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 .
Response to Amendment
Claims 1-4 and 6-20 are currently pending in the present application. Claim 1 is currently amended; claims 2-4, 6-13 and 15-20 are original; claim 5 is canceled; and claim 14 is previously presented. The amendment dated June 22, 2026 has been entered into the record.
Response to Arguments
Applicant has previously provided the auxiliary experimental data, which were used to argue that germanium oxide, germanium nitride or germanium hydroxide has a high refractive index, where the high refractive index is in a range from 3.98 to 4.42 at a spectral range of 1200 nm to 2200 nm (the 10/29/2025 Remarks, Pages 8-11). After the 35 U.S.C. 112(b) rejection with the enablement requirement was sent (the 02/25/2026 Office action, Pages 3-10), the applicant has deleted the claim language regarding the second refractive index and the third refractive index in a range from 3.98 to 4.42 at a spectral range of 1200 nm and 2200 nm, and further deleted at least Paragraphs [0006], [0035] and [0046] in the specification.
The applicant has now deleted the claim language regarding the third refractive index and the fourth refractive index in the claims after the 35 U.S.C. 112(b) rejection with the enablement requirement was sent (the 05/05/2026 Office action, Pages 4-11), and further amended at least Paragraphs [0003], [0030] and [0040] in the specification.
Because the applicant has not discussed the auxiliary experimental data in the 10/29/2025 Remarks, the 04/23/2026 Remarks and the 06/22/2026 Remarks, but merely deletes any relevant optical data which were used for the invention, it appears a person skilled in the art cannot make and use the invention without undue experimentation.
It is not clear how the applicant has obtained the transmittance versus wavelength graph at a spectral range of 1100 nm and 2000 nm illustrated in Figures 6 and 7 based on the auxiliary experimental data which appear to be incorrect and were not originally disclosed in the present specification, where the applicant explicitly states “The experiment is performed on the optical device I to obtain the relationship between wavelength (nm) of incident light and transmittance (%)” (see Specification, Paragraphs [0070] and [0074]).
It is not also clear how the applicant has obtained multiple films comprising a band pass filter based on those optical data (see Paragraph [0038] “the multiple films 14 include a narrow-band pass filter (NBPF) that allows visible (VIS) light, near-infrared (NIR) light or far-infrared (FIR) light to pass through” acknowledging the invention includes a narrow-band pass filter).
Accordingly, the rejection including 35 U.S.C. 112(a) is set forth below, because a person skilled in the art cannot make and use the invention without undue experimentation and the claims cannot be interpreted in light of the specification which includes inexact data, terms and numbers, and the prior art rejection is omitted.
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some unclear, inexact or verbose terms used in the specification are the optical data including the auxiliary experimental data (the 10/20/2025 Remarks).
The specification includes Tables 1 and 2 regarding the optical materials which were used in each layer of the optical structure and Figures 6 and 7 regarding the transmittance obtained by using those optical materials. [Claim 1] “multiple films comprising a first set of multiple films comprising a plurality of first material layers and a plurality of second material layers and a second set of multiple films comprising a plurality of third material layers and a plurality of fourth material layers”, Paragraph [0038] “the multiple films 14 include a narrow-band pass filter (NBPF) that allows visible (VIS) light, near-infrared (NIR) light or far-infrared (FIR) light to pass through” and [0049] “the multiple films 14 include a narrow-band pass filter (NBPF) that allows visible (VIS) light, near-infrared (NIR) light or far-infrared (FIR) light to pass through” and [0061] “the multiple films 14 include a narrow-band pass filter (NBPF) that allows visible (VIS) light, near-infrared (NIR) light or far-infrared (FIR) light to pass through” further identify the multiple films which include a narrow-band pass filter, where the relationship between wavelength (nm) of incident light and transmittance (%) of the band pass filter is obtained by the inexact experimental optical data (see Specification, Paragraphs [0070] and [0074] acknowledging the experiment is performed to obtain the relationship). Thereby, while the applicant has deleted various claim limitations such as “the third refractive-index is greater than the fourth refractive index”, it still appears that those inexact optical data are used to obtain the multiple films comprising a narrow-band pass filter.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 and 6-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter, which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation Ltd. v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Accordingly, even though the statute does not use the term "undue experimentation," it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). See also United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) ("The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.") (see MPEP 2164.01).
Claims 1-4 and 6-20 recite “a first set of multiple films comprising a plurality of first material layers with a first refractive index and a plurality of second material layers comprising germanium oxide, germanium nitride or germanium hydroxide with a second refractive index” and “a second set of multiple films disposed on the first set of multiple films, the second set of multiple films comprising a plurality of third material layers comprising germanium oxide, germanium nitride or germanium hydroxide with a third refractive index and a plurality of fourth material layers with a fourth refractive index”.
The specification does not meet the enablement requirement, because the optical data including the auxiliary experimental data (the 10/20/2025 Remarks) used in the specification is not correct.
Regarding the undue experimentation factors, the examiner considers
(1) the nature of the invention;
(2) the amount of direction provided by the inventor;
(3) the level of one of ordinary skill; and
(4) the state of the prior art.
