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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/03/2026 has been considered by the Examiner and made of record in the application file.
Response to Amendment
The Amendment filed 03/17/2026 has been entered. Claim 1 has been amended.
Response to Arguments
Applicant's arguments filed 03/17/2026 have been fully considered but they are not persuasive.
Regarding the 112(b) rejection and 112(f) interpretation, applicant’s arguments have been fully considered and are appreciated. However, the examiner respectfully disagrees. Applicant argues claim 1 is definite because functional or property-based limitations are permissible and that image resolution is a well-understood term of art in optics. However, there are no structural details of the optical system given that would cause the second image resolution to be greater than the first image resolution. Therefore it is unclear what is causing the second image resolution to be greater than the first image resolution, see 112(b) rejection below for more details. Applicant argues that a 112(f) interpretation does not apply because the claim does not use “means,” “step,” or any nonce substitute. However, the claim recites a function including that the second image resolution is greater than the first image resolution with no structure given that would cause this function to occur, therefore the claim must be interpreted under 112(f).
Regarding the 103 rejections, applicant’s arguments have been fully considered and are appreciated. However, the examiner respectfully disagrees.
Regarding claim 1, applicant argues the currently applied prior art does not disclose the second image resolution is greater than the first image resolution. However, it appears that applicant is arguing that the limitation discloses that a user’s central vision resolution is better than their peripheral vision resolution, which is disclosed by the optical system of Etter (see 112(b) rejection below). Further, because the structure of the claimed system, as identified above and in the original action, is the same as that claimed, it must inherently perform the same function and have the second image resolution be greater than the first image resolution. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board' s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114.
Regarding claim 3, applicant argues the currently applied prior art does not disclose the recited S1/S2, S1/S4, and r2 values because the prior art does not treat the S1/S2 and S1/S4 relationships as result-effective, and Aller concerns optimizing a known result-effective variable. However, it is basic knowledge that adjusting the sag of a lens balances the amount of focusing of a lens with the weight and size of the entire apparatus along the optical axis, therefore it is a result-effective variable. It is well known that optimizing the sag of a lens is related to lens power and thickness, as well as correcting spherical aberration, see OptiCampus1. Etter has all the claimed elements of the optical system and is just silent on the specifics of all the sag values of each lens. One would have been motivated to
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding independent claim 1, the limitation “such that for a first virtual image location at a first field angle between about 5 degrees and about 30 degrees relative to the optical system axis: (i) when the eye axis is substantially coincident with the optical system axis, a retinal image of the virtual image at the first virtual image location has a first image resolution; and (ii) when the eye is rotated so that the eye axis is substantially coincident with a first field axis extending between the eye and the first virtual image location at the first field angle, a retinal image of the virtual image at the first virtual image location has a second image resolution greater than the first image resolution” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear what is causing the second image resolution to be greater than the first image resolution. It is unclear if there is something structural about the optical system that is causing the second image resolution to be greater than the first resolution, such as the display device changing the resolution on the display depending on the position of the eye, which would require eye tracking, or if the second image resolution being greater than the first image resolution is describing how the user perceives the display depending on the position of the user’s eye, i.e. comparing an eye’s central vision resolution to its peripheral vision resolution. In the first case, the claim would be incomplete for omitting essential elements and structural relationships that would cause the second image resolution to be greater than the first image resolution (see MPEP 2172.01). There is no element in the claim that makes this function inherent. Therefore, there would also be an undue quantity of experimentation needed to make or use the invention based on the content of the disclosure, since the disclosure simply states the second image resolution is greater than the first image resolution without any structural elements to cause this effect.
