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 .
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.
DETAILED ACTION
This is an AIA application filed June 14, 2023.
The earliest effective filing date of this AIA application is seen as July 1, 2022, the date of the earliest priority application (United States provisional patent application serial number 63/357,722) for any claims which are fully supported under 35 U.S.C. 112(a) by the provisional application.
The effective filing date of this AIA application is seen as June 14, 2023, the actual filing date, for any claims that are not fully supported by the foregoing provisional or non-provisional application(s).
The claims filed January 22, 2026 are entered, currently outstanding, and subject to examination.
This action is in response to the filing of the same date.
The current status and history of the claims is summarized below:
Last Amendment/Response
Previously
Amended:
1, 4, 8, 16, 17, & 20
N/A
Cancelled:
none
N/A
Withdrawn:
none
N/A
Added:
none
N/A
Claims 1-20 are currently pending and outstanding.
Regarding the last reply:
Claims 1, 4, 8, 16, 17, and 20 were amended.
No claims were cancelled.
No claims were withdrawn.
No claims were added.
Claims 1-20 are currently outstanding and subject to examination.
This is a final action and is the second action on the merits.
Allowable subject matter is not indicated below.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Applicant should check the claims closely for all structures, steps, and relationships to ensure that they are present in the drawings.
The following must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Claim(s)
Feature Not Shown in Drawings
2, 3, 8, & 16
light source
Applicant may have other claimed configurational and/or geometrical features that are not shown in the drawings. Examiner suggests that Applicant review its claims and drawings to ensure that all claimed features are shown. While examiner endeavors to ensure all issues in all actions are fully and completely addressed, examiner’s additional scrutiny of the present application may reveal other drawing objections. Applicant should note this well and make sure that this application conforms to the rules as to both form and substance.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
Applicant must provide the same terminology/vocabulary/phrasing in the specification that is present in the claims. At least one term or phrase is missing from the specification present in the claim(s).
Correction is required as the following amendment(s)/text in the claims find(s) no antecedent in the specification.
Claim(s)
Antecedent Missing For
3 and 10
"surface of the pupil replication region"
9
"surface in the pupil replication region"
13 and 15
"portion of the eyewear display system"
16
"plurality of freeform surfaces"
5 and 12
"first freeform surface"
As set forth in MPEP § 608.01(o):
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually the terminology of the original claims follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
. . . While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure [sic, ensure] certainty in construing the claims in the light of the specification, Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm’r Pat. 1901). See 37 CFR 1.75 and MPEP §§ 608.01(i), § 1302.01.
Consequently, identity between terms and phrases in the specification and claims is preferred and is seen as mandatory to ensure “certainty in construing the claims in the light of the specification”.
Further, under 37 C.F.R. § 1.121(e) regarding disclosure consistency in making amendments:
The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
Examiner considers direct correspondence between the specification and the claims to be important with respect to determining the scope of the claims.
Examiner strongly urges Applicant to review its claims with a fine-toothed comb and scrutinize them for any discrepancies between claim language and language that is used in the written description/specification as originally filed. Applicant is responsible for what it drafts. Discrepancies may be interpreted to Applicant’s detriment.
Claim Rejections - 35 USC § 112(a/¶ 1)
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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, 8, and 16 (and by dependency, remaining claims 2-7, 9-15, and 17-20) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant uses elements “configured” to perform some operation or achieve some goal or to “provide” same. For example, in claims 1, 8, and 16:
Claim(s)
Informality/ies
1
the flat lightguide "providing" exit pupil replication
8
the collimation region is "configured" to collimate display light
16
the freeform surfaces are "configured" to collimate display light
The problem with this is that such “configured” or "providing" language covers all devices now known or later developed, not all of which have been described in writing in the present application, if described at all. Applicant’s disclosure does not match this breadth and, as such, does not meet the written disclosure requirement of 35 U.S.C. § 112(a).
The specification as originally filed only discloses those means known to the inventor and is not commensurate in scope with the claims. MPEP § 2173.05(g).
“Configured”- and/or “providing”-type language is present in the following additional claims: 3, 4, 7, 9, 10, 11, 16, and 20. Each and every instance must be resolved to comply with applicable statute, rule, and regulation (35 U.S.C., 37 C.F.R., and MPEP) per regular practice, particularly § 112.
Applicant must ensure that all such functional, operational, feature, characteristic, and “configured” or “providing” language falls within the statutory requirements. Only that which has been disclosed can be protected.
Further, aspirational declarations of what a device is intended to achieve do not in and of themselves provide the needed description. Applicants can only protect what they disclose. That includes how the device obtains its aspirational characteristics, features, functions, etc. Disclosures/Specifications as originally filed that provide no actual description of structures or elements that can be actually used to actually achieve the stated or claimed aspirational features fail to meet the requirements of 35 U.S.C. § 112. Wishlists are not adequate descriptions and fail § 112 accordingly. Under such circumstances, no promotion of "the Progress of Science and useful Arts" according to Article I, Section 8, Clause 8 of the Constitution is seen. Correspondingly, failure to meet the statutes, rules, and regulations follows. Colloquially, there is no “quid” for the sought after “quo”.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions as defined by MPEP § 2111.01(IV) are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s). Per above, such special definitions must conform to the requirements of MPEP § 2111.01(IV).
To date, Applicant has provided no indication of special definitions.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 8-13, 15, 16, and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 20160131907 of Martinez et al. (Martinez).
With respect to claim 8, Martinez (Figs. 1A, 1B) discloses an eyewear display system (eyepiece 100, ¶ 12 and adjacent, see Fig. 2A) comprising:
a light source (display source 110); and
a lightguide comprising:
a pupil replication region (viewing region 150 and the structures to its right); and
a collimation region (Martinez Fig. 1B, upper region of light guide component 105 with notch forming recess 130) configured to produce collimated display light (¶ 22, "In other words, the curved sides of light guide component 105 operate to both transport display light 111 from a peripheral location to viewing region 150 while simultaneously collimating, or nearly collimating, the image without a separate or additional collimating lens between display source 110 and light guide component 105.") prior to entry of the display light into the pupil replication region (light guide component 105 optically precedes the pupil replication region/viewing region 150),
the collimation region located between the light source (110) and the pupil replication region (150) along a light propagation path (light path of display light 111, Fig. 1B),
wherein the collimation region (upper 105 region) is configured to collimate display light (display light 111) projected by the light source (110 and as collimating structures are wont to do).
