DETAILED ACTION
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show accurate focal points with respect to the lenses as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). 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.
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Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-3, 7, 9, 10, 11 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-3, 7, 9, 10, 11 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a horizontal section of the lens being substantially inclined with respect to an optical device, does not reasonably provide enablement for a transverse section of the lens being substantially inclined. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or operate the invention commensurate in scope with these claims. Specifically, inclining the vertical axis is not enabled and would not perform the functions of claim 1. As written, the claim is broader than and covers embodiments that the disclosure does not set forth.
Claims 1-3, 7, 9, 10, 11 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a transverse section of the lens being substantially inclined with respect to an optical axis of said lighting device and with respect to the at least one light module such that a horizontal focal point of the lens is coaxial with a vertical focal point of the lens along the optical axis of said lighting device… the vertical focal point being positioned behind an associated light module.”
The disclosure sets forth only lenses that are symmetrical in the horizontal and vertical cross section. Although they may be astigmatic, as argued, the lens has symmetry in the respective cross sections. Therefore the optical axis by definition is located at the center, the dividing point of symmetry, and the focal point is arranged on the optical axis. When the lens is inclined with respect to an optical axis of said lighting device, the focal points will be displaced with respect to the light modules and cannot be positioned behind an associated light module (in light of the disclosure, i.e. directly behind an associated light module) and cannot be located in the vicinity of the rear edge as recited in claim 2.
Applicant argues that certain lens can perform the function. No such lenses are disclosed, and therefore the disclosure is not enabling for the claims.
Applicant has argued, that the lens may be astigmatic, which is shown in the figures. An astigmatic lens may have focal points at different locations in the horizontal and vertical planes, however said focal points are still located on the optical axis.
Examiner has included annotated figures from the application to indicate that the arrangement set forth is not possible. Figure 1 shows a horizontal focal point (31.2) that is off the horizontal axis. The focal point is on the optical axis by definition.
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Claims 2, 3, 7, 9, 10 rejected for their dependence on claim 1.
Claim 7 further recites that the horizontal focal point of the lens is aligned with a vertical focal point in an overall direction of emission. It is unclear if “a vertical focal point” is the vertical focal point of the lens previously set forth. The Examiner has interpreted that it is, and that this arrangement is not possible as the optical lens is tilted with respect to the overall direction of emission.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3, 7, 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okubo (U.S. 2017/0146209) in view Kim (U.S. 11,313,528, published 7/4/2019 as US 2019/0203897, references made to the patent) and Yagi (U.S. 2017/0002991).
Regarding claim 1, Okubo teaches a motor vehicle lighting device for lighting the road, comprising (system for vehicle, see fig. 1-14):
at least one light module (see fig. 14, two light modules), with each light module including a light source (light emitting surface 22) capable of emitting a light beam,
each light module associated with a collector with a reflective surface (reflection surface 30s) configured to collect and reflect the light beam emitted by each respective light source into a reflected beam;
a lens (lens 4) configured to project the reflected light beam from each collector of each of the light module, where each collector is positioned in such a way that collected light is mutually directed toward the lens (see fig. 13);
the lens being configured to form on a road an image of the reflective surface of each collector of each of the light module (see p. 0061, projects image);
a transverse section axis of the lens (see fig. 13) being substantially inclined (theta 3 in figure 13, inclined with respect to optical axis) with respect to an optical axis of the lighting device and with respect to the at least one light module such that a horizontal focal point of the lens is coaxial with a vertical focal point of the lens along the optical axis of said lighting device;
the lens including a horizontal focal point and a vertical focal point, with the horizontal focal point being offset with respect to the vertical focal point along the optical axis of said device(must be either aligned or offset); and
the vertical focal point being positioned behind an associated light module (see fig. 2, lens 4S is a plano-convex lens with a very far focal length as indicated in figure 2).
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As shown, Okubo teaches that the emitted light is collimated (L2S), therefore the focal point can be found by extending the light rays of the input light. Furthermore, as a relatively flat plano-convex lens, the lens has a very long focal point and the input light is only mostly collimated as the light source is placed close to the focal length of the reflection surface.
Okubo does not teach that the lens includes a horizontal focal point and a vertical focal point, with the horizontal focal point being offset with respect to the vertical focal point.
