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 .
Status Of Claims
Claims 1-20, received 3/3/2023, are pending for examination.
If applicant is aware of any relevant prior art, or other co-pending application not already of record, he/she is reminded of his/her duty under 37 CFR 1.56 to disclose the same.
Election/Restrictions
Applicant’s election without traverse of Group IV in the reply filed on 10/29/2025 is acknowledged.
Claims 2-8, 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to at least one nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/29/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed 4/3/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the crossed-through information referred to therein has not been considered.
The Information Disclosure Statement(s) (IDS) filed on 4/15/2024 was/were considered.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 9-16 and 20 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without the dielectric film being formed such that a V value according to Equation 2 is 17 or less, and that although the dielectric film may include other sub-layers in addition to the first and second sub-layers the thickness of the entire sub-layer being 15 layers or less, and that although the dielectric film may include sub-layers other than the first and second sub-layers it is necessary for the ratio of the total number of layers of the first and second sub-layers as to the total number of sub-layers to be 80% or more, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). The specification paragraphs [75]-[86] describe the V value according to Equation 2, and paragraphs [81]-[82] state that the in order to achieve the object of the present application (i.e. securing a low ripple value) it is necessary to adjust the refractive index and the number of layers of each layer so that the V value of Equation 2 is 17 or less. The specification paragraph [93] states that although the dielectric film may include other sub-layers in addition to the first and second sub-layers, even in such a case, it is necessary to control the thickness of the entire sub-layer being 15 layers or less. The specification paragraph [94] states that even when the dielectric film includes sub-layers other than the first and second sub-layers, it is necessary for the ratio of the total number of layers of the first and second sub-layers as to the total number of sub-layers to be 80% or more.
Claims 9-16 and 20 are rejected for inheriting the same deficiencies of claim 1 since claims 9-16 and 20 also do not contain all of the essential subject matter for achieving the object of the present application, as set forth by the specification.
Claims 1, 9-16 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an optical filter including a transparent substrate; a dielectric film formed on one or both surfaces of the transparent substrate and comprising two or more sub-layers wherein a ripple value at an incident angle of 0° is 2.5% or less in a wavelength range of 450 nm to 560 nm; and the dielectric film being formed such that a V value according to Equation 2 is 17 or less; and wherein a thickness of the entire sub-layer being 15 layers or less; and wherein a ratio of a total number of layers of first and second sub-layers to a total number of sub-layers is 80% or more, does not reasonably provide enablement for an optical filter which does not include the dielectric film being formed such that a V value according to Equation 2 is 17 or less, and which does not include a thickness of the entire sub-layer being 15 layers or less, and which does not include a ratio of a total number of layers of first and second sub-layers to a total number of sub-layers is 80% or more. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
The factors considered when determining if the disclosure satisfies the enablement requirement and whether any necessary experimentation is undue include, but are not limited to: 1) nature of the invention, 2) state of the prior art, 3) relative skill of those in the art, 4) level of predictability, 5) existence of working samples, 6) breadth of claims, 7) amount of direction or guidance by the inventor, and 8) quantity of experimentation needed to make or use the invention. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
The nature of the invention is drawn to optical filters used with imaging devices wherein multilayer dielectric films are optimized to achieve a very low ripple value in a wavelength range of 450 nm to 560 nm.
The claims recite an optical filter including a transparent substrate; a dielectric film formed on one or both surfaces of the transparent substrate and comprising two or more sub-layers wherein a ripple value at an incident angle of 0° is 2.5% or less in a wavelength range of 450 nm to 560 nm.
The state of the art discloses a desire and numerous methods for achieving an optical filter including dielectric films wherein a ripple value is minimized (see at least the references used in the rejections set forth below, and the Related Art section set forth below).
The level of skill in the art is related to the areas of optical filters and imaging devices. The skill level is generally high (e.g. masters or PhD level) due to the level of complexity in designing and making thin film dielectric filters.