Further, for product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties and/or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01(I).
Consequently, because Martinez provides the claimed structure of claim 8, Martinez is seen as also providing the same claimed properties or functions of claim 8.
Unsupported features are seen to directly result from the supported/claimed structures. No authority is known by which unsupported or “naked” functions/characteristics/features can be claimed and subject to exclusive protection.
Below, this analysis is referred to as “same product/same features”.
With respect to claim 9, Martinez as set forth above discloses the eyewear display system (100) of claim 8, including one wherein
the collimation region (upper 105 region) is configured to project the display light (111) onto a surface (inner surface of recess 130) in the pupil replication region (150).
Per Fig. 1B.
With respect to claim 10, Martinez as set forth above discloses the eyewear display system (100) of claim 9, including one wherein
the collimation region (upper 105 region) is configured to provide the collimated display light (111) onto the surface (inner surface of recess 130) of the pupil replication region (150).
Per Fig. 1B.
With respect to claim 11, Martinez as set forth above discloses the eyewear display system (100) of claim 8, including one wherein
the collimation region (upper 105 region) is configured to focus the display light (111) at least once along the light propagation path.
Same product/same features.
With respect to claim 12, Martinez as set forth above discloses the eyewear display system (100) of claim 8, including one wherein
the collimation region (upper 105 region) includes a first freeform surface (both eye-ward facing surface 120 and world facing surface 125 are seen as freeform surfaces) extending substantially along a total length of the collimation region (upper 105 region).
Per Fig. 1B.
With respect to claim 13, Martinez as set forth above discloses the eyewear display system (100) of claim 8, including one wherein
the collimation region (upper 105 region) is located in a portion of the eyewear display system (100) having a curved external form factor.
Per Fig. 1B.
With respect to claim 15, Martinez as set forth above discloses the eyewear display system (100) of claim 13, including one wherein
the pupil replication region (150) is in a portion of the eyewear display system (100) having a curved external form factor.
Per Fig. 1B.
With respect to claim 16, Martinez as set forth above discloses a method of manufacturing a collimation region (upper 105 region) for an eyewear display system (100), comprising:
positioning a plurality of freeform surfaces (both eye-ward facing surface 120 and world facing surface 125 are seen as freeform surfaces) along a collimation region (upper 105 region) including a lightguide (light guide component 105),
wherein the plurality of freeform surfaces (120/125) are configured to collimate display light (111) projected by a light source (110 and as collimating structures are wont to do).
The method of claim 16 above would naturally occur in the construction and/or manufacture of a device as set forth in claims 5 and 12, herein.
With respect to claim 20, Martinez as set forth above discloses the method of claim 16, including one further comprising
configuring the plurality of freeform surfaces (120/125) to reflect the display light (111) by total internal reflection (per the light path of light 111 shown in Fig. 1B).
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 of this title, 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 17 is rejected under 35 U.S.C. § 103 as being unpatentable over Martinez as set forth above.
With respect to claim 17, Martinez in view of Mukawa as set forth above discloses the method of claim 16, but not one wherein
the plurality of freeform surfaces are discontinuous freeform surfaces,
the method further comprising
combining the plurality of freeform surfaces into a single, continuous freeform surface extending along substantially a total length of the collimation region (upper 105 region).
Martinez provides one discontinuous freeform surface in the form of the transition/notch shown in Fig. 1B between the world facing surface 125 and the recess 130. Duplicating such a discontinuous freeform surface is seen as obvious as follows.
Mere duplication of parts has no distinguishing significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); MPEP § 2144.04(VI)(B).
Duplicating the discontinuous freeform surface of Martinez would result in a plurality of such discontinuous freeform surfaces. Each of these surfaces would operate in the same manner as the original one. Consequently, duplicating the one discontinuous freeform surface of Martinez is seen as within the knowledge of the person of ordinary skill in the art before the effective filing date of the claimed invention as no new and unexpected result is produced. As such, duplicating the one discontinuous freeform surface of Martinez would provide
the freeform surfaces are discontinuous freeform surfaces, the method further comprising combining the freeform surfaces into a single, continuous freeform surface extending along substantially a total length of the collimation region (upper 105 region).
As the discontinuous freeform surfaces duplications would also include similar positioning as the original one, the freeform surfaces would be combined into a single, continuous freeform surface extending along substantially a total length of the collimation region (upper 105 region).
Claims 1-5, 7, and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Application Publication No. 20160131907 of Martinez et al. (Martinez) in view of U.S. Patent Application Publication No. 20070064310 of Mukawa et al. (Mukawa).
With respect to claim 1, Martinez (Figs. 1A, 1B) discloses an eyewear display system (eyepiece 100, ¶ 12 and adjacent, see Fig. 2A) comprising:
a curved lightguide (light guide component 105); and
a lightguide adjoined with the curved lightguide (the lower portion of 105 past the indented portion on the right side in Fig. 1B and as indicated with the “partially reflective portion 145” in Fig. 1A) as a separate lightguide structure (the extensions to light guide component 105 are seen as separate lightguide structures due to their separate optical characteristics),
the lightguide providing exit pupil replication (viewing region 150).
Martinez as set forth above does not disclose
a flat lightguide adjoined with the curved lightguide,
the flat lightguide providing exit pupil replication.
Mukawa (Fig. 9) discloses an image display apparatus that includes:
a flat lightguide (portion of prism 31 from about the area adjacent quarter wave plate 17 to the end of 31) adjoined with the curved lightguide (the portion of prism 31 above the portion adjacent 17),
the flat lightguide providing exit pupil replication (¶ 84, "The image light, …[is ultimately transmitted] to an optical pupil 32").