Kim teaches that the lens includes a horizontal focal point and a vertical focal point, with the horizontal focal point being offset with respect to the vertical focal point (see col. 12 lines 37-55, see equation of horizontal and vertical curvature).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used offset horizontal and vertical focal points as taught by Kim to result in different levels of distortion in the horizontal and vertical direction in Okubo, thereby enabling a larger distortion in the horizontal direction to enable more overlapping and a larger spread of the light beam, as required by federal standards, see Kim col. 5 lines 45-col. 6 line 23.
The Examiner notes that offset vertical and horizontal focal points is particularly well known in the art of vehicle lighting as both low and high beam light distributions require a large horizontal spread and a relatively narrow vertical spread.
Okubo and Kim does not teach that the lens has in vertical section, a biconvex profile and, in horizontal section, a biconvex or biconcave profile.
Yagi teaches that the lens has in vertical section, a biconvex profile and, in horizontal section, a biconvex or biconcave profile (see fig. 1).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used a biconvex lens as taught by Yagi to prevent coma aberration that often occurs in projection lenses, see p. 0007-0010 of Yagi.
The combination of Okubo, Kim, and Yang teaches that the horizontal focal point and the vertical focal point are located at different positions along the optical axis of said lighting device.
It is unclear if Okubo teaches that the collectors are in contact with one another. The Examiner takes official notice that it would be obvious to form a contact boundary between the collectors of Okubo to prevent undesired light leakage and to form a unified structure that is more secure.
Regarding the integration of the inner plate shaped element into one piece, the claimed limitation of a structure into integral pieces does not render the claimed invention nonobvious over the prior art if the use of an integral structure would be merely a matter of obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Such an obviousness rejection may be overcome if there is insight contrary to the understandings and expectation of the prior art, Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983).
Regarding claim 3, Okubo teaches that the at least one light module includes two light modules with the two light modules referred to as end light modules, each located at one end of the lighting device in the substantially horizontal direction, and wherein the distance between the rear edges of the collectors of the end light modules is less than a predetermined threshold (see fig. 14).
Regarding claim 7, Okubo teaches that that the lens is configured to project the light beams reflected by the collector in an overall direction of projection
Kim teaches the horizontal focal point of the lens is aligned with the vertical focal point in this overall direction of emission (see fig. 1, different effective focal length, both arranged on optical axis, see col. 7-8).
Regarding claim 9, Kim teaches that that the horizontal focal point of the lens is located downstream of the lens (see fig. 1, Y-X plane has a biconcave lens with a positive focal point downstream the lens, any biconcave lens has two focal points, one on each side of the lens).
Claim(s) 2, 10, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okubo in view of Kim and Yagi, further in view of De Lamerterie (U.S. 9,134,000).
Regarding claim 2, Okubo and Kim does not teach that the collector of each of the at least one light module has a rear edge and wherein the vertical focal point of the lens is located in the vicinity of the rear edge of the collector such that the image of the collector formed by the lens has an upper cut-off formed by the rear edge of the collector.
De Lamberterie teaches that the collector of each of the at least one light module has a rear edge and wherein the vertical focal point of the lens is located in the vicinity of the rear edge of the collector such that the image of the collector formed by the lens has an upper cut-off formed by the rear edge of the collector (see fig. 1, light rays that strike the lower edge of the reflector form the upper most of the light projection before shield 120).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used an elliptical reflector with the light source at the focal point of the reflector as taught by De Lamberterie to optimize the amount of light being received by the lens of Okubo, as is well known in the art. The use of this form of a reflector by De Lamberterie results in the rear edge of the reflector being imaged as the top of the low beam cutoff, as is well known in the art. It is obvious to optimize the focal point of the lens to be the rear edge of the reflector to from a clear cutoff.
The Examiner finds that using a lens with a focal point on the rear edge of the reflector is known in the art to image the rear of the reflector properly. The adjustment of the light source, reflector, and lens to form this ideal projection without a shield is a result effective variable that involves routine skill in the art. I.e. each of the optical components are well known, predictable structures in the art of optics and the specific arrangement of them is an obvious optimization to form a specific cutoff, which is also well known.
It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 10, the combination of Okubo and De Lamberterie teaches that the rear edges of the collectors together define a cut off of the light beam formed by said device (see fig. 1 of De Lamberterie), the lens horizontally spreading beams coming from each collector such that each collector beam together is configured to homogenously form the light beam (uniform emission see col. 2 lines 19-26 of De Lamberterie).
