FINAL OFFICE ACTION
REISSUE OF U.S. PATENT NO. 11,054,701
TABLE OF CONTENTS
1. ACKNOWLEDGEMENTS 3
2. ADDITIONAL TERMS 3
3. REISSUE PROCEDURAL REMINDERS 4
4. OTHER PROCEEDINGS 5
5. STATUS OF CLAIMS 6
6. PRIORITY AND AIA STATUS 6
7. RESPONSE TO ARGUMENTS 7
8. DRAWINGS 8
9. CLAIM OBJECTIONS 9
10. BROADEST REASONABLE INTERPRETATION (BRI) 10
11. CLAIM INTERPRETATION AND 35 USC § 112(f) 12
11.1. Functional Phrase #1 or FP#1 13
11.1.1. Prong (A) 14
11.1.2. Prong (B) 17
11.1.3. Prong (C) 17
11.1.4. Corresponding Structure for FP#1 18
12. CLAIM REJECTIONS – 35 USC § 112(a) 20
12.1. No Species To Satisfy The Written Description Requirement 20
13. CLAIM REJECTIONS – 35 USC § 112(b) 23
13.1. Insufficient Disclosure Of Corresponding Structure 24
13.2. Omission of Essential Elements 24
13.3. Conclusion of 35 USC § 112(b) Rejections 26
14. ALLOWABLE SUBJECT MATTER 26
15. CONCLUSION 27
ACKNOWLEDGEMENTS
This final Office action addresses U.S. reissue application No. 18/216,901 (“Instant Application”). Based upon a review of the Instant Application, the actual filing date is 30 June 2023 (“Actual Filing Date”).
The Instant Application is a reissue application of U.S. Patent No. 11,054,701 (“Patent Under Reissue” or “'701 Patent”) titled “ILLUMINATION DEVICE FOR A SCREEN FOR A FREE AND A RESTRICTED VIEWING MODE.”
An application for the Patent Under Reissue was filed on 17 February 2021 (“Base Application Filing Date”) and assigned by the Office non-provisional U.S. patent application number 17/177,835 (“Base Application” or “'835 Application”) and issued on 06 July 2021 with claims 1–26 (“Originally Patented Claims”).
On 21 August 2025, a non-final Office action was issued (“Aug 2025 Non-Final Action”).
On 21 January 2026, Applicant submitted a response to the Aug 2025 Non-Final Action (“Jan 2026 Response”).
This final Office action addresses the Jan 2026 Response.
ADDITIONAL TERMS
The following terms may appear in this Office action and, unless expressly noted otherwise, are defined as follows:
“POSITA” refers to a Person of Ordinary Skill in the Art.
“BRI” refers to Broadest Reasonable Interpretation.
“MPEP” refers to Manual of Patent Examining Procedure, Ninth Edition, Rev. 01.2024.
“IFW” refers to Image File Wrapper.
“35 USC” refers to Title 35 of the United States Code.
“37 CFR” refers to Title 37 of the Code of Federal Regulations.
“AIA ” refers to America Invents Act.
“Original Application” means the prosecution history of the Base Application, including the applications in the patent family’s entire prosecution history. See MPEP § 1412.02.
“Original Disclosure” means the substantive sections of the Base Application (i.e., the abstract, drawings, specification, and original claims) that were present in the Base Application on the Base Application Filing Date.
“Applicant” (uppercase) refers to the Applicant of the Instant Application.
“applicant” (lowercase) refers to an applicant(s) generally.
“patent owner” (lowercase) refers to a patent owner(s) generally and not the Applicant.
“Examiner” (uppercase) refers to the Examiner of the Instant Application.
“examiner” (lowercase) refers to an examiner(s) generally, e.g. the examiner of the Base Application, or any examiner(s) other than the Examiner.
REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 CFR § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
OTHER PROCEEDINGS
Based upon the Examiner’s independent review of the Patent Under Reissue itself and its prosecution history, the Examiner cannot locate any concurrent proceedings before the Office, ongoing litigation, previous reexaminations (ex parte or inter partes), supplemental examinations, or certificates of correction regarding the Patent Under Reissue.
STATUS OF CLAIMS
Claims 1–26, as set forth in the Jan 2026 Response, are currently pending (“Pending Claims”) and currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 1–26 are rejected under 35 USC § 112(a).