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a “curved/straight” configuration along the lines of Mukawa in a system according to Martinez as set forth above in order to provide an alternative configuration compatible with different requirements or constraints. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a wearable display) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Additionally, changes in shape are a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed shape was significant [in a distinctive way, i.e., unique, unpredictable, advantageous, or the like per below]. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); MPEP § 2144.04(IV)(B). This is particularly true when the specification gives little or no description of why such changes in shape are unique, unpredictable, advantageous, or the like. No disclosure is given in the application with regards to the patentable significance of the curved/flat shape configuration.
Herein, this point is referred to as “changes in shape”.
With respect to claim 2, Martinez in view of Mukawa as set forth above discloses the eyewear display system (100) of claim 1, including one wherein
the curved lightguide (105) comprises a collimation region (Martinez Fig. 1B, upper region of light guide component 105 with notch forming recess 130) located between a light source (display source 110) and a pupil replication region (viewing region 150) along a light propagation path (per the arrows and lines of Fig. 1B).
Martinez ¶ 22, "In other words, the curved sides of light guide component 105 operate to both transport display light 111 from a peripheral location to viewing region 150 while simultaneously collimating, or nearly collimating, the image without a separate or additional collimating lens between display source 110 and light guide component 105."
With respect to claim 3, Martinez in view of Mukawa as set forth above discloses the eyewear display system (100) of claim 2, including one wherein
the collimation region (upper region of 105) is configured to collimate display light (111) projected by the light source (110) such that the display light (111) is collimated when transmitted onto a surface of the pupil replication region (150) (per Fig. 1B).
Further, for product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties and/or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01(I).
Consequently, because Martinez in view of Mukawa as set forth above as set forth above provides the claimed structure of claim 2, the combination is seen as also providing the same claimed properties or functions of claim 2.
Unsupported features are seen to directly result from the supported/claimed structures. No authority is known by which unsupported or “naked” functions/characteristics/features can be claimed and subject to exclusive protection.
Below, this analysis is referred to as “same product/same features”.
With respect to claim 4, Martinez in view of Mukawa as set forth above discloses the eyewear display system of claim 3, including one wherein
the collimation region (upper 105 region) is configured to focus the display light (111) at least once along the light propagation path.
Same product/same features.
With respect to claim 5, Martinez in view of Mukawa as set forth above discloses the eyewear display system (100) of claim 2, including one wherein
the collimation region (upper 105 region) includes a first freeform surface extending substantially along a total length of the collimation region (upper 105 region).
Fig. 1B, the opposing surfaces of the upper portion are seen as freeform surfaces.
With respect to claim 7, Martinez in view of Mukawa as set forth above discloses the eyewear display system (100) of claim 1, including one further comprising
an outcoupler configured to adjust a display accommodation distance.
Martinez ¶ 29, "However, the curvature of partially reflective layer 165 applies lensing power to the internal display light 111.” Such lensing power is seen to provide means by which a display accommodation distance may be adjusted.
With respect to claim 14, Martinez as set forth above discloses the eyewear display system (100) of claim 13, but not one wherein
the pupil replication region includes a flat lightguide.
Mukawa (Fig. 9) discloses an image display apparatus that includes:
the pupil replication region (Fig. 9, 16-18 transmitting to optical pupil 32) includes a flat lightguide (the area at/about 16-19 in Fig. 9 is seen as flat per the figure).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a “curved/straight” configuration along the lines of Mukawa in a system according to Martinez as set forth above in order to provide an alternative configuration compatible with different requirements or constraints. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a wearable display) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Additionally, changes in shape are a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed shape was significant [in a distinctive way that contributes to and/or advances the art, i.e., unique, unpredictable, advantageous, or the like per below]. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); MPEP § 2144.04(IV)(B). This is particularly true when the specification gives little or no description of why such changes in shape are unique, unpredictable, advantageous, or the like. No disclosure is given in the application with regards to the patentable significance of the curved/flat shape configuration.
Herein, this point is referred to as “changes in shape”.
Claims 18 and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Martinez in view of Mukawa as set forth above and further in view of U.S. Patent Application Publication No. 20230324663 of Liang (Liang).
With respect to claim 18, Martinez in view of Mukawa as set forth above discloses the method of claim 17, but not one further comprising
diamond turning a substrate to produce the single, continuous freeform surface.
Liang discloses an all-reflective microscopy that includes (¶ 52):
"Fabrication: Single point diamond turning is a manufacturing technique to produce precision optical components with spherical, aspheric, freeform, and discontinuous surfaces."
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use diamond turning along the lines of Liang in a system according to Martinez as set forth above in order to provide production of precision optical components. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a wearable display) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
With respect to claim 19, Martinez in view of Mukawa and Liang as set forth above discloses the method of claim 18, including one further comprising
embedding the continuous freeform surface (light guide component 105, generally) into a portion of an eyewear display system (100) having a curved external form factor (Figs. 1B, 2A/B).
Claim 6 are rejected under 35 U.S.C. § 103 as being unpatentable over Martinez in view of Mukawa as set forth above and further in view of U.S. Patent Application Publication No. 20160109713 of Osterhout (Osterhout).
With respect to claim 6, Martinez in view of Mukawa as set forth above discloses the eyewear display system of claim 1, but not one further comprising
a tinted substrate.
Osterhout discloses a see-through computer display systems that includes (¶ 547):
"In yet a further embodiment, by providing a method for easily replacing the combiners 12360, different types of combiners can also be provided to the user such as: polarized combiners, combiners with different tints, combiners with different spectral properties, combiners with different levels of physical properties, combiners with different shapes or sizes, combiners that are partial mirrors or combiners that are notch mirrors, combiners with features to block faceglow as previously described herein."
Such combiners are indicated in ¶ 246:
"Wherein, the combiner element 602 is a partial mirror that reflects image light while transmitting a substantial portion of light from the environment so the user can look through the combiner element and see the environment surrounding the HWC."
