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 .
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.
Claims 4 and 18 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 4 and 18 “wherein the second refractive index and the third refractive index are based at least in part on a residual layer thickness of the resin” raises clarity issues. A refractive index is the ratio of the speed of light in a vacuum to its speed in the material and depends on the material, not its physical dimensions, e.g. see figures 4-5 showing material – regardless of shape – having a uniform index, particularly material of the second refractive index. In light of the specification (see figures 4-5 layers 408 & 508 of the second refractive index) the residual layer is a thin layer of grating resin on the substrate next to the “ridge” of the grating. Thus, the resin in the grating has a second refractive index, regardless of the thickness of a residual layer (of said grating resin). And the resin in the conformal coating has a third refractive index, regardless of the thickness of a residual layer (of a different material). It is unclear if a design consideration (e.g. considerations of material choices) is meant or if the effective refractive index of the waveguide grating based at least in part on a residual layer thickness of the resin is meant (assumed). For purposes of examination the examiner will use “wherein the effective is due at least in part on a residual layer thickness of the resin.” It is noted that this is an inherent statement of fact that necessarily flows from the structure.
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.
Insofar as they are understood, claims 1-2, 4, 6-8, 17-18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stenberg et al. US Patent Application Publication 2017/0307886, of record.
Regarding claim 1 Stenberg discloses a waveguide (abstract e.g. figure 13A waveguide 1300a) comprising: a substrate having a first refractive index (e.g. substrate 1350a, paragraph [0084 & 0077] indicates n1=~1.7-1.9 & paragraph [0031-33] giving exemplar n1=1.7 & 1.9); a resin having a second refractive index imprinted (no patentable weight1) on the substrate to form a waveguide grating, wherein the second refractive index is less than the first refractive index (e.g. surface relief grating/SRG structure 1370 of first material paragraph [0092] “e.g. UV-curable polymer-based resin” & paragraph [0031-33] giving exemplar n2=1.5); and a conformal coating on the resin (e.g. coating of high index material 1380a), the conformal coating having a third refractive index (paragraph [0040] “e.g., n=1.5-1.7” & paragraph [0031-33] giving exemplar n2=1.9, 2.0 & 2.2) higher than the second refractive index (exemplars paragraph [0031] n2=1.5 & n3=1.9; paragraph [0032] n2=1.5 & n3=2.0; and paragraph [0033] n2=1.5 & n3=2.2), wherein an effective refractive index of the waveguide grating with the conformal coating is approximately n=2.0 (inherent given the structure, materials and function).
Regarding claim 2 Stenberg discloses the waveguide of claim 1, as set forth above. Stenberg further discloses wherein the second refractive index (e.g. n2) is less than approximately n=2.0 (e.g. paragraph [0031-33] giving exemplar n2=1.5, i.e. 1.5<~2.0).
Regarding claim 4 Stenberg discloses the waveguide of claim 1, as set forth above. Stenberg further discloses wherein the effective refractive index is due at least in part on a residual layer thickness of the resin (inherent statement of fact that necessarily flows from the structure and definition).
Regarding claim 6 Stenberg discloses the waveguide of claim 1, as set forth above. Stenberg further discloses wherein the conformal coating (e.g. 1380a) comprises TiO2 (inter alia paragraph [0085] “coatings 1380a … made of a material such as … titanium dioxide”).
Regarding claim 7 Stenberg discloses the waveguide of claim 1, as set forth above. Stenberg further discloses wherein the substrate is imprinted with the resin using nano imprint lithography (no patentable weight – this is a process limitation. It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113).
Regarding claim 8 Stenberg discloses the waveguide of claim 1, as set forth above. Stenberg further discloses wherein the conformal coating is applied using atomic layer deposition (no patentable weight – this is a process limitation. It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113. Further paragraph [0085] “Such coatings can be applied using a number of different industry standard processes such as evaporation, atomic layer deposition”).
Regarding claim 17 Stenberg further discloses an eyewear display system (e.g. figures 1-2B), comprising: a waveguide comprising one or more gratings (e.g. figures 3A-3C shows the waveguide with multiple gratings), wherein the waveguide is as according to claim 1 (as set forth above).
Regarding claims 18 and 20, the limitations of claims 18 and 20 are the same as the limitations of claims 4 and 6, respectively, and claims 18 and 20 are rejected for the same reasons.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim 3, 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Stenberg et al. US Patent Application Publication 2017/0307886, of record, in view of Shimazu et al. US Patent Application Publication 2024/00201443.