Regarding claim 11, Okubo teaches a motor vehicle lighting device for lighting the road, comprising (system for vehicle, see fig. 1-14):
at least two light modules (see fig. 14, two light modules), each light module including a light source (light emitting surface 22) capable of emitting a light beam
each light module associated with a collector with a reflective surface (reflection surface 30s) configured to collect and reflect the light beam emitted by a combination of light sources;
a lens (lens 4) configured to reflect the light by each collector of each of the light module, where each collector is positioned in such a way that collected light is mutually directed toward the lens (see fig. 13);
the lens being configured to form on a road an image of the reflective surface of each collector of each of the light module (see p. 0061, projects image);
a vertical section axis of the lens being substantially inclined with respect to an optical axis of said lighting device and with respect to at least one of the two light modules such that a horizontal focal point of the lens is coaxial with a vertical focal point of the lens along the optical axis of said lighting device (see fig. 13);
the lens substantially inclined with respect to at least one of the two light module(s) (horizontally inclined).
Okubo does not teach that the lens is astigmatic and has a horizontal focal point and a vertical focal point with the horizontal focal point being offset with respect to the vertical focal point; the vertical focal point being positioned behind an associated light module.
Kim teaches that the lens is astigmatic (see fig. 1, different curvatures in different profiles) and has a horizontal focal point and a vertical focal point with the horizontal focal point being offset with respect to the vertical focal point (see col. 12).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used offset horizontal and vertical focal points as taught by Kim to result in different levels of distortion in the horizontal and vertical direction in Okubo, thereby enabling a larger distortion in the horizontal direction to enable more overlapping and a larger spread of the light beam, as required by federal standards, see Kim col. 5 lines 45-col. 6 line 23.
The Examiner notes that offset vertical and horizontal focal points is particularly well known in the art of vehicle lighting as both low and high beam light distributions require a large horizontal spread and a relatively narrow vertical spread.
De Lamberterie teaches that the collector of each of the at least one light module has a rear edge and wherein the vertical focal point of the lens is located in the vicinity of the rear edge of the collector such that the image of the collector formed by the lens has an upper cut-off formed by the rear edge of the collector (see fig. 1, light rays that strike the lower edge of the reflector form the upper most of the light projection before shield 120).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used an elliptical reflector with the light source at the focal point of the reflector as taught by De Lamberterie to optimize the amount of light being received by the lens of Okubo, as is well known in the art. The use of this form of a reflector by De Lamberterie results in the rear edge of the reflector being imaged as the top of the low beam cutoff, as is well known in the art. It is obvious to optimize the focal point of the lens to be the rear edge of the reflector to from a clear cutoff.
The Examiner finds that using a lens with a focal point on the rear edge of the reflector is known in the art to image the rear of the reflector properly. The adjustment of the light source, reflector, and lens to form this ideal projection without a shield is a result effective variable that involves routine skill in the art. I.e. each of the optical components are well known, predictable structures in the art of optics and the specific arrangement of them is an obvious optimization to form a specific cutoff, which is also well known.
It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Okubo and Kim does not teach that the lens has in vertical section, a biconvex profile and, in horizontal section, a biconvex or biconcave profile.
Yagi teaches that the lens has in vertical section, a biconvex profile and, in horizontal section, a biconvex or biconcave profile (see fig. 1).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used a biconvex lens as taught by Yagi to prevent coma aberration that often occurs in projection lenses, see p. 0007-0010 of Yagi.
The combination of Okubo, Kim, and Yang teaches that the horizontal focal point and the vertical focal point are located at different positions along the optical axis of said lighting device.
It is unclear if Okubo teaches that the collectors are in contact with one another. The Examiner takes official notice that it would be obvious to form a contact boundary between the collectors of Okubo to prevent undesired light leakage and to form a unified structure that is more secure.
Regarding the integration of the inner plate shaped element into one piece, the claimed limitation of a structure into integral pieces does not render the claimed invention nonobvious over the prior art if the use of an integral structure would be merely a matter of obvious engineering choice. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Such an obviousness rejection may be overcome if there is insight contrary to the understandings and expectation of the prior art, Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983).