Claims 1–26 are rejected under 35 USC § 112(b).
Claim 26 is objected to.
PRIORITY AND AIA STATUS
Domestic Priority. Based upon a review of the Instant Application and the Patent Under Reissue, the Examiner finds that in the Instant Application there is not a claim for benefit of domestic priority under 35 USC §§ 120 or 119(e). Because the instant application does not claim benefit of domestic priority, the effective U.S. filing date of the instant application is the Base Application Filing Date.
Foreign Priority. Based upon a review of the Instant Application and the Patent Under Reissue, the Examiner finds the Instant Application contains a claim for benefit of foreign priority under 35 USC §§ 119(a)–(d) to DE 10 2020 001 232.9 (“Foreign Application”). To the extent the disclosure of the Foreign Application supports the Pending Claims under 35 USC § 112, the supported claims receive benefit of a priority date of 18 February 2020, which is the filing date of the Foreign Application. Based upon a review of the Base Application and its prosecution history, the Examiner concludes that Applicant has not perfected their claim for foreign priority. See MPEP § 214.
AIA Status. Because the Instant Application does not contain a claim having an effective date before March 16, 2013, the AIA provisions apply. In the event the determination of the status of the application as subject to AIA 35 USC §§ 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.
RESPONSE TO ARGUMENTS
Applicant argues that foreign priority has been perfected because the ADS includes a claim to the Foreign Application. Jan 2026 Response at p. 10. This argument is not persuasive because Applicant has not provided a certified translation of the Foreign Application.
Applicant argues that the drawings are sufficient because Figs. 1–4 and 6 show outcoupling elements identified by reference numeral 6. Jan 2026 Response at p. 10. This argument is not persuasive because the drawings do not show the structure of the outcoupling elements meant by the function “cause light incident to said surfaces to be coupled out through one of the large surfaces at a defined angular range.”
Applicant argues that 35 USC § 112(f) no longer applies in view of the amendments. Jan 2026 Response at p. 17. This argument is not persuasive for the reasons given below in the section titled “CLAIM INTERPRETATION AND 35 USC § 112(f).”
Applicant argues that the claims are no longer directed to a genus by removing the limitation “a distribution […].” Jan 2026 Response at p. 19. The Examiner respectfully disagrees. By expressly removing “a distribution […],” which causes the functional result, Applicant has merely amended the claims to associate the functional result with the outcoupling elements recited, instead of the now removed “distribution.” Moreover, since the outcoupling elements invoke § 112(f), the distribution is brought into the claim as part of the corresponding structure, infra. The Examiner maintains the rejection.
Applicant argues that “essential” properties of the disclosed invention are already claimed. Jan 2026 Response at p. 22. The Examiner respectfully disagrees. The claim language pointed to by Applicant at least does not show any essential property of the necessary distribution. The claimed result is no longer claimed as that of the distribution. Even if it were, it is a claimed result, not a property of the distribution determined by use of optical simulation software.
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. Therefore, the “outcoupling elements,” as claimed, must be shown or the features canceled from the claims. For example, none of the drawings show the structure meant by “outcoupling elements that include surfaces that cause light incident to said surfaces to be coupled out through one of the large surfaces at a defined angular range,” as recited by claim 1. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR § 1.173(b)(3) are required in reply to the Office action to avoid abandonment of the application. Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event that a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.” All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings. 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.
CLAIM OBJECTIONS
37 CFR § 1.173(d) states:
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding “Large Tables” (§ 1.58(c)), a “Computer Program Listing Appendix” (§ 1.96(c)), a “Sequence Listing” (§ 1.821(c)), and a “Sequence Listing XML” (§ 1.831(a)) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
Based upon a review of the preliminary amendment filed on the Actual Filing Date, and in light of 37 CFR § 1.173(d), the Examiner finds amended claim 26 is improperly marked up. All matter to be added or deleted by reissue must be indicated by underlining and bracketing, respectively, in accordance with Rule 173(d). Furthermore, all changes must be made in respect to the claim language appearing in the Patent Under Reissue. In particular, according to the Patent Under Reissue (including its attached Certificate of Correction), original patent claim 26 recites “polarization, and” at C21:L18. However, claim 26 now includes the following amendment, -- polarization, and[[,]] -- which does not include changes with respect to the claim language appearing in the Patent Under Reissue. In particular, the addition of a comma after the word “polarization” does not include a change with respect to the claim language appearing in the Patent Under Reissue, since a comma already exists after the word “polarization” in the Patent Under Reissue. The same is true for the removal of the comma after the word “and,” i.e., there is no comma after the word “and” in the Patent Under Reissue. Furthermore, when removing text, use of double brackets is improper in this instance. All deletions to the claims in the Instant Proceeding should be done by use of single brackets. Appropriate correction is required.
