DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/1/2026 has been entered.
Response to Amendment
The amendments to Claims 1,3,6, in the submission filed 6/1/2026 are acknowledged and accepted.
In view of the amendments to the Claims, rejection under 35 U.S.C. 112(b) is withdrawn.
Pending Claims are 1-7. Claims 3,5, were indicated as allowable subject matter previously.
Response to Arguments
Applicant's arguments (Remarks, filed 6/01/2026) have been considered, but, respectfully, are not found persuasive.
Re: Claims 1,6:
a) Akutsu's alignment marks and Kroll's micro-cells differ in structure, function, and operating principle. The alleged benefit of reducing light loss in Kroll's wave-tracking system does not explain why a person of ordinary skill would have modified Akutsu's interference fringe-based alignment marks, which are used for holographic-grating alignment, to use Kroll's voltage-controlled micro-cells.
A motivation to combine references (reducing light loss) was provided in all present and previous combinations of references. Now, the motivation was not improper, and provided in accordance with the Teaching-Suggestion-Motivation Test (TSM). As such, Examiner's use of these facts as a motivation statement is in compliance with the requirements of the TSM test, since the Teaching-Suggestion-Motivation (TSM) test should be flexibly applied and the teaching, suggestion, or motivation need not be written within the reference. See KSR Int'l Co. v. Teleflex Inc., 82 USPQ2d 1385 (US 2007); Ortho-McNeil Pharm., Inc. v. Mylan Lab., Inc., 520 F.3d 1358, 86 U.S.P.Q.2d 1196 (Fed. Cir. 2008); Ex Parte Kubin, 83 USPQ2d 1410 (Bd. Pat. App. & Int. 2007).
Applicant's assertion that the benefit of reducing light loss does not explain Akutsu’s modification by Kroll is merely an argument unaccompanied by evidentiary support, and, thus, is insufficient to rebut Examiner's finding of obviousness. Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). MPEP §§ 2145, 2129, 2144.03, 716.01(c).
Kroll teaches a diffractive deflection means with microcells which are individually controllable, which is advantageous in realizing a controllable grating being operated as a phase grating and has the added benefit of minimizing light loss in an optical system (para 72). This is a tangible advantage where lossy systems lead to blurry images and also inaccurate deflection and erroneous relative position adjustments between diffractive structures. There is a precise alignment of the wave tracking means with the structure of the modulator cells (para 22).
Kroll teaches additional advantages of using deflection means with microcells where the cross talking is reduced (para 50), realizing predictable phase shift (para 53) and also reduction of power loss (para 60).
All these reasons make obvious the substitution of Akutsu’s position adjustment optical structures with Kroll’s deflection means using microcells.
b) Akutsu’s alignment marks are not generic diffraction structures and are tied to interference fringe structure of its holographic gratings. Kroll teaches electronically addressable microcells, a different optical mechanism. The modification as asserted by the Examiner would fundamentally alter the structure and operation of Akutsu's alignment marks, if not render Akutsu unsatisfactory for its intended alignment purpose.
Applicant's assertion that the Kroll’s modification would fundamentally alter the structure and operation of Akutsu's alignment marks is merely an argument unaccompanied by evidentiary support, and, thus, is insufficient to rebut Examiner's finding of obviousness. Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). MPEP §§ 2145, 2129, 2144.03, 716.01(c).
Applicant’s arguments of the unworkability of the combination, due to alteration of structure and operation of Akutsu's alignment marks, appear to be based on a literal application of the actual structure of Kroll to the actual structure of Akutsu. However, that is not the proper standard for the analysis required under 35 USC 103(a). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Keller at 881, goes on to revisit the long history of the U.S. Court of Customs and Patent Appeals (CCPA) regarding the nature of suggestion established by the combined teachings of the references rather than the actual results of a physical, bodily incorporation:
To justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other. In re Griver, 53 CCPA 815, 354, F.2d 377, 148 USPQ 197 (1966); In re Billingsley, 47 CCPA 1108, 279 F.2d 689, 126 USPQ 370 (1960). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Wood, 599 F.2d 1032, 202 USPQ 171 (CCPA 1979); In re Passal, 57 CCPA 1151, 426 F.2d 828, 165 USPQ 720 (1970); In re Richman, 57 CCPA 1060, 424 F.2d 1388, 165 USPQ 509 (1970); In re Rosselet, 52 CCPA 1533, 347 F.2d 847, 146 USPQ 183 (1965).