As such, Osterhout is seen to teach the tinting of optical elements.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use tinting in optical elements along the lines of Osterhout in a system according to Martinez as set forth above in order to adjust transmission/absorption of light per ¶ 278 of Osterhout. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a wearable display) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Response to Arguments
Applicant's arguments filed January 22, 2026 have been fully considered but they are not persuasive and the claim rejections are not rebutted.
Applicant argues that:
In particular, the Office asserts that the feature "light source" as recited in claims 2, 3, 8, and 16 is not shown in the Drawings. However, the Applicant respectfully points out that the Application expressly discloses an optical engine that includes a light source, and this optical engine is shown and referenced in the drawings. For example, paragraphs [0021]-[0023] of the specification describe an optical engine configured to generate display light, wherein the optical engine includes one or more light sources (e.g., laser diodes, micro-LEDs, or other light emitters) that project display light into the lightguide. The optical engine is explicitly illustrated and labeled in the drawings (e.g., FIG. 2, optical engine 202), and the specification makes clear that the optical engine is the structural component that houses and provides the light source. Moreover, FIG. 7 and paragraphs [0032] describe a light source 702, FIG. 8 and paragraph [0033] describe a light source 802, FIG. 10, and paragraph [0038] describe a light source 1003, and FIG. 11 and paragraph [0039] describe a light source 1103.
Examiner response: The rule is clear and unambiguous in stating that the "drawing in a nonprovisional application must show every feature of the invention specified in the claims.” 37 C.F.R. § 1.83(a). Part (c) thereof is seen to empower examiner with the ability to declare non-responsive replies that do not comply with 37 C.F.R. §§ (a) and (b). In fact, the mandatory “shall” language of 37 C.F.R. § 1.83(c) requires examiner to do so.
Applicant should remedy its drawings immediately.
Every feature of the invention specified in the claims must be shown in the drawings. The requirements are clear and unambiguous.
Importantly, even if the figures only illustrated the optical engine, 37 C.F.R. § 1.83(a) does not require that every subcomponent of a disclosed and illustrated assembly be separately and explicitly depicted, provided that the drawings, when read in light of the specification, reasonably convey the claimed structure to a person of ordinary skill in the art. Here, a person of ordinary skill in the art would readily understand that a depicted optical engine necessarily includes a light source, as expressly described in the written description. The claims do not require a particular geometric configuration, placement, or internal construction of the light source beyond its inclusion within the optical engine, and the drawings are fully consistent with that disclosure.
Examiner response: Applicant perversely interprets 37 C.F.R. § 1.83(a) and does violence to the language by departing from the plain meaning thereof. The person of ordinary skill in the art before the effective filing date of the claimed invention has no bearing on this analysis – it is irrelevant. Consistency with the disclosure is not the requirement of the rule. Consistency with the claims is.
Applicant cites no authority for its unilateral conclusions and facile analysis.
Moreover, the Office Action does not identify any inconsistency between the drawings and the specification, nor does it allege that the claimed light source introduces new matter or ambiguity. Rather, the objection appears to be based solely on the absence of a separately labeled light-source icon within certain figures. Such a requirement exceeds the scope of § 1.83(a), particularly where the specification explicitly defines the optical engine as including the claimed light source and the drawings clearly depict that optical engine.
Examiner response: Applicant’s remarks here are irrelevant and, at best, indicate a misunderstanding of the rule. There does not seem to be any excuse for such ignorance.
In particular, the Office objects to the specification on the ground that certain claim terms allegedly lack antecedent basis because the precise terminology of the claims does not appear ipsis verbis in the written description.
Examiner response: True, but examiner is reluctant to have future readers, market competitors, and those who would design around an issued patent with valid claims required to root around in the specification to find out what patentee meant and what context patentee used its vocabulary. Clarity is part of the requirements here as a remedy to ambiguity and obfuscation.
Per 37 C.F.R. § 1.75(d), clear support or antecedent basis must be provided in the remainder of the specification to ensure "that the meaning of the terms in the claims may be ascertainable by reference to the description".
Currently, examiner does not see clear support or antecedent basis for the language subject to objection. Applicant must resolve/remedy this. It is Applicant’s burden.
However, it should be noted at the outset that 35 U.S.C. § 112(a) does not require that claim language be reproduced verbatim in the specification. Rather, the governing inquiry is whether the specification, including the drawings, reasonably conveys to a person of ordinary skill in the art that the inventor was in possession of the claimed subject matter at the time of filing. See AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Accordingly, the absence of identical wording between the claims and the specification does not, by itself, establish a lack of written description or antecedent basis. See also MPEP § 1302.01, which explains that exact terms need not be used in haec verba to satisfy the written description requirement of 35 U.S.C. § 112(a). Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995); In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976). Consistent with this principle, 37 C.F.R. § 1.121(e) merely requires substantial correspondence between the language of the claims and the language of the specification, not verbatim identity.
Examiner response: 35 U.S.C. § 112 is not seen as relevant to the specification objection. The two might be easily confused, but they are different. The objection is based on 37 CFR 1.75(d)(1) and MPEP § 608.01(o) as explicitly recited in the objection.
Here, even if certain phrases appearing in the claims are not recited in identical words in the specification, the claimed features are expressly described and illustrated in the written description and drawings, either in identical or in closely corresponding terms, such that a person of ordinary skill in the art would readily appreciate that the claimed subject matter was contemplated and disclosed. For example, with respect to the recited "surface of the pupil replication region" or "surface in the pupil replication region" appearing in claims 3, 9, and 10, the specification repeatedly discloses optical surfaces within the pupil replication region onto which display light is incident. Paragraph [0036] explains that, once collimated, the display light passes through the exit pupil expander region and is reflected by reflective facets in order to provide pupil expansion. Paragraph [0041] further describes that the flat exit pupil expander region includes flat reflective surfaces on opposing sides of the display system. These structures are explicitly illustrated in FIGs. 9-11, which depict reflective facets (e.g., elements 910 in FIG. 9 and 1108 in FIG. 11) located within the flat pupil replication region and show collimated light being projected onto those surfaces. Accordingly, the specification clearly supports a surface within the pupil replication region, even if that phrase is not repeated verbatim.
