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 .
DETAILED ACTION
Response to Arguments
Applicant’s arguments filed 01/09/2026 have been fully considered but they are not persuasive.
The applicant argues that no rationale is provided by the Office Action for why one of ordinary skill in the art would be motivated to modify the device of Wu to include such a prism assembly. The examiner respectfully disagrees. 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). In other words, Lee et al. (figure 12A) teaches wherein the prism includes a material with an Abbe number of about 30 or less second prism; see at least paragraphs 0272-0275). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Lee et al. in order to achieve optical device better optical clarity and less color fringing around objects.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
The applicant further argues that Wu does not disclose or suggest any material for the leftmost prism of FIG. 3 of Wu (alleged “prism”). Further, the prism of interest in the disclosure of Wu (i.e., the leftmost prism in FIG. 3) must be transparent to visible light as shown in the figure. Thus, the disclosure of Wu of the material of a prism (germanium or GaAs) cannot apply to the leftmost prism because those materials are opaque to visible light. The examiner respectfully disagrees. FIG. 1 of Wu is a schematic cross-sectional illustration of a vanadium dioxide-coated prism unit and FIG. 3 is a schematic cross-sectional illustration of an optical limiting prism assembly. Therefore, the first prism in figure 3 appears to be the prism as shown in figure 1. In other words, Wu et al. (figures 1-3) discloses an optical system as claimed including a reflective face (thin film coating) to receive the incident light from the incident face and to internally reflect from which at least a part of the incident light; and an exit face from which light reflected by the reflective face is emitted (figure 3), a coating layer (thin film coating) outside the prism and in contact with the reflective face, the reflective face is positioned at a first angle with respect to the incident face and the prism is formed of a material having a refractive index such that the visible light of the incident light is totally internally reflected from the reflective face, only a first part of the infrared light of the incident light incident on the reflective face is totally internally reflected from the reflective face, and a second part of the infrared light of the incident light incident on the reflective face is not totally internally reflected from the reflective face (the thin film coating transmits wavelength 7-11 micros and reflects the other wavelengths).
The limitation, “receive incident light, including visible light and infrared light, from an external source, and to provide the incident light internally, receive the incident light from the incident face and to internally reflect from which at least a part of the incident light, positioned at a first angle with respect to the incident face and the prism is formed of a material having a refractive index such that the visible light of the incident light is totally internally reflected from the reflective face, only a first part of the infrared light of the incident light incident on the reflective face is totally internally reflected from the reflective face, and a second part of the infrared light of the incident light incident on the reflective face is not totally internally reflected from the reflective face” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Wu et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
The applicant further argues that Yanagisawa does not disclose the refractive index of the prism. The examiner respectfully disagrees. Yanagisawa (figure 20) discloses wherein: the refractive index of the coating layer is about 1.35 to about 2, and the refractive index of the prism is about 2 to about 3 (refractive index of the prism Ge (4) / refractive index of ZnSe (2.67) = 1.49; see at least paragraph 0023). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Yanagisawa in order to achieve a total reflection type polarizer in the mid-infrared region and improve the viewing angle.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
The applicant furthers ague that the alleged coating layer ("thin film coating") of Wu does not absorb infrared but instead transmits it. The examiner respectfully disagrees. Wu discloses that the thin film absorbs radiation. Those skilled in the art can readily adjust the thickness of the thin film to provide the desired degree of radiation absorption. When the radiation is higher than a certain threshold, the thin film changes its phase and has higher refractive index than the prism base material. At this point, the TIR condition is broken, and the light will be transmitted through the thin film. The detector is thus protected from the high intensity radiation (see at least paragraph 0020). In other words, Wu et al. (figures 1-3) discloses wherein a part of the infrared passing through the reflective face is absorbed by the coating layer.
The limitation, “wherein a part of the infrared passing through the reflective face is absorbed by the coating layer” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Yanagisawa discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
The claim language therefore does not patentably distinguish over the applied reference[s], and the previous rejections are maintained.
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 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.