Akutsu teaches (3A,B) precise alignment of two holographic diffraction gratings (131,135, para 189) with each other. The holographic diffractive grating structures behave as light deflection units (para 10-12, Akutsu) and constitute of interference fringe areas. The two holographic gratings include alignment marks (134A,138 A and 134B, 138B respectively) outside the interference fringe area which are also made of an interference fringe similar to the diffractive area. Precise alignment of the gratings is conducted with the use of the alignment marks.
Kroll (fig 2) also teaches a holographic diffractive grating with microcells which are electronically controlled to give a surface relief structure to the grating (para 72). In the combination of Kroll with Akutsu, the diffractive grating structure of Akutsu is substituted with Kroll’s deflective grating with microcells and the grating behaves as a controllable deflection means. The structure taught in the combined teachings of the references, as set forth above, is a position adjustment structure. Because the structure of the combined system is the same as that claimed, it must inherently perform the same function of a position adjustment structure. See MPEP § 2112.01.
In the combined structure of Akutsu-Kroll, the alignment marks on the outside of the holographic diffractive grating area of Akutsu would continue to function as intended with their respective different interference fringes which are diffractive and which lead to the precise alignment of the diffractive gratings.
In view of the above arguments, the rejection of claims is upheld.
c) By virtue of its dependence, the dependent claims are patentable for at least the same reasons.
Dependent claims are not allowable for at least the same reasons as base claims.
In view of the above arguments, the rejection of claims is upheld.
Claims 1-2,4,6-7, are rejected as follows
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-2,4,6-7, is/are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al (Design of task-specified optical systems using broadband diffractive neural networks, Journal of the CIOMP, Light: Science & Applications (2019)8;112, pages 1-14, of record) in view of Akutsu et al (US 2015/0260994 A1, of record) and further in view of Kroll et al (US 2010/0194854 A1, of record).
Regarding Claim 1, Luo teaches (fig 1-4) an optical computing device (broadband optical network that unifies deep-learning methods with the angular spectrum formulation of broad band light propagation, page 2, R col)
wherein a first light diffraction element (first of diffractive layers, fig 1, page 3, R col) of the optical computing device includes:
a first computing optical structure (diffractive optical neural network, page 3, L col, corresponding to first diffractive layer) constituted by first microcells (each diffractive layer consists of elements (termed neurons) that modulate the phase and/or amplitude of the incident beam at their location in space”, page 1, R col, page 2, L col, 1st para, “each pixel on the lth layer at a spatial location (xi, yi, zi) provides a wavelength (λ) dependent modulation”, page 11, L col, last para) and
a second light diffraction element (second of diffractive layers, fig 1, page 3, R col) of the optical computing device includes:
a second computing optical structure (diffractive optical neural network, page 3, L col, corresponding to second diffractive layer) constituted by third microcells (each diffractive layer consists of elements (termed neurons) that modulate the phase and/or amplitude of the incident beam at their location in space”, page 1, R col, page 2, L col, 1st para, “each pixel on the lth layer at a spatial location (xi, yi, zi) provides a wavelength (λ) dependent modulation”, page 11, L col, last para)
However, Luo does not teach
first and second position adjustment optical structures and
a method comprising:
inputting, via a first position adjustment optical structure, adjustment signal light into a second position adjustment optical structure,
adjusting, based on the adjustment signal light outputted from the second position adjustment optical structure, a position of the second light diffraction element with respect to the first light diffraction element.
Luo and Akutsu are related as plurality of diffractive elements.