BROADEST REASONABLE INTERPRETATION (BRI)
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01 I. Moreover, it is improper to import claim limitations from the specification, e.g., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01 II. Therefore, unless otherwise noted below, the Examiner will interpret the limitations of the Pending Claims using the broadest reasonable interpretation.
After careful review of the original specification, the Examiner finds he cannot locate any lexicographic definitions (either express lexicographic definitions or implied lexicographic definitions) with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his own lexicographer. See MPEP § 2111.01 IV.
The Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other sources to support his interpretation of the claims.1 Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
featuring (v.) “2. To have or include as a prominent part or characteristic: The play featured two well-known actors.” American Heritage Dictionary of the English Language (5th Ed. 2011).
functional (adj.) “2. Designed for or adapted to a particular function or use: functional architecture.” American Heritage Dictionary of the English Language (5th Ed. 2011).
surface (n.) “1. a. The outer or the topmost boundary of an object. b. A material layer constituting such a boundary.” American Heritage Dictionary of the English Language (5th Ed. 2011).
material (adj.) “1. Of, relating to, or composed of matter.” American Heritage Dictionary of the English Language (5th Ed. 2011).
junction (n.) “1. The act or process of joining or the condition of being joined. 2. A place where two things join or meet, especially a place where two roads or railway routes come together and one terminates. 3. A transition layer or boundary between two different materials or between physically different regions in a single material, especially: a. A connection between conductors or sections of a transmission line. b. The interface between two different semiconductor regions in a semiconductor device. c. A mechanical or alloyed contact between different metals or other materials, as in a thermocouple.” American Heritage Dictionary of the English Language (5th Ed. 2011).
distribution (n.) “2. Something distributed; an allotment: distributions from a retirement account.” American Heritage Dictionary of the English Language (5th Ed. 2011).
distribute (v.) “3. a. To place in separate pieces or examples over an area; scatter: distribute grass seed over the lawn. b. To apportion so as to be evenly spread throughout a given area: 180 pounds of muscle that were well distributed over his 6-foot frame.” American Heritage Dictionary of the English Language (5th Ed. 2011).
scatter (v.) “2. a. To distribute (something) loosely; strew: Books were scattered across the floor. b. To strew something over (a surface): The field was scattered with rocks.” American Heritage Dictionary of the English Language (5th Ed. 2011).
CLAIM INTERPRETATION AND 35 USC § 112(f)
The following is a quotation of 35 USC § 112(f) (emphasis added):
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
One exception to the broadest reasonable interpretation standard occurs when a claimed phrase is interpreted in accordance with 35 USC § 112(f) (“§ 112(f)”). See MPEP § 2181 et seq. To invoke § 112(f), a claimed phrase must meet the three prong analysis (“3 Prong Analysis”) as set forth in MPEP § 2181 I.
Use of the word “means” in a claim with functional language creates a rebuttable presumption that the claim limitation should be interpreted in accordance with § 112(f). The presumption that the claim limitation is interpreted under § 112(f) is rebutted when the claim limitation recites sufficient structure to perform the entire claimed function.
Absence of the word “means” in a claim creates a rebuttable presumption that the claim limitation is not to be interpreted in accordance with § 112(f). The presumption that the claim limitation is not interpreted under § 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure to perform the entire claimed function.
Claim limitations that use the word “means” are therefore being interpreted under § 112(f), except as otherwise indicated below. Conversely, claim limitations that do not use the word “means” are not being interpreted under § 112(f), except as otherwise indicated below.
The following phrases will be first identified and then analyzed using the MPEP’s 3 Prong Analysis to determine if the claimed phrase invokes § 112(f). If a phrase invokes § 112(f), the corresponding structure for the phrase will also be determined.