First, regarding the nature of the invention, the examiner considers the optical structure claiming a plurality of third material layers comprises germanium oxide, germanium nitride or germanium hydroxide with a third refractive index, and the third refractive index is greater than the fourth refractive index, wherein the fourth refractive index is in a range from 1.47 to 1.60 as described in the specification and claims.
Regarding the amount of direction provided by the inventor, the examiner considers:
For the plurality of third material layers, the material layers comprise germanium oxide, germanium nitride or germanium hydroxide (see at least claim 1).
For the plurality of fourth material layers, refractive index are in a range from 1.47 to 1.60 at a spectral range of 200 nm to 2200 nm and the fourth materials comprise silicon oxide (SiO2), titanium oxide (TiO2), niobium oxide (Nb2O5), tantalum oxide (Ta2O5), aluminum oxide (Al2O3) or silicon nitride (SiN) (see at least claim 3-4).
Regarding the level of one of ordinary skill, the examiner considers one of ordinary skill in the art knows that germanium oxide, germanium nitride or germanium hydroxide has a low refractive index in a range from 1.54 and 2.60 between 200 nm and 2200 nm, and one of ordinary skill in the art knows the refractive index of titanium oxide (TiO2) is about 2.47, the refractive index of niobium oxide (Nb2O5) is about 2.25 between 200 nm and 2200 nm. The refractive index of germanium oxide (GeO2) is about 1.59 and the refractive index of germanium nitride (Ge3N4) is about 2.10 between 200 nm and 2200 nm. Germanium oxide, germanium nitride or germanium hydroxide is known to have low refractive indices between 1.3 and 2.2.
For example, see the graph below, plotting the optical constants of titanium oxide.
<https://refractiveindex.info/?shelf=main&book=TiO2&page=Devore-o>
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690
950
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For example, see the graph below, plotting the optical constants of germanium oxide.
< https://refractiveindex.info/?shelf=main&book=GeO2&page=Fleming>
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media_image2.png
694
958
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Greyscale
The fourth material layers comprising titanium oxide have the refractive index of 2.4683 at 1200 nm and the third material layers comprising germanium oxide have the refractive index of 1.5909 at 1200 nm. Thereby, the third refractive index cannot be greater than fourth the refractive index as the originally filed specification indicated.
Furthermore, the experimental data shown by the applicant (the 10/29/2025 Remarks, Pages 8-11) prove that the optical data used by the applicant do not align with the generally known optical data. For example, see the optical data of Germanium Hydroxide below.
<The experimental data claimed by the applicant for Germanium Hydroxide >
[AltContent: arrow][AltContent: textbox (The chemical formula for Germanium Hydroxide is Ge(OH)4, NOT GeO2H10.)][AltContent: textbox (The data shown by the applicant align with the known dispersion of bulk Germanium (see Amotchikina et al., 2020), NOT Germanium Hydroxide.)][AltContent: arrow]
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228
308
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The specification does not meet the enablement requirement because one of ordinary skill in the art wouldn’t be able to modify the inherent optical properties of the materials including silicon oxide (SiO2), titanium oxide (TiO2), niobium oxide (Nb2O5), tantalum oxide (Ta2O5), aluminum oxide (Al2O3), silicon nitride (SiN), Germanium oxide (GeO2), germanium nitride (Ge3N4) and germanium hydroxide (Ge(OH)4).
Regarding the state of the prior art, the examiner considers Hart et al. (US 2025/0020842, hereinafter “Hart”). Hart teaches an optical structure (Figures 3-4; Paragraphs [0016]-[0018]) comprising: a high refractive index layer (40) comprises titanium oxide (TiO2) (i.e., the fourth material layers of the present application) and a low refractive index layer (42) comprises germanium oxide (GeO2) (i.e., the third material layers of the present application), where the refractive index of the high refractive index layer is greater than that of the low refractive index layer (Paragraphs [0068]-[0069]).
Regarding whether there is sufficient written description, please see MPEP 2641 II stating “3. Determine Whether There is Sufficient Written Description to Inform a Skilled Artisan That Inventor was in Possession of the Claimed Invention as a Whole at the Time the Application Was Filed … A specification may describe an actual reduction to practice by showing that the inventor constructed an embodiment or performed a process that met all the limitations of the claim and determined that the invention would work for its intended purpose”.
Since the applicant is completely silent on the method of modifying optical properties of materials in the specification, where the claim(s) contains the subject matter of the low-refractive and high-refractive material layers, in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention, claim 1 fails to comply with the enablement requirement.
Dependent claims 2-4 and 6-20 are rejected because they depend upon claim 1; they are likewise rejected under the same rationale as that set forth above with respect to claim 1.
Because a person skilled in the art cannot make and use the invention without undue experimentation and the claims cannot be interpreted in light of the specification which includes refractive indices with inexact data, terms and numbers, the prior art rejection is omitted.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN Y JUNG whose telephone number is (469)295-9076. The examiner can normally be reached on Monday - Friday, 9:00 am - 5:00 pm.
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, Michael H Caley can be reached on (571)272-2286. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN Y JUNG/Primary Examiner, Art Unit 2871
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