However, from applicant’s arguments and the specification it appears that the interpretation is the second case, in which the second image resolution being greater than the first image resolution is describing how the user perceives the display depending on the position of the user’s eye, i.e. the human eye has a better central vision resolution than a peripheral vision resolution. Applicant argues “for a first virtual image location at an oblique field angle (5°-30°), (i) the retinal image resolution of that same location when the eye axis is coincident with the system axis (i.e., the user is looking straight ahead, so that location is off-fovea), against (ii) the retinal image resolution of that same location when the eye rotates so its axis is coincident with the field axis (i.e., the user looks directly at that location with the fovea). The claim then requires (ii) > (i).” According to the specification, the retinal image corresponds to 82 as seen in Fig. 2, which is the image formed at the back of the eye. This indicates that the limitation is directed towards how a user perceives the resolution, which is directed towards human subject matter, which then raises questions of subject matter eligibility. This limitation is not inherent to a human eye. Although it is most common for a human eye to have a better central vision resolution than a peripheral vision resolution, there exist conditions such as macular degeneration where the central vision resolution is worse than the peripheral vision resolution. It is unclear whether infringement occurs when a user simply uses the optical system, and thus further unclear if infringement would still occur if a user that has better peripheral vision resolution than central vision resolution uses the optical system.
For the purposes of examination, examiner assumes “such that for a first virtual image location at a first field angle between about 5 degrees and about 30 degrees relative to the optical system axis: (i) when the eye axis is substantially coincident with the optical system axis, a retinal image of the virtual image at the first virtual image location has a first image resolution; and (ii) when the eye is rotated so that the eye axis is substantially coincident with a first field axis extending between the eye and the first virtual image location at the first field angle, a retinal image of the virtual image at the first virtual image location has a second image resolution greater than the first image resolution” as being a feature that naturally occurs when any of the majority of the population would use the optical system, and therefore inherent.
Claims 2-5 are dependent on claim 1 and therefore inherit the same issues.
Regarding claim 3, the limitation “wherein the second image resolution is greater than the first image resolution for all first field angles between about 5 degrees and about 30 degrees” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
The limitation is unclear for similar reasons as in claim 1, see 112(b) rejection above, and will be interpreted accordingly. The limitation is further unclear because there are no specific ranges which are defined by “about” and it is therefore unclear whether a numerical value just outside these ranges would read on the limitations or not, and if so, specifically how close the value must be to the given range of “about 5 degrees and about 30 degrees” to read on the limitation.
For the purpose of examination, examiner assumes “about [numerical value]” as “within one significant digit of [numerical value]” and assumes the limitations of the claim are inherent for similar reasons as in claim 1.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: "such that for a first virtual image location at a first field angle between about 5 degrees and about 30 degrees relative to the optical system axis: (i) when the eye axis is substantially coincident with the optical system axis, a retinal image of the virtual image at the first virtual image location has a first image resolution; and (ii) when the eye is rotated so that the eye axis is substantially coincident with a first field axis extending between the eye and the first virtual image location at the first field angle, a retinal image of the virtual image at the first virtual image location has a second image resolution greater than the first image resolution" in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC §§ 102 & 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Etter et al. (WO 2018211405 A2), hereinafter Etter.
Regarding independent claim 1, Etter discloses an optical system (500; Fig. 1A; pg. 5 lines 32-36) comprising an optical system axis (520; Fig. 1A; pg. 11 lines 32-36), a display (55; Fig. 1A; pg. 6 lines 28-33) and at least one lens (10, 20; Fig. 1A; pg. 11 lines 32-36), the optical system forming a virtual image of an image emitted by the display (55) for viewing by an eye (510; Fig. 1A), the eye having an optical eye axis (axis along direction eye is pointed; Fig. 1A), such that for a first virtual image location at a first field angle between about 5 degrees and about 30 degrees relative to the optical system axis: (i) when the eye axis is substantially coincident with the optical system axis, a retinal image of the virtual image at the first virtual image location has a first image resolution; and (ii) when the eye is rotated so that the eye axis is substantially coincident with a first field axis extending between the eye and the first virtual image location at the first field angle, a retinal image of the virtual image at the first virtual image location has a second image resolution greater than the first image resolution (inherent, see 112(b) rejection above; Figs. 1A, 5).