Examiner response: If what Applicant says is true, it needs to recite the "clear support or antecedent basis in the description"/them individually and distinctly to ensure the requirements of both statute and rule have been met. The burden is on Applicant, not examiner. This is not a game of hide the ball and connect the dots.
Particularly, there needs to be sufficient antecedent basis to know which "surface of the pupil replication region" or "surface in the pupil replication region" the claims refer to.
With respect to the recited "portion of the eyewear display system" in claims 13 and 15, the specification repeatedly describes distinct portions or regions of the eyewear display system having different form factors. Paragraph [0017] describes different regions of the support structure, including arm and nose-bridge regions. Paragraph [0033] discusses curved and flat lens display systems as different configurations of an eyewear display. Paragraphs [0035] through [0041] describe a curved collimating lightguide portion and a flat exit pupil expander region portion, each forming part of the eyewear display system. These portions are visually depicted in FIGS. 9-11, which clearly show distinct structural regions of the eyewear display system. Thus, the claimed "portion of the eyewear display system" is fully supported by the specification and drawings.
Examiner response: If what Applicant says is true, it needs to recite the "clear support or antecedent basis in the description"/them individually and distinctly to ensure the requirements of both statute and rule have been met. The burden is on Applicant, not examiner.
Particularly, there needs to be sufficient antecedent basis to know which "portion of the eyewear display system" the claims refer to.
With respect to the recited "plurality of freeform surfaces" in claim 16, the specification discloses multiple freeform surfaces positioned along the collimation region. Paragraph [0035] describes a number of discontinuous reflective surfaces positioned along opposing sides of the collimating lightguide, and paragraph [0038] similarly describes discontinuous reflective freeform surfaces. Paragraph [0042], describing the method of FIG. 12, recites positioning a plurality of discontinuous freeform surfaces along a collimation region before combining them into a single continuous freeform surface. These plural freeform surfaces are also depicted in FIGS. 9 and 10. Accordingly, the claimed plurality of freeform surfaces is sufficiently disclosed and described.
Examiner response: If what Applicant says is true, it needs to recite the "clear support or antecedent basis in the description"/them individually and distinctly to ensure the requirements of both statute and rule have been met. The burden is on Applicant, not examiner.
Particularly, there needs to be sufficient antecedent basis to know which "plurality of freeform surfaces" claim 16 refers to.
With respect to the recited "first freeform surface" in claims 5 and 12, the specification discloses individual freeform surfaces and opposing freeform surfaces extending along the collimation region. Paragraphs [0035], [0038], and [0039] describe freeform surfaces positioned along opposing sides of the collimating lightguide, and FIGs. 9-11 visually depict multiple distinct freeform surfaces. A person of ordinary skill in the art would readily understand that at least one such disclosed freeform surface constitutes a "first freeform surface", even if ordinal labeling is not explicitly used in the specification.
Examiner response: If what Applicant says is true, it needs to recite the "clear support or antecedent basis in the description"/them individually and distinctly to ensure the requirements of both statute and rule have been met. The burden is on Applicant, not examiner.
Particularly, there needs to be sufficient antecedent basis to know which "first freeform surface" the claims refers to.
Applicant seems to be admitting that there is no antecedent basis by relying on the person of ordinary skill in the art before the effective filing date of the claimed invention. In making the excuse, Applicant appears to be making a tacit admission. Examiner will accept such an admission, notes it for the record, and expects Applicant to provide proper antecedent basis in the specification with its next reply.
Accordingly, even if certain claim phrases do not appear ipsis verbis in the specification, the cited paragraphs and figures clearly describe and illustrate the claimed structures and relationships in a manner sufficient to convey possession of the claimed subject matter to a person of ordinary skill in the art. The Office's objection, therefore, improperly elevates terminological uniformity over substantive disclosure, contrary to 35 U.S.C. § 112(a) and controlling precedent. For at least these reasons, the Applicant respectfully submits that the specification as filed provides adequate written description support for the claims, and withdrawal of the specification objection is respectfully requested.
Examiner response: Examiner does not see any clear description and/or illustrations. Applicant is required to provide the proper antecedent basis according to the rules or the objection will remain outstanding and result in an ex parte Quayle action should allowable subject matter to be found.
Applicant is welcome to petition the Direction should it so wish. 35 U.S.C. § 1.181.
However, regarding claim 10, the Office the Office objects to this claim on the basis that the phrase "the collimated display light" allegedly lacks antecedent basis. The Applicant respectfully disagrees. Claim 10 depends from claim 9, which in turn depends from claim 8. Claim 8 expressly recites "display light projected by the light source" and further recites that "the collimation region is configured to collimate display light". Accordingly, claim 8 clearly introduces display light and further specifies that this display light is collimated by the collimation region. The phrase "the collimated display light" in claim 10, therefore, directly and unambiguously refers back to the display light that has been collimated by the collimation region as recited in claim 8.
Examiner response: Examiner considers Applicant’s comments to be an admission that there is no antecedent basis for the phrase "the collimated display light" in claim 10. The objection remains outstanding as unrebutted.
In particular, the Office asserts that the claims recite elements "configured to" perform certain operations or elements "providing" certain results. However, as a threshold matter, functional language such as "configured to" or "providing" is not per se improper and does not, by itself, render a claim non-compliant with the written description requirement. The Federal Circuit has repeatedly held that the written description inquiry is not whether the specification enumerates every conceivable implementation falling within the literal scope of the claims, but whether the disclosure, viewed as a whole, reasonably conveys to a person of ordinary skill in the art that the inventor was in possession of the claimed invention at the time of filing. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). There is no requirement that the specification describe "all devices now known or later developed", as asserted in the Office Action, and imposing such a requirement would improperly conflate written description with an enablement standard far exceeding what § 112(a) requires.