Functional Phrase #1 or FP#1
The first functional phrase to be considered is “outcoupling elements that include surfaces that cause light incident to said surfaces to be coupled out through one of the large surfaces at a defined angular range […] wherein, light radiated by the light sources into the light guide and coupled out of the light guide by the outcoupling elements which are on at least one of the large surfaces or within the volume of the light guide, satisfies the following conditions: at least 80% of the total quantity of light coupled out of one of the large surfaces is radiated within an angular range of 60°, and more than 50% of the quantity of light coupled out of the light guide is radiated either in the direction away from the background illuminator or in the direction towards the background illuminator.” Claim 1 (“Functional Phrase #1” or “FP#1”).
For purpose of discussion below, FP#1 is broken into the following three parts:
(1) “outcoupling elements that include surfaces” (“Introductory Phrase of FP#1);
(2) “that” (“Linking Phrase of FP#1); and
(3) “cause light incident to said surfaces to be coupled out through one of the large surfaces at a defined angular range […] wherein, light radiated by the light sources into the light guide and coupled out of the light guide by the outcoupling elements which are on at least one of the large surfaces or within the volume of the light guide, satisfies the following conditions: at least 80% of the total quantity of light coupled out of one of the large surfaces is radiated within an angular range of 60°, and more than 50% of the quantity of light coupled out of the light guide is radiated either in the direction away from the background illuminator or in the direction towards the background illuminator” (“Function of FP#1”).
Prong (A)
In accordance with the MPEP, Prong (A) requires “the claim limitation uses the term ‘means’ […] or a term used as a substitute for ‘means’ that is a generic placeholder […] for performing the claimed function.”2 MPEP § 2181 I. (“Prong (A)”).3
As an initial matter, the Examiner finds that FP#1 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112(f) is not invoked can be overcome. “Even in the face of this presumption, the examiner should nonetheless consider whether the presumption is overcome.” MPEP § 2181 I.
With respect to the presumption that 35 USC § 112(f) is not invoked, “[t]he question is not whether a claim term recites any structure but whether it recites sufficient structure—a claim term is subject to § 112 ¶ 6 if it recites ‘function without reciting sufficient structure for performing that function.’ Williamson, 792 F.3d at 1348 (emphasis added) (quoting Watts, 232 F.3d at 880). [Emphasis in original.]” Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367, 1374 (Fed. Cir. 2020).
“And, again, the question is not whether [the claim term] is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions.” Egenera at 1374 (emphasis added).
To help understand the meaning of “sufficient structure,” the MPEP and the Federal Circuit have stated that:
Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.
See MPEP § 2181 I. quoting TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008).
Moreover, in assessing whether or not FP#1 meets Prong (A), the Examiner must not only consider the Introductory Phrase of FP#1 in isolation, but the entire FP#1 including the Function of FP#1. See MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019) (“In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase.”).
The Examiner has looked to dictionaries and finds no evidence that the Introductory Phrase of FP#1, i.e., the term “outcoupling elements that include surfaces,” has achieved recognition as a term denoting structure for performing the Function of FP#1. See above section titled “BROADEST REASONABLE INTERPRETATION (BRI).”
Similarly, upon review of the record (including the prior art of record), the Examiner finds no evidence that the term “outcoupling elements that include surfaces” has achieved recognition as denoting structure for performing the Function of FP#1. Moreover, the term “element” does not imply structure and can be interpreted as a generic placeholder or a nonce term. See MPEP § 2181 I.A. Furthermore, any type of elements would have “surfaces,” and therefore the term “surfaces” does not make the elements term any less generic.
Therefore, based upon consultation of dictionaries and a review of the record, the Examiner concludes that the term “outcoupling elements that include surfaces” is not an art-recognized structure to perform the Function of FP#1, and claim 1 does not recite any other structure that would perform this claimed function.
Therefore, because the ordinary meaning of “outcoupling elements that include surfaces” is not an art-recognized structure to perform the Function of FP#1, the Examiner concludes that the ordinary meaning of the Introductory Phrase of FP#1 does not include sufficient structure for performing the Function of FP#1. See at least TriMed, as cited above.
Therefore, the Examiner concludes that “outcoupling elements that include surfaces” is a generic placeholder for performing the Function of FP#1, and therefore FP#1 meets Prong (A).
Prong (B)
In accordance with the MPEP, Prong (B) requires “the term ‘means’ […] or the generic placeholder is modified by functional language, typically, but not always linked by the transition word ‘for’ […] or another linking word or phrase, such as ‘configured to’ or ‘so that.’” MPEP § 2181 I. (“Prong (B)”).