Regarding claim 3, Etter discloses the optical system of claim 1, as set forth above. Etter further discloses the second image resolution is greater than the first image resolution for all first field angles between about 5 degrees and about 30 degrees (inherent, see 112(b) rejection above; Figs. 1A, 5).
Regarding claim 4, Etter discloses the optical system of claim 1, as set forth above. Etter further discloses one or more of a partial reflector (30; Fig. 1A; pg. 9 lines 35-38), a reflective polarizer (40; Fig. 1A; pg. 10 lines 21-38), and an optical retarder (50; Fig. 1A; pg. 11 lines 8-17).
Regarding claim 5, Etter discloses the optical system of claim 1, as set forth above. Etter further discloses the optical system axis is folded (Fig. 1A).
Regarding claim 6, Etter discloses the optical system of claim 1, as set forth above. Etter further discloses the optical system axis is folded so that a first segment of the system axis substantially coincides with a different second segment of the system axis (Fig. 1A).
Claim(s) 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as obvious over Etter (WO 2018211405 A2)2.
Regarding claim 2, Etter discloses the optical system of claim 1, as set forth above. Etter further discloses the at least one lens (10, 20) comprises a first optical lens (20; Fig. 1A) comprising opposing first and second major surfaces and facing a second optical lens (10; Fig. 1A) comprising opposing third and fourth major surfaces, the second and third major surfaces facing each other (Fig. 1A), the first through fourth major surfaces having respective sags S1-S4 (pgs. 7-8), wherein each of the sags is defined by:
S
=
c
r
2
1
+
1
-
1
+
k
c
2
r
2
+
α
2
r
4
+
α
3
r
6
+
α
4
r
8
where c is 1/radius of curvature of the major surface, k is a conic constant of the surface, r is a distance from the optical system axis, and a is an aspheric deformation constant,
wherein the first major surface (22d; Fig. 2d) comprises a convex central portion surrounded by an annular concave outer portion (Fig. 2d), the second major surface (21d; Fig. 2d) is convex (Fig. 2d), the third major surface (12; Fig. 1A) is substantially planar (Fig. 1A), and the fourth major surface (11; Fig. 1A) is convex (Fig. 1A).
Etter further discloses for r extending from about 1 mm to at least about 25 mm: -0.7 ≤ S1/S2 ≤ 1; -0.2 ≤ S1/S4 ≤ 0.4; and a best fourth-order polynomial fit to each of the S1/S2 and S1/S4 has an r-squared value greater than about 0.95 (inherent given structure and function, see Figs. 1A, 2D)3.
In the alternative, if Etter’s invention does not inherently have for r extending from about 1 mm to at least about 25 mm: -0.7 ≤ S1/S2 ≤ 1; -0.2 ≤ S1/S4 ≤ 0.4; and a best fourth-order polynomial fit to each of the S1/S2 and S1/S4 has an r-squared value greater than about 0.95, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Etter discloses all of the claimed elements of an optical system, fulfilling the general conditions of the claim. One would be motivated to set the S1/S2, S1/S4, and the r-squared values to satisfy the above expressions for the purpose of efficiently correcting spherical aberration and having more focusing power with keeping the weight and size of the apparatus compact.
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the lens surfaces to satisfy the above expressions for the purpose of efficiently correcting spherical aberration and having more focusing power with keeping the weight and size of the apparatus compact.
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 NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATASHA NIGAM/Examiner, Art Unit 2872 June 2nd, 2026
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872
1 OptiCampus. “High-Powered Lenses and Thickness.” OptiCampus.Com - Continuing Education Course, 18 Mar. 2016, web.archive.org/web/20160308214806/www.opticampus.com/popcourse.php?url=high_powered%2F.
2 Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). See MPEP 2112 III.
3 The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995), see MPEP 2112.
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