, see instant application figure 8 with arm 802.