The level of predictability for making other working examples of an optical filter which achieves a ripple value at an incident angle of 0° of 2.5% or less, without including a V value according to Equation 2 of 17 or less; and without including a thickness of the entire sub-layer of 15 layers or less; and without including a ratio of a total number of layers of first and second sub-layers to a total number of sub-layers being 80% or more is low due to the nature of having to design an entire optical filter system and test the results by measuring the ripple value at 0° in the wavelength range of 450 nm to 560 nm.
Applicant’s specification describes the V value according to Equation 2 and state that the in order to achieve the object of the present application (i.e. securing a low ripple value) it is necessary to adjust the refractive index and the number of layers of each layer so that the V value of Equation 2 is 17 or less (see e.g. paragraphs [75]-[86]). Applicant’s specification further describes that although the dielectric film may include other sub-layers in addition to the first and second sub-layers, even in such a case, it is necessary to control the thickness of the entire sub-layer being 15 layers or less (see e.g. paragraph [93]). Applicant’s specification further describes that even when the dielectric film includes sub-layers other than the first and second sub-layers, it is necessary for the ratio of the total number of layers of the first and second sub-layers as to the total number of sub-layers to be 80% or more (see e.g. paragraph [93]).
Applicants’ claims are excessively broad due, in part, to the complex and diverse nature of optical filters including dielectric films which achieve a ripple value of 2.5% or less.
Therefore, the specification fails to teach the skilled artisan how to make and/or use an optical filter having a transparent substrate and dielectric film which achieves a ripple value at an incident angle of 0° is 2.5% or less in a wavelength range of 450 nm to 560 nm without resorting to undue experimentation to determine how to make the optical filter without including a V value according to Equation 2 of 17 or less; and without including a thickness of the entire sub-layer of 15 layers or less; and without including a ratio of a total number of layers of first and second sub-layers to a total number of sub-layers being 80% or more.
Due to the large quantity of experimentation necessary, the lack of direction/guidance presented in the specification regarding same, the absence of sufficient working examples directed to same, the complex nature of the invention, the state of the prior art, and the breadth of the claims, undue experimentation would be required of the skilled artisan to make and/or use the claimed invention in its full scope.
Claims 9-16 and 20 are rejected for inheriting the same deficiencies of claim 1 since claims 9-16 and 20 also do not contain all of the essential subject matter for achieving the object of the present application, as set forth by the specification.
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.
Claims 15 and 16 are 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.
In claim 15 it is not clear what is meant by “an average value of the thickness of the first sub-layer and a thickness of the second sub-layer included in the dielectric film is 5 to 200 nm in a range of 70 nm.” Therefore, the claim scope is indefinite. For the purpose of this examination, “an average value of the thickness of the first sub-layer and a thickness of the second sub-layer included in the dielectric film is 5 to 200 nm in a range of 70 nm” has been interpreted as “an average value of the thickness of the first sub-layer and a thickness of the second sub-layer included in the dielectric film is 5 to 200 nm”.
In claim 16 it is not clear what is meant by “the dielectric film only to be formed to have a different refractive index, to include a first sub-layer and a second sub-layer alternately stacked”. The dielectric film is formed to have a different refractive index from what? For the purpose of this examination it is interpreted that this limitation is meat if the first sub-layer and the second sub-layer have different refractive indices.
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 9-14, 16, 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Takagi et al., U.S. Patent Application Publication Number 2020/0379150 A1 (hereafter Takagi, of record).
Regarding claim 1, Takagi discloses an optical filter comprising: a transparent substrate (see at least Example 4, paras. [0162]-[0172], “transparent glass substrate”, para. [0164]); and a dielectric film formed on one or both surfaces of the transparent substrate and comprising two or more sub-layers (see at least Example 4, paras. [0162]-[0172], anti-reflection films ar1 and ar2 including SiO2 and TiO2, para. [0169]) wherein a ripple value at an incident angle of 0° is 2.5 % or less in a wavelength range of 450 nm to 560 nm (see at least para. [0171]).