Regarding claims 3 and 5 Stenberg discloses the waveguide of claims 1-2, as set forth above. Stenberg further discloses wherein the first refractive index (e.g. n1) is approximately n=2.0 (e.g. paragraph [0084 & 0077] indicates n1=~1.7-1.9 & paragraph [0031-33] giving exemplar n1=1.7 & 1.9, i.e. 1.9≈2.0), the second refractive index (e.g. n2) is approximately n=1.9 (paragraph [0040] “e.g., n=1.5-1.7” i.e. 1.7≈1.9).
Stenberg does not disclose the wherein the waveguide grating has a residual layer thickness between 20nm and 150nm, as required by claim 5; or a residual layer thickness of the resin is between 20nm and 130nm, as required by claim 3.
Shimazu teaches a similar waveguide (e.g. figures 4 & 47) including a substrate having a first refractive index (e.g. layer with refractive index n2) and a grating having a second refractive index (e.g. layer with refractive index n1), wherein the second refractive index is less than the first refractive index (paragraph [0098] “diffraction grating … its refractive index is lower than the refractive index of the light guide plate” e.g. see figure 4 “n1<n2”); and further teaches a residual layer thickness (e.g. see figure 4 “residual film layer” & figure 47 residual film 421) between 20nm and 150nm and/or between 20nm and 130nm (inter alia paragraph [0098] “a residual film thickness of 50 nm or less in a case where its refractive index is lower than the refractive index of the light guide plate”) for the purpose of improving the uniformity and grating efficiency (paragraph [0197 & 0225]). 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 waveguide as disclosed by Stenberg to have a residual layer with a thickness between 20nm and 150nm or between 20nm and 130nm as taught by Shimazu for the purpose of improving the uniformity and grating efficiency.
Regarding claim 19, the limitations of claim 19 are the same as the limitations of claim 5 and claim 19 is rejected for the same reasons.
Response to Arguments
Applicant’s arguments, see remarks, filed November 17, 2025, with respect to claim rejections under 112 have been fully considered and in combination with the amendments are persuasive. The claim rejections under 112 have been withdrawn.
Applicant's arguments filed November 17, 2025 have been fully considered but they are not persuasive.
Regarding applicant’s argument centered on Stenberg failing to disclose an effective refractive index of the waveguide grating with the conformal coating is approximately n=2.0, the examiner is unpersuaded. Following the guidance in the MPEP 2112 – applicant claims a product (i.e. a waveguide) in terms of a physical property/characteristic and the prior art is the same as that of the claim but the physical property an anticipation rejection may be made. It has been held "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). The effective index is a physical property resulting from the structure made with particular component indexes. In this case, Stenberg anticipates the claimed structure, including lower index grating with a higher index conformal coating. The fact that Stenberg did not disclose a physical property that would necessarily flow from the claimed structure does mean the physical property fails to exist. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Singh et al. US Patent Application Publication 2022/0128817; in regards to an anticipating device of a waveguide (title e.g. figure 17C) comprising: a substrate (e.g. waveguide 1701) having a first refractive index (paragraph [0931] “waveguide can comprise a material with high refractive index, such as, for example, LiNbO3, SiC, Si3N4, etc.” it is noted the index of refraction of these materials is 2.3, 2.6 & 2.0, respectively); a resin having a second refractive index (paragraph [0931] “patterned layer having a refractive index less than about 1.8”) imprinted (no patentable weight, further paragraph [0931] “patterning the layer of patternable material via contact imprint”) on the substrate to form a waveguide grating (e.g. patterned layer 1703), wherein the second refractive index is less than the first refractive index (index of all exemplar materials is larger than 1.8); and a conformal coating (e.g. layer 1705 comprising high refractive index material) on the resin (see figure 17C), the conformal coating having a third refractive index (paragraph [0931] “refractive index greater than or equal to about 1.8”) higher than the second refractive index (paragraph [0931] “a material having a refractive index greater than or equal to about 1.8, such as, for example, Si.sub.3N.sub.4, ZrO.sub.2, TiO.sub.2, or SiC, etc., over a patterned layer having a refractive index less than about 1.8”), wherein an effective refractive index of the waveguide grating with the conformal coating is approximately n=2.0 (inherent given the structure, materials and function).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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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 November 24, 2025
1 Regarding “imprinted” – this is a process limitation. It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113.