Claims 1, 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2006/0132905) in view of Lee et al. (US 2018/0094976).
Regarding claim 1, Wu et al. (figures 1-3) discloses a prism, comprising:
an incident face (sun/signal) to receive incident light, including visible light and infrared light, from an external source, and to provide the incident light internally (figure 3);
a reflective face (thin film coating) to receive the incident light from the incident face and to internally reflect from which at least a part of the incident light; and
an exit face from which light reflected by the reflective face is emitted (figure 3),
the reflective face is positioned at a first angle with respect to the incident face and the prism is formed of a material having a refractive index such that the visible light of the incident light is totally internally reflected from the reflective face, only a first part of the infrared light of the incident light incident on the reflective face is totally internally reflected from the reflective face, and a second part of the infrared light of the incident light incident on the reflective face is not totally internally reflected from the reflective face (the thin film coating transmits wavelength 7-11 micros and reflects the other wavelengths).
The limitation, “receive incident light, including visible light and infrared light, from an external source, and to provide the incident light internally, receive the incident light from the incident face and to internally reflect from which at least a part of the incident light, positioned at a first angle with respect to the incident face and the prism is formed of a material having a refractive index such that the visible light of the incident light is totally internally reflected from the reflective face, only a first part of the infrared light of the incident light incident on the reflective face is totally internally reflected from the reflective face, and a second part of the infrared light of the incident light incident on the reflective face is not totally internally reflected from the reflective face” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Wu et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Wu et al. discloses the limitations as shown in the rejection of claim 1 above. However, Wu et al. is silent regarding wherein the prism includes a material with an Abbe number of about 30 or less. Lee et al. (figure 12A) teaches wherein the prism includes a material with an Abbe number of about 30 or less second prism; see at least paragraphs 0272-0275). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Lee et al. in order to achieve optical device better optical clarity and less color fringing around objects.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 5, Wu et al. discloses the limitations as shown in the rejection of claim 1 above. However, Wu et al. is silent regarding the angle. Wu et al. (figures 1-3) discloses wherein each of an angle between the incident face and the reflective face and an angle between the reflective face and the exit face is about 45°. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Wu et al. in order to achieve an optical device having a low initiating threshold and a broad spectral range.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 6, Wu et al. (figures 1-3) discloses wherein the first angle of the reflective face provides reflected light in a direction that is about 90° to the direction of the incident light (figure 3).
Claims 8, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2006/0132905).
Regarding claim 8, Wu et al. (figures 1-3) discloses an optical system, comprising:
a prism including:
a top surface,
a bottom surface (figure 3),
an incident face (sun/signal) to receive incident light, including visible light and infrared light, from an external source, and to provide the incident light internally (figure 3);
a reflective face (thin film coating) to receive the incident light from the incident face and to internally reflect from which at least a part of the incident light; and
an exit face from which light reflected by the reflective face is emitted (figure 3),
a coating layer (thin film coating) outside the prism and in contact with the reflective face,
the reflective face is positioned at a first angle with respect to the incident face and the prism is formed of a material having a refractive index such that the visible light of the incident light is totally internally reflected from the reflective face, only a first part of the infrared light of the incident light incident on the reflective face is totally internally reflected from the reflective face, and a second part of the infrared light of the incident light incident on the reflective face is not totally internally reflected from the reflective face (the thin film coating transmits wavelength 7-11 micros and reflects the other wavelengths).
