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 .
Remark
This Office Action is in response to applicant’s amendment filed on January 30, 2026, which has been entered into the file.
By this amendment, the applicant has amended claim 13.
Claims 1-20 remain pending in this application.
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 11 and 13 are 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.
The phrase “conventional lens” recited in claims 11 and 13 is confusing and indefinite, since it is not clear how to definitely define “conventional”. Furthermore, claim 11 is also in direct contradictory to the scope of claim 1 (its based claim), since claim 1 recites the first lens is a broadband multi-level diffractive lens.
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the US patent application publication by Burnsed et al (US 2022/0404594 A1) in view of the US patent application publication by Menon (US 2021/0033769 A1).
Burnsed et al teaches a method for reducing thickness (therefore size) and weight of a night vision system (Figure 5) wherein the method comprises replacing an array of objectives, (106, Figure 5), serves as the at least one first lens, with at least one multi-level diffractive lenses (MDL), wherein the at least one multi-level diffractive lens having optical capability at least equivalent to the at least one first lens or objective, (please see paragraph [0022]).
This reference has met all the limitations. It however does not teach explicitly that the multi-level diffractive lens (MDL) is a broadband multi-level diffractive lens. Menon in the same field of endeavor teaches a multi-level diffractive structure that is capable of diffracting and focusing broadband incident light, (please see Figures 8A and 8B and paragraph [0096]). It would then have been obvious to one skilled in the art to apply the teachings of Menon to modify the multi-level diffractive lens to be a broadband multi-level diffractive lens for the benefit of allowing the night vision device is capable of utilizing broadband light spectrum.
With regard to claim 2, these references do not teach explicitly that the weight reduction is at least 30%, however such modification is considered obvious to one skilled in the art since it depends on the material and size used to make the multi-level diffractive lens.
With regard to claim 3, Burnsed et al teaches that the multi-level diffractive lens is to replace the objective, this means it is implicitly true that the multi-level diffractive lens has the same aperture size as the at least one lens or the objective.
With regard to claim 4, Burnsed et al in light of Menon teaches that the broadband multi-level diffractive lens is arranged to focus an image on at least one photocathode of the intensifier, (102, please see Figure 2, paragraph [0002]).
With regard to claim 5, Burnsed et al teaches an eyepiece (108, Figures 2 and 5) is arranged to focus an image on at least one user’s eye. Burnsed et al further teaches that the eyepiece may also be implemented by using multi-level diffractive lens (MDL), please see paragraph [0022]).
With regard to claim 6, it is implicitly true or obvious modification by one skilled in the art to make the focal length of the at least one broadband multi-level diffractive lens is based at least in part of achieving a specified balance point of a weight of the system.
With regard to claims 7-9, Burnsed et al teaches that the night vision may be head worn and which makes it be attached to an object worn on user’s head, (please see paragraph [0003]). Whether it is temporarily or permanently attached to the object worn by user’s head is an obvious matters of choices to one skilled in the art. Although this reference does not teach explicitly that the night vision device is alternatively attached to an object held in user’s hand, such modification is considered obvious to one skilled in the art to extend the application of the night vision device.
With regard to claim 10, Burnsed et al teaches that the eyepiece array (108, Figures 2 and 5), that serves as the at least one second lens may also be implemented by the multi-level diffractive lens, (MDL, please see paragraph [0022]). In light of Menon, the multi-level diffractive lens may also be broadband multi-level diffractive lens.
With regard to claims 11 and 12, Burnsed et at teaches that the object lens or the first lens may be replaced by multi-level diffractive lens, (please see paragraph [0022]). If the replacement has not occurred, then the objective lens may be a conventional lens. In light of Menon, the multi-level diffractive lens may also be broadband multi-level diffractive lens.
With regard to amended claim 13 and claim 14, Burnsed et al teaches that the second lens or the array of eyepiece lenses may either of the conventional lens or a multi-level diffractive lens, (please see paragraph [0022]). In light of Menon, the multi-level diffractive lens may also be broadband multi-level diffractive lens.
With regard to claims 15 and 16, Burnsed et al teaches that the method is to lower weight and reduce moment arm, which reduce the length of the device, (please see paragraph [0022]). It is implicitly true or obvious to one skilled in the art to make the focal length of the at least one broadband multi-level diffractive lens is based on the length of the device.
With regard to claims 17-20, these references do not teach explicitly that the night vision system is attached to a magnification device, a range finder, an image capture device or an audio recording device. However, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Madham, 2 USPQ2d 1647 (1987).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1-20 of copending Application No. 18/338,567 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Response to Arguments
Applicant's arguments filed January 30, 2026, have been fully considered but they are not persuasive.
In response to applicant’s arguments concerning the rejection of claims under 35 USC 112, second paragraph, the applicant is respectfully noted that claim 1 recites “the” at least one first lens is replaced by the multi-level diffractive lens, and the dependent claim 11, also recites “the” at least one first lens is a conventional lens. Furthermore, the applicant also fails to define what considered or how to define “conventional lens”. The rejections therefore still hold.
In response to applicant's argument that Menon is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the particular problem with which the inventor was concerned is to reduce a size or weight of a night vision system by a replacing at least one first lens with at least one diffractive lens. It is implicitly true that whether the diffractive lens is broadband or not does not affect the size or weight reduction. Menon in the same field of endeavor teaches a multi-level diffractive structure that may diffract and focus broadband incident light, wherein the broadband spectrum may include visible light, near infrared light, infrared light, ultraviolet light, (please see paragraph [0070]) that includes the typical wavelength band for a night vision system. The visible light, including red/green/blue wavelengths (400 nm to 700 nm) and near infrared wavelength (700 nm to 1,400 nm) that convers the broadband spectrum (650-900 nm) defined by the specification of instant application. The broadband diffractive lens taught by Menon therefore is legitimate and may be utilized to replace conventional lens to reduce the weight or size of the any optical system including a night vision system. It is therefore reasonably pertinent to the particular problem with which the inventor was concerned. The rejection therefore still holds.
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 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 AUDREY Y CHANG whose telephone number is (571)272-2309. The examiner can normally be reached M-TH 9:00AM-4:30PM.
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AUDREY Y. CHANG
Primary Examiner
Art Unit 2872
/AUDREY Y CHANG/Primary Examiner, Art Unit 2872