Based upon the claim language itself, the Examiner finds that the Introductory Phrase of FP#1 (generic placeholder) is modified by the Function of FP#1 (functional language) linked by the Linking Phrase of FP#1. Therefore, the Examiner concludes that FP#1 meets Prong (B).
Prong (C)
In accordance with the MPEP, Prong (C) requires “the term ‘means’ […] or the generic placeholder is not modified by sufficient structure […] for performing the claimed function.” MPEP § 2181 I. (“Prong (C)”).
Based upon a review of FP#1, the Examiner finds that FP#1 does not contain sufficient structure for performing the entire Function of FP#1.
In particular, the term “outcoupling elements” is modified by the language “that include surfaces.” However, such language is not sufficient structure because the phrase “that include surfaces” is not recitation of the actual structure of the outcoupling elements to perform the claimed function.
Furthermore, the Introductory Phrase of FP#1 is modified by the language “whereby, further, the form, number per unit area, and extension of the outcoupling elements are configured in such a way: that each outcoupling element is smaller in its horizontal and vertical dimensions than a lesser of a width and a height of the subpixels of the image generator, and that, in projection directions parallel to a surface normal of the light guide, parts or all of the surface of at least two outcoupling elements are arranged below each subpixel of the image generator, and that, in projection directions parallel to the surface normal of the light guide, a filling factor of the outcoupling elements is maximally 50% of the large surface area of the light guide.” However, the Examiner finds that such language does not recite sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#1.
Therefore, the Examiner concludes that both of the term “outcoupling elements” and the Introductory Phrase of FP#1 is not modified by sufficient structure (as defined by the MPEP and the Federal Circuit, supra) for performing the Function of FP#1.
Because FP#1, even as modified by the language discussed above, does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#1 meets Prong (C). Because FP#1 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#1 invokes § 112(f).
Corresponding Structure for FP#1
“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 1297 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004). “Under this second step, structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Aoyama, 656 F3d at 1297 quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#1 to sufficient corresponding structure found in the specification.
Recall, as noted above, the Function of FP#1 refers to “cause light incident to said surfaces to be coupled out through one of the large surfaces at a defined angular range […] wherein, light radiated by the light sources into the light guide and coupled out of the light guide by the outcoupling elements which are on at least one of the large surfaces or within the volume of the light guide, satisfies the following conditions: at least 80% of the total quantity of light coupled out of one of the large surfaces is radiated within an angular range of 60°, and more than 50% of the quantity of light coupled out of the light guide is radiated either in the direction away from the background illuminator or in the direction towards the background illuminator,” as recited by claim 1.
First, the term “a defined angular range” is not further explained in the Patent Under Reissue. Outside of the claims, the term is mentioned three times in the specification, i.e., at C4:L14, C11:L25–26, and C15:L16. However, in the description surrounding this term, there is no explanation as to what constitutes “a defined angular range” in connection with “outcoupling elements that include surfaces” (as claimed), such that a POSITA would understand the scope of “defined angular range” or the structure of the outcoupling elements that include surfaces.
Second, although the three aforementioned instances of “a defined angular range” in the specification are surrounded by text that includes a substantial reiteration of the Function of FP#1, there is no disclosure of sufficient corresponding structure clearly linked and associated with the Function of FP#1.
Third, with respect to the “wherein” clause in the Function of FP#1, the '701 Patent links a generic unspecified “distribution” to the functional result of the “wherein” clause. See, e.g., C11:L57–C12:L1.
In view of the above findings, the Examiner cannot locate sufficient corresponding structure that is clearly linked or associated with the entire Function of FP#1. Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#1 to some corresponding structure, claim 1 is indefinite under 35 USC § 112(b). A rejection under 35 USC § 112(b) is set forth below for claim 1.
CLAIM REJECTIONS – 35 USC § 112(a)
The following is a quotation of 35 USC § 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.
Claims 1–26 are rejected under 35 USC § 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
No Species To Satisfy The Written Description Requirement
“[G]eneric language in the application as filed does not automatically satisfy the written description requirement.” Ariad Pharmaceuticals Inc. v. Eli Lilly & Co., 94 USPQ2d 1161, 1172 (Fed. Cir. 2010). “[A] sufficient description of a genus […] requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Id. at 1171.