Akutsu teaches (fig 2A-3B)
first diffraction element (first holographic diffraction grating 131, para 187) with first computing optical structure (first interference fringe forming area 132, para 187) and a first position adjustment optical structure (first A alignment mark 134A, first B alignment mark 134 B, para 188) and
second diffraction element (second holographic diffraction grating 135, para 187) with second computing optical structure (second interference fringe forming area 136, para 187) and a second position adjustment optical structure (second A alignment mark 138A and second B alignment mark 138B, para 188); and
a method comprising:
inputting (light travels from 1st diffractive element 131 to 2nd diffractive element 135), via a first position adjustment optical structure (first A alignment mark 134A, first B alignment mark 134 B, para 188), adjustment signal light into a second position adjustment optical structure (second A alignment mark 138A and second B alignment mark 138B, para 188) (“the first A alignment mark 134A and the first B alignment mark 134B are each provided with an interference fringe that is identical to that of the first interference fringe forming area 132, and the second A alignment mark 138A and the second B alignment mark 138B are each provided with an interference fringe that is identical to that of the second interference fringe forming area 136”, para 188),
adjusting, based on the adjustment signal light outputted from the second position adjustment optical structure (second A alignment mark 138A and second B alignment mark 138B, para 188), a position of the second light diffraction element (second holographic diffraction grating 135) with respect to the first light diffraction element (first holographic diffraction grating 131) (“simultaneously, in a state where the relative alignment of the first holographic diffraction grating 131 and the second holographic diffraction grating 135 is completed, the first A alignment mark 134A and the second A alignment mark 138A are disposed at positions where the first A alignment mark 134A and the second A alignment mark 138A do not overlap, and the first B alignment mark 134B and the second B alignment mark 138B are disposed at positions where the first B alignment mark 134B and the second B alignment mark 138B do not overlap”, para 189).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Luo to include first and second position adjustment optical structures and adjust a position of the second light diffraction element of Akutsu for the purpose of precisely aligning the diffractive layers (para 4).
However, Luo-Akutsu do not teach
the first position adjustment optical structure constituted by second microcells each having an independently set thickness, refractive index, or transmittance;
the second position adjustment optical structure constituted by fourth microcells each having an independently set thickness, refractive index, or transmittance;
Luo-Akutsu and Kroll are related as light diffraction elements with position adjustment optical structures.
Kroll teaches (fig 2)
wherein the position adjustment optical structure (controllable electro-optic deflection means DM, para 71) constituted by microcells each having an independently set thickness, refractive index, or transmittance (“The array of deflection means has such a cell grid with a periodic structure that the separately controllable micro-cells realize the function of a controllable diffraction grating with variable surface relief structure under coherent illumination”, para 72, “an electrowetting cell can also comprise a hollow body which is filled with multiple immiscible, optically transparent liquids. The refractive index changes at the interface between the liquids, so that the transmitted light is deflected”, para 76);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Luo-Akutsu to include the position adjustment optical structures constituted by microcells each having an independently set thickness, refractive index, or transmittance of Kroll for the purpose of realizing a grating structure with ideally no light loss (para 23) by using a design with light traps (para 30).
Regarding Claim 2, Luo-Akutsu-Kroll teach the method according to claim 1.
However, Luo does not teach
further comprising
forming an optical image having an intensity distribution on the second position adjustment optical structure with the first position adjustment optical structure; and
changing in accordance with the position of the second light diffraction element with respect to the first light diffraction element, the intensity distribution of the formed optical image with the second position adjustment optical structure.
Luo and Akutsu are related as plurality of diffractive elements.
Akutsu teaches (fig 2A-3B)
further comprising
forming an optical image having an intensity distribution on the second position adjustment optical structure (second A alignment mark 138A and second B alignment mark 138B, para 188) with the first position adjustment optical structure first A alignment mark 134A, first B alignment mark 134 B, para 188) (as in fig 3A,4A); (“The first imaging device 163 is configured to detect an optical image of the first A alignment mark 134A provided to the first holographic diffraction grating 131, based on the light that is input from the first light source 161 and diffracted and reflected by the first A alignment mark 134A”, para 208) and
changing in accordance with the position of the second light diffraction element (second holographic diffraction grating 135, para 187) with respect to the first light diffraction element (first holographic diffraction grating 131, para 187), the intensity distribution of the formed optical image with the second position adjustment optical structure (“a first straight line L.sub.1 connecting the first A alignment mark 134A and the first B alignment mark 134B is obtained, and a second straight line L.sub.2 connecting the second A alignment mark 138A and the second B alignment mark 138B is obtained (see FIGS. 3A and4A).Next, the first holographic diffraction grating 131 and the second holographic diffraction grating 135 are relatively aligned with each other such that an angle .theta..sub.0, which is formed by the first straight line L.sub.1 and the second straight line L.sub.2 when the first straight line L.sub.1 and the second straight line L.sub.2 are projected onto a virtual plane, falls below a prescribed value .theta..sub.PD (see FIGS. 3B and 4B)”, para 211).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of using position adjustment optical structures of Luo to form an optical image having an intensity distribution on the second position adjustment optical structure with the first position adjustment optical structure and changing the position of the second light diffraction element of Akutsu for the purpose of precisely aligning the diffractive layers (para 4).