The limitation, “receive incident light, including visible light and infrared light, from an external source, and to provide the incident light internally, receive the incident light from the incident face and to internally reflect from which at least a part of the incident light, positioned at a first angle with respect to the incident face and the prism is formed of a material having a refractive index such that the visible light of the incident light is totally internally reflected from the reflective face, only a first part of the infrared light of the incident light incident on the reflective face is totally internally reflected from the reflective face, and a second part of the infrared light of the incident light incident on the reflective face is not totally internally reflected from the reflective face” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Wu et al. discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Wu et al. discloses the limitations as shown in the rejection of claim 8 above. However, Wu et al. is silent regarding the ratio. Wu et al. (figures 1-3) discloses wherein a ratio of a refractive index of the prism to a refractive index outside the prism is about √ 2 to about 1.5 (refractive index of the prism Ge (4) / refractive index of ZnSe (2.67); see at least paragraph 0023). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Wu et al. in order to achieve an optical device having a low initiating threshold and a broad spectral range.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 12, Wu et al. discloses the limitations as shown in the rejection of claim 8 above. However, Wu et al. is silent regarding wherein the widths. Wu et al. (figures 1-4) teaches wherein the coating layer has a fourth width in a direction perpendicular to the reflective face, the fourth width being about 30 μm to about 100 μm (10 mm and 14 mm; see at least paragraph 0076). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Wu et al. in order to achieve a prism which permits functional improvement and size reduction of an optical device.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 13, Wu et al. (figures 1-3) discloses wherein a part of the infrared passing through the reflective face is absorbed by the coating layer.
The limitation, “wherein a part of the infrared passing through the reflective face is absorbed by the coating layer” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Yanagisawa discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. (US 2006/0132905) in view of Yanagisawa (JP 2015-176050).
Regarding claim 10, Wu et al. discloses the limitations as shown in the rejection of claim 9 above. However, Wu et al. is silent regarding wherein: the refractive index of the coating layer is about 1.35 to about 2, and the refractive index of the prism is about 2 to about 3. Yanagisawa (figure 20) discloses wherein: the refractive index of the coating layer is about 1.35 to about 2, and the refractive index of the prism is about 2 to about 3 (refractive index of the prism Ge (4) / refractive index of ZnSe (2.67) = 1.49; see at least paragraph 0023). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Yanagisawa in order to achieve a total reflection type polarizer in the mid-infrared region and improve the viewing angle.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Claims 11, 14-15, 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. in view of Tokunaga et al. (US 2009/0002857).
Regarding claim 11, Wu et al. discloses the limitations as shown in the rejection of claim 8 above. However, Wu et al. is silent regarding wherein the widths. Tokunaga et al. (figures 1-8) teaches wherein: each of a first width of an edge at which the top surface meets the incident face and a second width of an edge at which the top surface meets the exit face is about 3 mm to about 10 mm, and a third width of an edge at which the top surface meets the reflective face is about 4 mm to about 14 mm (10 mm and 14 mm; see at least paragraph 0076). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Tokunaga et al. in order to achieve a prism which permits functional improvement and size reduction of an optical device.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 14, Wu et al. (figures 1-3) discloses an optical system, comprising:
a prism including:
a top surface,
a bottom surface (figure 3),
an incident face (sun/signal) to receive incident light, including visible light and infrared light, from an external source, and to provide the incident light internally (figure 3);
a reflective face (thin film coating) to receive the incident light from the incident face and to internally reflect from which at least a part of the incident light; and
an exit face from which light reflected by the reflective face is emitted (figure 3),
wherein the visible light of the incident light is totally reflected from the reflective face, and only a part of the infrared of the incident light is totally reflected from the reflective face (the thin film coating transmits wavelength 7-11 micros and reflects the other wavelengths).
The limitation, “the incident light including a visible light and an infrared; wherein the visible light of the incident light is totally reflected from the reflective face, and only a part of the infrared of the incident light is totally reflected from the reflective face” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Yanagisawa discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Wu et al. discloses the limitations as shown in the rejection of claim 14 above. However, Wu et al. is silent regarding the ratio and the lens groups.