Regarding claim 9, Takagi discloses the limitations of claim 1, and wherein the dielectric film includes a first sub-layer and a second sub-layer having different refractive indices and alternately stacked (see at least Example 4, paras. [0162]-[0172], anti-reflection films ar1 and ar2 including SiO2 and TiO2, para. [0169]).
Regarding claim 10, Takagi discloses the limitations of claim 9, and wherein the first sub-layer and the second sub-layer are formed such that a V value according to the following Equation 2 is 17 or less:
[Equation 2]
V = K × {[(n1/n2)2p × (n12/ns) - 1]/[(n1/n2)2p × (n12/ns) + 1]}2
wherein n1 is a refractive index of the first sub-layer, n2 is a refractive index of the second sub-layer, ns is a refractive index of the transparent substrate, K is a total number of the layers of the first sub-layer and the second sub-layer in the dielectric film, p is a number satisfying K = (2p + 1) in Equation 2 (see at least Example 4, paras. [0162]-[0172]; the transparent glass substrate Schott D 263 T eco has a refractive index nd = 1.5231 as evidenced by the Specification page for D 263 T eco by Schott (see attached); the refractive index of the first sub-layer TiO2 is nd = 2.6142 as evidenced by refractive index info for TiO2 (see attached); the refractive index of the second sub-layer SiO2 is nd = 1.4585 as evidenced by refractive index info for SiO2 (see attached); K is 7 layers for anti-reflection film ar1 or ar2, para. [0169]; and p is 3; therefore, V = 6.814).
Regarding claim 11, Takagi discloses the limitations of claim 10, and wherein a ratio (n1/n2) of the refractive index (n1) of the first sub-layer and the refractive index (n2) of the second sub-layer is in a range of 1.4 to 2.0 (see at least para. [0169]; (n1/n2)=(2.6142/1.4585)=1.79).
Regarding claim 12, Takagi discloses the limitations of claim 11, and wherein the refractive index n1 of the first sub-layer is in a range of 1.8 to 3.5 (see at least Example 4, paras. [0162]-[0172]; the refractive index of the first sub-layer TiO2 is nd = 2.6142 as evidenced by refractive index info for TiO2 (see attached)).
Regarding claim 13, Takagi discloses the limitations of claim 10, and wherein a ratio (n1/ns) of the refractive index (n1) of the first sub-layer and the refractive index (ns) of the transparent substrate is in a range of 1.4 to 2.0 (see at least paras. [0164], [0169]; (n1/ns)=(2.6142/1.523)=1.72).
Regarding claim 14, Takagi discloses the limitations of claim 10, and wherein K in the Equation 2 is 15 or less (see at least Example 4, paras. [0162]-[0172]; K is 7 layers for anti-reflection film ar1 or ar2, para. [0169]).
Regarding claim 16, as best understood, Takagi discloses the limitations of claim 1, and further comprising the dielectric film only to be formed to have a different refractive index, to include a first sub-layer and a second sub-layer alternately stacked (see at least Example 4, paras. [0162]-[0172], anti-reflection films ar1 and ar2 including SiO2 and TiO2, para. [0169]), and to have a V value of the first sub-layer and the second sub-layer according to Equation 2 below being 17 or less:
[Equation 2]
V = K × {[(n1/n2)2p × (n12/ns) - 1]/[(n1/n2)2p × (n12/ns) + 1]}2
wherein n1 is a refractive index of the first sub-layer, n2 is a refractive index of the second sub-layer, ns is a refractive index of the transparent substrate, K is a total number of the layers of the first sub-layer and the second sub-layer in the dielectric film, p is a number satisfying K = (2p + 1) in Equation 2 (see at least Example 4, paras. [0162]-[0172]; the transparent glass substrate Schott D 263 T eco has a refractive index nd = 1.5231 as evidenced by the Specification page for D 263 T eco by Schott (see attached); the refractive index of the first sub-layer TiO2 is nd = 2.6142 as evidenced by refractive index info for TiO2 (see attached); the refractive index of the second sub-layer SiO2 is nd = 1.4585 as evidenced by refractive index info for SiO2 (see attached); K is 7 layers for anti-reflection film ar1 or ar2, para. [0169]; and p is 3; therefore, V = 6.814).