Regarding Claim 4, Luo-Akutsu-Kroll teach the method according to claim 1.
However, Luo does not teach
further comprising:
forming the first position adjustment optical structure inside the first computing optical structure; and
forming the second position adjustment optical structure inside the second computing optical structure.
Luo and Akutsu are related as plurality of diffractive elements.
Akutsu teaches (fig 2A-3B)
further comprising:
forming the first position adjustment optical structure (first A alignment mark 134A, first B alignment mark 134 B, para 188) inside the first computing optical structure (first interference fringe forming area 132, para 187) (as in fig 4A); and
forming the second position adjustment optical structure (second A alignment mark 138A and second B alignment mark 138B, para 188) inside the second computing optical structure (second interference fringe forming area 136, para 187) (as in fig 4A).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the placement of position adjustment optical structures of Luo to be inside the first and second computing optical structures of Akutsu for the purpose of precisely aligning the diffractive layers (para 4).
Regarding Claim 6, Luo teaches (fig 1) a light diffraction element (diffractive layers, fig 1, page 3, R col) comprising:
a computing optical structure (diffractive optical neural network, page 3, L col, broadband optical network that unifies deep-learning methods with the angular spectrum formulation of broad band light propagation, page 2, R col) constituted by first microcells (each diffractive layer consists of elements (termed neurons) that modulate the phase and/or amplitude of the incident beam at their location in space”, page 1, R col, page 2, L col, 1st para, “each pixel on the lth layer at a spatial location (xi, yi, zi) provides a wavelength (λ) dependent modulation”, page 11, L col, last para);
However, Luo does not teach
a position adjustment optical structure inside or outside the computing optical structure.
Luo and Akutsu are related as plurality of diffractive elements.
Akutsu teaches (fig 2A-3B)
a position adjustment optical structure (first A alignment mark 134A, first B alignment mark 134 B, second A alignment mark 138A and second B alignment mark 138B, para 188) inside or outside the computing optical structure (first interference fringe forming area 132, second interference fringe forming area 136, para 187).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the light diffraction element of Luo to include position adjustment optical structures of Akutsu for the purpose of precisely aligning the diffractive layers (para 4).
However, Luo-Akutsu do not teach
the position adjustment optical is constituted by second microcells each having an independently set thickness, refractive index, or transmittance;
Luo-Akutsu and Kroll are related as light diffraction elements with position adjustment optical structures.
Kroll teaches (fig 2)
wherein the position adjustment optical structure (controllable electro-optic deflection means DM, para 71) constituted by second microcells each having an independently set thickness, refractive index, or transmittance (“The array of deflection means has such a cell grid with a periodic structure that the separately controllable micro-cells realize the function of a controllable diffraction grating with variable surface relief structure under coherent illumination”, para 72, “an electrowetting cell can also comprise a hollow body which is filled with multiple immiscible, optically transparent liquids. The refractive index changes at the interface between the liquids, so that the transmitted light is deflected”, para 76);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Luo-Akutsu to include the position adjustment optical structures constituted by microcells each having an independently set thickness, refractive index, or transmittance of Kroll for the purpose of realizing a grating structure with ideally no light loss (para 23) by using a design with light traps (para 30).
Regarding Claim 7, Luo-Akutsu-Kroll teach an optical computing device (broadband optical network that unifies deep-learning methods with the angular spectrum formulation of broad band light propagation, page 2, R col, Luo) comprising:
two or more light diffraction elements (first and second diffractive layers, fig 1, page 3, R col), each of which is the light diffraction element according to claim 6.
Allowable Subject Matter
Claims 3,5, objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 3 is allowable for at least the following reason:
“wherein the second position adjustment optical structure includes a microcell that blocks the adjustment signal light and that transmits computation signal light.”
Claim 5 is allowable for at least the following reason:
“forming the first position adjustment optical structure in a peripheral portion of the first computing optical structure; and forming the second position adjustment optical structure in a peripheral portion of the second computing optical structure.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ozcan et al (US 2021/0142170 A1) teaches diffractive grating network for optical computing.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 JYOTSNA V DABBI whose telephone number is (571)270-3270. The examiner can normally be reached M-Fri: 9:00am-5:00pm.
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/JYOTSNA V DABBI/Primary Examiner, Art Unit 2872 6/13/2026
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