Regarding claim 1, this claim contains limitations directed to a genus without sufficient written description. Claim 1 does not comply with the written description requirement because it uses a functional result to define the boundaries of the genus without any particular species claimed or disclosed for achieving the claimed functional result.
In particular, the claim language of FP#1 includes at least a generic distribution of the “plurality of outcoupling elements on at least one large surface of the light guide, or within a volume of the light guide,” which represents a claimed genus in claim 1.
Furthermore, the claim language “light […] coupled out of the light guide by the outcoupling elements […] satisfies the following conditions: at least 80% of the total quantity of light coupled out of one of the large surfaces is radiated within an angular range of 60°, and more than 50% of the quantity of light coupled out of the light guide is radiated either in the direction away from the background illuminator or in the direction towards the background illuminator” represents a functional result used to define the boundaries of the genus.
However, the '701 Patent does not include a disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus. Therefore, in accordance with Ariad, claim 1 fails to satisfy the written description requirement.
For example, the genus is, e.g., all of the possible distributions of the plurality of outcoupling elements on at least one of the large surfaces or within the volume of the light guide that are capable of accomplishing the desired functional result of “light […] coupled out of the light guide by the outcoupling elements […] satisfies the following conditions: at least 80% of the total quantity of light coupled out of one of the large surfaces is radiated within an angular range of 60°, and more than 50% of the quantity of light coupled out of the light guide is radiated either in the direction away from the background illuminator or in the direction towards the background illuminator.” In this instance, the '701 Patent provides some information, such as,
wherein, furthermore, a distribution of the outcoupling elements 6 as well as their respective forms, on at least one of the large surfaces and/or within the volume of the light guide 3, is specified in such a way that light radiated by the light sources 4 into the light guide 3 and coupled out of the light guide 3 by the outcoupling elements 6 satisfies the following conditions: At least 80% of the total quantity of light coupled out of one of the large surfaces is radiated within a relative angular range of altogether maximally 60°, preferably 40°, related to one or two specified, mutually perpendicular preferred directions (e.g., in the horizontal angular range between −20° and +20° for a centrally focused light direction, or between −30° and +10° for a light direction tilted sideways), and more than 50% of the quantity of light coupled out of the light guide 3 is radiated either in the direction away from the background illuminator 2 or in the direction towards the background illuminator 2,
'701 Patent at C11:L57–C12:L9; and,
The desired properties essential to the invention, i.e. the properties of the outcoupling elements 6 regarding their number per unit area, their form and extension in three dimensions as well as their distribution over at least one of the large surfaces and/or within the volume of the light guide 3 can be determined, for example, by use of an optical simulation software such as “LightTools” by Synopsis or other suppliers, and then implemented physically.
The structure of the outcoupling elements 6 can be specified, so that the effect of each outcoupling element 6 is at least approximately known, and properties of the light guide 3 or of the light exiting the light guide 3 can be laid down by a given distribution of the outcoupling elements and their respective forms.
'701 Patent at C12:L34–47. However, the '701 Patent does not reveal any distribution of the outcoupling elements that is capable of achieving this desired functional result, but rather depends on some generic unspecified “distribution” of the outcoupling elements to achieve the result. Therefore, no species (i.e., no particular distribution) has been disclosed to demonstrate possession of the genus (all possible light bars including the outcoupling elements for accomplishing the recited functional result). Further, there is no discussion in the specification of structural features common to the members of the genus. Therefore, the specification does not demonstrate possession by describing structural features common to members of the genus. Because there are neither species nor common features of the genus disclosed, the specification could not convey to one skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Therefore, claim 1 is rejected as failing to comply with the written description requirement.
Dependent claims 2–26 fail to cure this deficiency of claim 1 (set forth directly above) and are rejected accordingly.
CLAIM REJECTIONS – 35 USC § 112(b)
The following is a quotation of 35 USC § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1–26 are rejected under 35 USC § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.4
Insufficient Disclosure Of Corresponding Structure
Ground #1
As noted above, FP#1 invokes 35 USC § 112(f). See above section titled “CLAIM INTERPRETATION AND 35 USC § 112(f).”
However, for each functional phrase, the Original Disclosure fails to disclose the corresponding structure for performing the entire claimed function and to clearly link the structure to the function. See above subsection titled “Corresponding Structure for FP#1” for an explanation of why the Original Disclosure does not include the corresponding structure. Therefore, claims 1–26 are indefinite and are rejected under 35 USC § 112(b).