Examiner response: The § 112 rejection is based on what is referenced in MPEP § 2164.08 as that which Applicant claims has a scope that exceeds what is enabled. The “providing” and “configured” language delivers a scope seen by examiner to exceed any enabled subject matter.
While Applicant has enabled some degree of what is covered by the claims, and is seen to have enabled an embodiment covered by the claims, Applicant’s duty and responsibility is to enable the entirety of the scope of the claims. This, Applicant has not done by using open-ended language that exceeds any verbal/written articulation. Gainsaying by Applicant fails to remedy this flaw/shortcoming.
The rejection is not rebutted.
Here, the Office's rejection rests on the incorrect premise that the claims recite purely aspirational results untethered to disclosed structure. That premise is demonstrably false. The specification discloses, in extensive structural detail, how the recited functions are achieved, and the claims merely characterize the operation of those disclosed structures using accepted functional language. For example, with respect to claim 1, which recites "a flat lightguide providing exit pupil replication", the specification repeatedly discloses flat exit pupil expander (EPE) regions incorporating reflective facets or equivalent optical structures that perform pupil replication. Paragraphs [0035]-[0041] of the specification describe flat EPE regions positioned downstream of a collimation region, including reflective facets that replicate the exit pupil, and FIGs. 9-11 visually depict these flat pupil replication regions and their associated reflective surfaces. The claim language, therefore, does not recite an abstract result divorced from structure, but rather describes the functional operation of a specifically disclosed flat lightguide structure.
Examiner response: Applicant uses examiner’s vocabulary to distract from the main issue: the scope of what is claimed must be disclosed. Examiner attempted to aid Applicant by giving it some detail and insight which has now been turned on examiner. Examiner is instructed.
The rejection is not rebutted as the specification does not and cannot enable the same scope as that claimed. Applicant is limited in its claims to that which is disclosed/enabled.
Similarly, with respect to claim 8, which recites that "the collimation region is configured to collimate display light", the specification describes in detail how collimation is performed within the curved lightguide itself, including by discontinuous reflective surfaces, discontinuous freeform surfaces, or continuous reflective freeform surfaces extending along the collimation region. See the specification at, for example, paragraphs [0035], [0038], and [0039], as well as FIGs. 9-11. The disclosure explains that these reflective surfaces cause multiple internal reflections that collimate the display light prior to entry into the pupil replication region. Thus, the claimed collimation is not an aspirational goal, but the expressly disclosed result of a particular optical architecture.
Examiner response: The specification as originally filed is limited to whatever disclosure has been made whereby the "the collimation region is configured to collimate display light". Without a description of how such configuration is achieved, Applicant is very limited as to what it can claim. It is clear that Applicant cannot claim every single configuration as that is not what has been enabled.
Per MPEP § 2164.08, ¶ 2:
The courts have repeatedly held that "the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’" or that any experimentation must be "reasonable". See Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023); McRO, Inc. v. Bandai Namco Games Am. Inc., 959 F.3d 1091, 2020 USPQ2d 10550 (Fed. Cir. 2020); Wyeth & Cordis Corp. v. Abbott Laboratories, 720 F.3d 1380, 107 USPQ2d 1273 (Fed. Cir. 2013); Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., 928 F.3d 1340 (Fed. Cir. 2019); and Idenix Pharmaceuticals LLC v. Gilead Sciences Inc., 941 F.3d 1149, 2019 USPQ2d 415844 (Fed. Cir. 2019). See also In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). Nevertheless, not everything necessary to practice the invention need be disclosed. In fact, what is well-known is best omitted. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991). All that is necessary is that one skilled in the art be able to practice the claimed invention, given the level of knowledge and skill in the art. Further, the scope of enablement must only bear a "reasonable correlation" to the scope of the claims. See, e.g., In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). See Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 611, 2023 USPQ2d 602 (2023) (The Court stated that "[t]he more one claims, the more one must enable.)".
Emphasis added.
The rejection is not rebutted.
The same is true of claim 16, which recites freeform surfaces "configured to collimate display light". Paragraphs [0035], [0038], and [0042] of the specification disclose a plurality of freeform surfaces positioned along the collimation region, and further disclose combining those surfaces into a continuous freeform surface, with FIG. 12 illustrating the corresponding manufacturing method. The specification, therefore, describes both the structure (freeform reflective surfaces arranged along the light path) and the mechanism (controlled reflection within a curved lightguide) by which collimation is achieved. The claims simply describe those disclosed structures in functional terms, as is entirely permissible.
Examiner response: The same “configured” language sustains the rejection. Only the configurations set forth in the specification as originally filed can be claimed. The claims go far beyond that scope with the broad “configured” language.
Contrary to the Office's assertions, this is not a case where the claims seek to monopolize an unexplained result or a "wishlist" of desired outcomes. Rather, the claims are structurally anchored to specific lightguides, collimation regions, freeform reflective surfaces, and pupil replication regions, all of which are described and illustrated in the specification with sufficient detail to demonstrate possession. The Office's rejection improperly treats the presence of functional language as dispositive, without addressing the extensive structural disclosure that underlies that language.
Examiner response: It sure seems like a wishlist to examiner where what is “configured” and what is "provided" are given very little, if any, description in the specification as originally filed. Broad language requires broad enablement.
The rejection is not rebutted.
Moreover, the Office's reliance on MPEP §2173.05(g) is misplaced. That section addresses claims whose breadth is unsupported by the disclosure, not claims that describe disclosed structures by reference to their operation. The Federal Circuit has made clear that written description does not require a specification to catalog every embodiment or future variation encompassed by the claims, so long as the disclosure demonstrates possession of the claimed invention. id. The present specification easily satisfies that standard.
Examiner response: Claims whose breadth is unsupported by the disclosure is exactly the basis upon which examiner is rejecting the claims under § 112. The same issue presents itself in MPEP §§ 2173.05(g) and 2164.08. Applicant can only claim what it discloses. If the scope of the claims exceeds that scope which is disclosed in the remainder of the specification as originally filed, the claims are rightfully and validly rejected under 35 U.S.C. § 112(a).