Regarding claim 20, Takagi discloses an imaging capturing device comprising the optical filter of claim 1 (see at least the title, figure 2, paras. [0001], [0026]-[0030], [0036], [0092]-[0102], [0172]).
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.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Takagi et al., U.S. Patent Application Publication Number 2020/0379150 A1 (hereafter Takagi, of record) in view of Ooi et al., U.S. Patent Application Publication Number 2018/0095203 A1 (hereafter Ooi, of record).
Regarding claim 15, as best understood, Takagi further discloses that the anti-reflection film ar1 and ar2 are seven layers and have a total layer thickness of about 400nm (para. [0169]).
Takagi, does not specifically disclose a thickness of the first sub-layer and the second sub-layer are in a range of 5 to 200 nm, respectively, and an average value of the thickness of the first sub-layer and the thickness of the second sub-layer included in the dielectric film is 5 to 200 nm.
However, Ooi is related to Takagi as being drawn to an optical filter and imaging device (see at least the title and abstract of both Takagi and Ooi), wherein Ooi teaches that ripple may be reduced in a filter by controlling the thickness of each layer of an optical film (Ooi, paras. [0097], [0100], [0105], [0106]), and/or by controlling the number of layers (Ooi, paras. [0097], [0100], [0110]), and/or by controlling the optical film thickness distribution (Ooi, para. [0158]).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the optical filter of Takagi to include the teachings of Ooi so that a thickness of the first sub-layer and the second sub-layer are in a range of 5 to 200 nm, respectively, and an average value of the thickness of the first sub-layer and the thickness of the second sub-layer included in the dielectric film is 5 to 200 nm, for the purpose of optimizing the thicknesses of the first and second sub-layers to obtain the desired reflection and transmission characteristics while reducing ripple (Ooi, paras. [0097], [0100], [0105], [0106], [0110], [0158]).
Further, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the optical filter of Takagi so that a thickness of the first sub-layer and the second sub-layer are in a range of 5 to 200 nm, respectively, and an average value of the thickness of the first sub-layer and the thickness of the second sub-layer included in the dielectric film is 5 to 200 nm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to modify the optical filter of Takagi so that a thickness of the first sub-layer and the second sub-layer are in a range of 5 to 200 nm, respectively, and an average value of the thickness of the first sub-layer and the thickness of the second sub-layer included in the dielectric film is 5 to 200 nm, for the purpose of optimizing the thicknesses of the first and second sub-layers to obtain the desired reflection and transmission characteristics while reducing ripple. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Other Related Art
This prior art, made of record, but not relied upon is considered pertinent to applicant's disclosure since the following references have similar structure and/or use similar optical elements to what is claimed and/or disclosed in the instant application:
Hung et al., US 2018/0259697 A1, discloses a technique for reducing ripple by producing separate ripple effects through first and second interference films wherein the ripple curves from each of the interference films are offset and cancel each other out through destructive interference (figs. 1A-1C, paras. [0031]-[0035]);
Tsukamoto, US 6,310,729 B1, a technique for reducing ripple by producing a filter wherein multiple thin film structures including low refractive index, intermediate refractive index and/or high refractive index layers are distributed with specific placement to control the differences in refractive index (figs. 2-4, col. 3, lines 11-27; col. 3, lines 56-63; col. 4, lines 24-31).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEREK S. CHAPEL whose telephone number is (571)272-8042. The examiner can normally be reached M-F 9:30am-6pm.
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/Derek S. Chapel/Primary Examiner, Art Unit 2872 11/14/2025
Derek S. CHAPEL
Primary Examiner
Art Unit 2872