Response to Arguments
Applicant's arguments filed 4/28/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that “Examiner conflates the axis of a transverse section with a vertical inclination, which is a misinterpretation of the claim language”, the Examiner disagrees with Applicant’s summary of the 112(a).
The 112(a) rejection is presented because the claim is broader than the disclosure and is not enabled for every interpretation. Applicant has set forth “a transverse section” being tilted, which could mean horizontal, vertical, or any angle in between. However, the disclosure clearly sets forth that ONLY the horizontal cross section may be tilted.
The tilt of the horizontal cross section and the alignment of the vertical section are critical to the recitation of the claims and must be recited as such.
The Examiner further notes that applicant states that Claim 1 recites “a vertical transverse section axis…” (see page 6 of the remarks), however this language is not present in claim 1. Claim 1 only recites “a transverse section”, which is the language that the Examiner takes issue with. “A vertical transverse section axis” would be acceptable language as it would be clear that vertical section is tilted with respect to the horizontal axis, the claim would no longer encompass embodiments with a horizontal tilt.
Regarding Applicant’s argument that “a lens with a biconvex profile in one cross section and a biconcave profile in the other definition, is by definition not symmetrical across both planes” is incorrect. To clarify, the Examiner is arguing that each cross section is symmetrical, not that the cross sections are symmetrical with respect to each other. The Examiner believes Applicant is arguing that the profiles are not symmetrical with respect to each other, which would be radial symmetry.
Applicant argues that “the Examiner’s argument attacks the core inventive concept as if it were not disclosed, when in fact it is the central teaching of the specification”, the Examiner agrees. The Examiner has interpreted the claims as being indefinite as they recite an impossible physical arrangement, as does the disclosure.
The Examiner respectfully annotates figure 1 below and the issues with the figure. The focal points of the lens cannot be located at 31.1 and 31.2, which is the structure recited in claims 1 and 11.
The Examiner has not included a 35 USC 101 rejection for being directed to an impossible invention as it is only the focal points and their relationship with the lens and axis of the lighting device that are the issue.
I.e. the structure is possible, but the functions (i.e. location of the focal points and the optical axis) is not possible. The very definition of ‘focal point’ contradicts applicant’s disclosure.
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Regarding Applicant’s argument that “this is a single lens with different cross sectional shapes in the horizontal and vertical planes, producing focal points at different locations along the optical axis, which is precisely the definition of an astigmatic lens”, the Examiner respectfully disagrees.
The Examiner agrees that an astigmatic lens is supported, however the Examiner finds that an astigmatic lens does not produce the effects claimed.
The horizontal optical axis is tilted with respect to optical axis of the lighting device, see annotated figure above. As such, the horizontal focal point and the vertical focal point are not arranged “offset along the optical axis of the lighting device” as they inherently are not located along the optical axis of the lighting device at all, but on the optical axis of the lens, which is not colinear. Furthermore, the focal points of the lens cannot be located at the rear edge of the collectors which are arranged on the optical axis of the lighting device..
The astigmatic structure of the lens does not result in a structure where this is possible.
Applicant argues that the 112(a) standard that Examiner has applied is too demanding, the Examiner respectfully disagrees.
The claimed subject matter set forth is impossible with an astigmatic lens that is recited.
The Examiner notes that a structure that produces the claimed effect does exist but it is not recited in the disclosure. The Examiner points to Owada (U.S. 9,316,374) for reference. The lens of figure 5 is tilted with respect to the reflector, however the focal point of the lens is still aligned on the optical axis of the lighting device (see F in figure 6a-6c). This is only possible as the cross section is highly asymmetrical.
In conclusion, figure 1 is a cross section via of a symmetrical biconvex lens. The arrangement of figure 1 specifically states the horizontal focal point of 31.2 as indicated. Such an arrangement, as depicted, and with consideration of every possible horizontal cross section provided for in the disclosure, cannot exist.
The Examiner notes that the 112(a) rejection has been argued multiple times and no agreement has been reached. The Examiner finds that an appeal may be appropriate to advance prosecution.
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 MATTHEW J PEERCE whose telephone number is (571)272-6570. The examiner can normally be reached 8-4pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Greece can be reached on (571) 272-3711. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew J. Peerce/Primary Examiner, Art Unit 2875
Prosecution Insights