Examiner agrees that Applicant has possession of the claimed subject matter in that the claims read on what Applicant considers the invention to be. However, the scope of the claims as written exceeds the scope of that possession.
Finally, the absence of "special definitions" under MPEP § 2111.01(IV) is irrelevant to the § 112(a) analysis. The Applicant does not rely on special definitions; rather, the claims are interpreted according to their plain meaning, and that plain meaning is fully supported by the structures and relationships disclosed in the specification and drawings. No ambiguity or uncertainty arises that would undermine written description compliance.
Examiner response: Examiner appreciates and notes the admission that Applicant does not rely on special definitions.
Accordingly, the Office's § 112(a) rejection rests on an erroneous legal standard and a mischaracterization of the disclosure. The specification, when read as a whole, clearly demonstrates possession of the claimed eyewear display system, its collimation region, its freeform reflective surfaces, and its flat pupil replication region. For at least these reasons, the Applicant respectfully submits that claims 1-20 comply with the written description requirement of 35 U.S.C. § 112(a), and withdrawal of the rejection is respectfully requested.
Examiner response: Examiner disagrees, believes that the appropriate legal standard has been both recognized and applied correctly, and that the specification does not disclose subject matter commensurate with the broad scope of the claims.
Demonstrating possession of an embodiment within the scope of the claims is not the same as disclosing and enabling the entire scope of the claimed subject matter. The two are different.
For the reasons given above, the rejections are maintained and such rejections are not seen as rebutted.
In the present case, the Office has failed to show that Martinez discloses each and every element of amended claim 8, arranged as required by the claim. In particular, the Office has failed to establish that Martinez discloses a lightguide comprising both a pupil replication region and a collimation region that is configured to produce collimated display light prior to entry of the display light into the pupil replication region, as expressly required by claim 8.
Examiner response: As indicated in the rejection, all elements are present and/or account for, including the light guide, the associated structures, and the claimed relationships. Applicant’s amendments are not seen to remove the claimed subject matter from that which is known to the person of ordinary skill in the art before the effective filing date of the claimed invention.
However, the Office's analysis does not satisfy the anticipation standard for amended claim 8. Claim 8 does not merely require that collimation occur somewhere within a lightguide prior to emission of light. Claim 8 affirmatively recites a collimation region configured to produce collimated display light prior to entry of the display light into the pupil replication region, and further requires that this collimation region be located between the light source and the pupil replication region along a light propagation path. Claim 8, therefore, requires a staged optical arrangement in which collimation is completed upstream, such that display light enters the pupil replication region in a collimated state.
Examiner response: Martinez is seen to have these features per the rejection.
With respect to the asserted pupil replication region, the Office relies on Martinez's viewing region 150, which Martinez describes as a region from which display light exits the light guide component toward the user's eye (see Martinez at paragraphs [0021] and [0022]). The Office has only shown that Martinez discloses an outcoupling or viewing region. The Office has not shown that Martinez discloses a pupil replication region that receives display light after collimation has been completed, as required by amended claim 8. Rather, the Office's mapping assumes that collimation and outcoupling may occur within the same region, which is inconsistent with the claim language.
Examiner response: Per the rejection, Martinez provides an image to the user’s pupil. Such an image is seen to replicate that which is intended to be transmitted by the display source 110.
Further, the specification as originally filed gives no indication as to what "pupil replication region" means. Any ambiguities in the application’s language are solely Applicant’s responsibility.
The Office's reliance on inherency under In re Best does not cure these deficiencies. Inherency may establish that a disclosed structure necessarily possesses a particular property, but it cannot be used to supply a missing structural and temporal arrangement expressly recited in the claim. Here, the Office has not shown that Martinez necessarily includes a collimation region configured to produce collimated display light prior to entry of the display light into a pupil replication region. Instead, the Office assumes that because collimation effects are described in Martinez, the required sequencing must inherently exist. This assumption improperly supplies a missing limitation that is not shown or necessarily implied by Martinez.
Examiner response: As Martinez has the same structures as claimed, Martinez is presumed to have the same features and/or characteristics per MPEP § 2112.01(I). Applicant alone is responsible for the breadth of its claims.
However, the Office's analysis does not satisfy the anticipation standard for a method of manufacturing claim. Claim 16 does not recite a finished optical structure or a lightguide having freeform surfaces. Rather, claim 16 affirmatively recites a manufacturing method, including the step of "positioning a plurality of freeform surfaces along a collimation region". The Office has not identified any disclosure in Martinez of a manufacturing step that positions a plurality of freeform surfaces along a collimation region, as required by claim 16.
Examiner response: In order to achieve the "finished optical structure or a lightguide having freeform surfaces", examiner sees that the steps taken in claim 16 must by needs/necessity arise as the only way to achieve "a collimation region for an eyewear display system".
Moreover, claim 16 requires that the plurality of freeform surfaces be positioned along a collimation region, not merely that freeform surfaces exist on opposite sides of a lightguide. The Office has not shown that Martinez discloses a collimation region as a region defined by the positioning of a plurality of freeform surfaces. Instead, the Office has only shown that Martinez discloses a single curved light guide component in which boundary surfaces simultaneously perform multiple optical functions as part of a continuous optical structure. Subdividing that structure into an "upper region" after the fact does not establish disclosure of the claimed manufacturing step or the claimed arrangement.
Examiner response: No constriction or limit is seen to be imposed on the “positioning” step. As such, such “positioning” can occur with design and/or manufacture. For example, if the collimation region is molded or cast, the freeform surfaces achieve their position, are subject to positioning, during that molding or casting.
The Office's reliance on the statement in Martinez that the curved sides of the light guide component "collimate, or nearly collimate" the image (see Martinez at paragraph [0022]) likewise does not cure these deficiencies. Claim 16 does not recite surfaces that incidentally contribute to collimation as part of a finished structure. Claim 16 recites a manufacturing method in which a plurality of freeform surfaces are positioned along a collimation region, with those surfaces being configured to collimate display light. The Office has only shown an optical effect of curved boundary surfaces in a completed device, not disclosure of the claimed manufacturing step or the claimed arrangement of a plurality of freeform surfaces along a collimation region.