Wu et al. (figures 1-3) discloses wherein a ratio of a refractive index of the prism to a refractive index outside the prism is about √ 2 to about 1.5 (refractive index of the prism Ge (4) / refractive index of ZnSe (2.67) = 1.49; see at least paragraph 0023). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Wu et al. in order to achieve an optical device having a low initiating threshold and a broad spectral range.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Tokunaga et al. (figures 1-8) teaches a first lens group including at least one lens with a positive refractive power or at least one lens with a negative refractive power (G1 or G2), the first lens group being configured to direct light of the external light source to the incident face of the prism; and a second lens group (G3), on which light emitted from the exit face prism is incident, the second lens group including at least one lens with a positive refractive power or at least one lens with a negative refractive power, and configured to direct a reflected light to a light receiving system, wherein the visible light of the incident light is totally reflected from the reflective face, and only a part of the infrared light of the incident light is totally reflected from the reflective face. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the lens groups as taught by Tokunaga et al. in order to achieve a prism which permits functional improvement and size reduction of an optical device.
Regarding claim 18, Wu et al. (figures 1-3) discloses wherein the reflected light includes: a first reflected light passing through the exit face; and a second reflected light that does not pass through the exit face.
The limitation, “wherein the reflected light includes: a first reflected light passing through the exit face; and a second reflected light that does not pass through the exit face” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Yanagisawa discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
Regarding claim 19, Wu et al. (figures 1-3) discloses wherein a ratio of the visible light to the incident light is less than a ratio of the visible light to the first reflected light.
The limitation, “wherein the reflected light includes: a first reflected light passing through the exit face; and a second reflected light that does not pass through the exit face” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Yanagisawa discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 20, Wu et al. (figures 1-3) discloses wherein a ratio of the visible light to the first reflected light is greater than a ratio of the visible light to the second reflected light.
The limitation, “wherein the reflected light includes: a first reflected light passing through the exit face; and a second reflected light that does not pass through the exit face” is functional in nature. Such a functional limitation is only given patentable weight insofar as it imparts a structural limitation. Here, Yanagisawa discloses the structural limitations required to perform the function as claimed. It is further noted that apparatus claims must be structurally distinguishable from the prior art and that the manner of operating the device does not differentiate the apparatus claim from the prior art (see e.g. MPEP 2114). In other words, the prior art need not perform the function, but must merely be capable of doing so.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. in view of Lee et al. and Tokunaga et al.; further in view of Yanagisawa (JP 2015-176050).
Regarding claim 10, Wu et al. discloses the limitations as shown in the rejection of claim 15 above. However, Wu et al. is silent regarding wherein: the refractive index of the coating layer is about 1.35 to about 2, and the refractive index of the prism is about 2 to about 3. Yanagisawa (figure 20) discloses a coating layer arranged outside the prism and in contact with the reflective face, the refractive index of the coating layer being about 1.35 to about 2, and the refractive index of the prism being about 2 to about 3 (refractive index of the prism Ge (4) / refractive index of ZnSe (2.67); see at least paragraph 0023). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Yanagisawa in order to achieve a total reflection type polarizer in the mid-infrared region and improve the viewing angle.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Regarding claim 17, Wu et al. discloses the limitations as shown in the rejection of claim 8 above. However, Wu et al. is silent regarding wherein the widths. Tokunaga et al. (figures 1-8) teaches wherein: each of a first width of an edge at which the top surface meets the incident face and a second width of an edge at which the top surface meets the exit face is about 3 mm to about 10 mm, (10 mm and 14 mm; see at least paragraph 0076) and Wu et al. (figures 1-4) teaches wherein the coating layer has a fourth width in a direction perpendicular to the reflective face, the fourth width being about 30 μm to about 100 μm (10 mm and 14 mm; see at least paragraph 0076). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Wu et al. in order to achieve a prism which permits functional improvement and size reduction of an optical device. In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the prism as taught by Tokunaga et al. in order to achieve a prism which permits functional improvement and size reduction of an optical device.
One of ordinary skill in the art before the effective filing date of the claimed invention would recognize utilizing a value close to applicant's claimed range, since it has been held that where the general condition of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. Further, it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap by are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of “about 1-5%” while the claim was limited to “more than 5%.” The court held that “about 1-5%” allowed for concentrations slightly above 5% thus the ranges overlapped.). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.). See MPEP § 2144.05.
Conclusion
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 extension fee 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 date of this final action.
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/LAUREN NGUYEN/Primary Examiner, Art Unit 2871
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