Claims 1–26 are rejected under 35 USC § 112(b) as failing to set forth the subject matter which the inventor or a joint inventor regards as the invention.5
Omission of Essential Elements
Ground #3
Claim 1 is rejected under 35 USC § 112(b) as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: “the properties of the outcoupling elements regarding their number per unit area, their form and extension in three dimensions as well as their distribution over at least one of the large surfaces and/or within the volume of the light guide” ('701 Patent at C5:L12–16).
Evidence that claim 1 fails to correspond in scope with that which the inventor or a joint inventor regards as the invention can be found in the '701 Patent. In that paper, the inventor or a joint inventor has stated,
The desired properties essential to the invention, i.e., the properties of the outcoupling elements regarding their number per unit area, their form and extension in three dimensions as well as their distribution over at least one of the large surfaces and/or within the volume of the light guide can be determined, for example, by way of some optical simulation software such as “LightTools” by Synopsis or other suppliers, and then implemented physically.
'701 Patent at C5:L12–19. This statement indicates that the invention is different from what is defined in the claim because the claim does not recite “the properties of the outcoupling elements regarding their number per unit area, their form and extension in three dimensions as well as their distribution over at least one of the large surfaces and/or within the volume of the light guide” as determined, for example, by way of some optical simulation software such as “LightTools.” First, the claim does not set forth a particular “unit,” let alone a property or properties of the outcoupling elements regarding a “number per unit area.” Second, the claim does not set forth a property or properties of the outcoupling elements regarding “form and extension in three dimensions.” The Patent Under Reissue suggests “possibly helpful three-dimensional forms of the outcoupling elements 6 are described in US 2018/0088270 A1” (C5:L20–24), but the claims do not appear to recite any property or properties of those particular three-dimensional forms as shown in US 2018/0088270 or otherwise. Furthermore, the claim merely recites “each outcoupling element is smaller in its horizontal and vertical dimensions than a lesser of a width and a height of the subpixels of the image generator;” however, such recitation is not a property or properties of the outcoupling elements regarding “form and extension in three dimensions” (emphasis added). Third, the claim does not set forth a property or properties of the outcoupling elements regarding “distribution.” The claim recites a particular functional result of the distribution that is “specified in such a way,” but such result does not appear to be a property or properties of the distribution per se. See '701 Patent, at least C4:L46–67.
Conclusion of 35 USC § 112(b) Rejections
The Examiner has considered all limitations in the Examined Claims even though some claim limitations are indefinite. See MPEP § 2143.03 I. ¶1 noting that “[a] claim limitation which is considered indefinite cannot be disregarded.” However, the Examiner concludes that because claims 1–26 are indefinite under § 112(b), these claims, by definition, cannot be properly construed. See e.g. Honeywell International Inc. v. ITC, 341 F.3d 1332, 1342 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). Therefore in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing prior art rejections (or indicating allowance of the claims) even though certain claims are indefinite, these indefinite claims are construed and the prior art is currently applied as much as practically possible. Applicant is reminded that when a particular § 112(b) rejection is overcome by Applicant, and the claim limitation can then then be properly construed, the Examiner will reevaluate the prior art using this proper claim construction and then reassess the patentability of the claim(s) over the prior art.
ALLOWABLE SUBJECT MATTER
Claims 1–26 would be allowable if rewritten or amended to overcome the rejections under 35 USC § 251, 35 USC § 112(a), and 35 USC 112(b) set forth in this Office action.
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 nonprovisional extension fee (37 CFR § 1.17(a)) pursuant to 37 CFR § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jacob Coppola whose telephone number is 571-270-3922.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached at 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While at least one definition, of a term, is cited because the term is found in the Examined Claims, the Examiner may have provided an additional definition(s) to help interpret a word(s), a phrase(s), or a concept(s) found in a definition itself, in the prior art, or in the Patent Under Reissue.
2 “In [112 ¶ 6], structure and material go with means, acts go with steps.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997).
3 See also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed Cir. 2000) where the CAFC set forth the standard for determining if a functional phase overcomes the presumption that § 112 ¶ 6 is not invoked (i.e., invokes 112 ¶ 6) when a phrase does not use the word “means.”
4 This statement of rejection applies to Ground #1
5 This statement of rejection applies to Ground #3, below.