Examiner response: See above regarding molding/casting. Further, Martinez ¶ 22 has collimation as part of the image generation/preservation/transmission.
The Office's anticipation theory, therefore, improperly infers a manufacturing process from the existence of a finished product. Anticipation of a method claim requires disclosure of the claimed acts, not merely a structure from which such acts might be inferred in hindsight. The Office has not identified any passage in Martinez describing the act of positioning a plurality of freeform surfaces along a collimation region during manufacturing, nor has the Office shown that such a step is necessarily inherent in Martinez.
Examiner response: No impropriety is seen. Applicant’s broad language allows for at least the Martinez reference to read on the claim. Martinez may not describe explicitly "the act of positioning a plurality of freeform surfaces along a collimation region during manufacturing", but the making of a device according to Martinez would require such positioning. So, indeed, examiner is making an argument that "such a step is necessarily inherent in Martinez". The device of Martinez could not be achieved without such a step.
However, the Office has not established that Martinez discloses two lightguides at all, much less a curved lightguide adjoined with a flat lightguide as a separate lightguide structure, as now expressly required by claim 1. Martinez describes a single light guide component 105 that guides display light from a peripheral location to a viewing region within the same component (see Martinez at paragraphs [0012] and [0013]). The Office has only identified different portions of that single light guide component as allegedly corresponding to multiple lightguides. The Office has not identified any disclosure in Martinez describing a flat lightguide that is structurally separate from and adjoined with a curved lightguide. Treating a lower portion of a single light guide component as a separate lightguide is a recharacterization of the reference rather than a disclosure.
Examiner response: Martinez discloses lightguides that have separate optical characteristics. As such, there is a “separation” and there are “separate” lightguide structures.
The Office further relies on viewing region 150 of Martinez as allegedly providing exit pupil replication (see Martinez at paragraphs [0021] and [0022]). However, the Office has only shown that Martinez describes a region from which display light exits toward the user's eye. The Office has not established that Martinez discloses exit pupil replication, nor has it shown that any flat lightguide provides such replication, as required by claim 1. Claim 1 assigns exit pupil replication to the flat lightguide, and the Office has not identified any disclosure in Martinez of a flat lightguide, separate or otherwise, performing that function.
Examiner response: See the analysis above regarding the "pupil replication region".
Per the rejection, Martinez provides an image to the user’s pupil. Such an image is seen to replicate that which is intended to be transmitted by the display source 110.
Further, the specification as originally filed gives no indication as to what "exit pupil replication" means. Any ambiguities in the application’s language are solely the responsibility of Applicant.
Examiner’s view is that any structure in Martinez capable of providing "exit pupil replication" does so. Martinez’s viewing region 150 is seen to read on Applicant’s language and there is no supporting and distinctive description in the specification as originally filed that goes beyond Applicant’s mere and terse vocabulary. Using a unique, fanciful, or fabricated phrase to describe something known in the art is insufficient to create novelty and/or non-obviousness. Six of one is half a dozen of the other.
However, Mukawa fails to disclose a flat lightguide as a separate lightguide structure adjoined with a curved lightguide. Mukawa describes prism 31 as a single prism having first and second curved optical surfaces that guide light by total internal reflection (see Mukawa at paragraph [0080]). Mukawa fails to provide any disclosure describing two lightguides, one flat and one curved, that are structurally separate and adjoined to one another. The Office's rationale impermissibly recharacterizes structural elements of a single prism as multiple lightguides, which is not supported by the references.
Examiner response: The "separate lightguide" issue is addressed above.
Mukawa also fails to disclose exit pupil replication being provided by a flat lightguide. Mukawa's statement that image light is transmitted to an optical pupil 32 (see Mukawa at paragraph [0084]) describes delivery of image light to a pupil, not replication of an exit pupil. Mukawa does not disclose a structure configured to replicate or expand an exit pupil, nor does Mukawa disclose a flat lightguide that provides exit pupil replication, as required by claim 1.
Examiner response: As indicated in the rejection, Mukawa provides (¶ 84), " image light, …[that is ultimately transmitted] to an optical pupil 32"). Replication of an image is made that is transmitted, on exit from the system, to a pupil. This sounds like “exit pupil replication” to examiner. The rejection is not rebutted.
The Office asserts that it would have been obvious to combine Martinez and Mukawa to provide a "curved/straight" configuration as an alternative shape, and further asserts that such a combination would yield predictable results and that changes in shape are a matter of design choice (citing MPEP §§ 2141 and 2144.04). However, this rationale does not address the claim-required structural arrangement. Claim 1 is not directed merely to a change in shape; it requires an eyewear display system comprising a curved lightguide and a flat lightguide adjoined with the curved lightguide as a separate lightguide structure, with the flat lightguide providing exit pupil replication. The Office has not established that a person of ordinary skill in the art would have modified Martinez's single light guide component to include a separate flat lightguide structure adjoined with the curved lightguide and configured such that the flat lightguide provides exit pupil replication, nor has the Office established a reasonable expectation of success for such a modification based on the cited references.
Examiner response: Applicant interprets its own language one way; examiner interprets it another. Examiner sees the “curved/straight” and “separate lightguide” elements in the combination as made for the reasons given above. As such, the rejections are not rebutted.
Claims are given their broadest reasonable interpretation/BRI. MPEP § 2111.
Applicant's arguments with regards to the remaining claims all rely upon the arguments set forth above. Consequently, these remaining arguments as seen as being addressed by the examiner's corresponding remarks.
Applicant’s remaining arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. As such, the examiner makes no remarks regarding them.
Conclusion
Applicant’s publication US 20240004199 A1 published January 4, 2024 was previously cited.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references have elements related to Applicant’s disclosure and/or claims or are otherwise associated with the other cited references, particularly with respect to pupil-related optical display systems and the like.
Applicant's amendment necessitated any 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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/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
February 25, 2026