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 July 6, 2026, which has been entered into the file.
By this amendment, the applicant has amended claims 1-9, 11, 12, 14-15, and 20, and has canceled claims 13 and 17-19.
Claims 1-9, 11, 12, 14-16 and 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.
Claim 5 is 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.
Claim 5 has been amended to add the phrase “optical focusing element preserves a majority of the wavelength-dependent optical focusing imposed by DOE” is confusing and indefinite since it is not clear what considered to be “preserve a majority focusing”. It is not clear how to objectively define “preserve”? It is not clear how to objectively define “majority”?
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) 1-5, 11-12, 14-16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over patent issued to Stewart et al (PN. 10,310,148) in view of US patent application publication by Miura et al (US 2006/0203344 A1) and US patent issued to Shirasaki et al (PN. 6,332,689).
Claims 1 and claims 17-20 have been significantly amended to necessitate the new grounds of rejection.
Stewart et al teaches, with regard to claim 1, a system of aberration correction in a wavelength selective switching optical systems (with regard to the amendment, please see column 1, line 18) wherein the system is comprised of at least one optical input (5, 6, or 7, Figure 2) for projecting light comprising a plurality of individual wavelength components, at least one optical output port (9), a cylindrical mirror (17, with regard to amendment) for focusing light in a first plane, a diffraction grating (1 or 13, Figures 1 and 2), serves as the diffractive optical element, arranged to receive the light from the cylindrical mirror and direct the light back to the cylindrical mirror, (with regard to amendment, please see Figure 2), the diffractive optical element including a substrate (2) and an array of physical diffraction elements (3, Figure 1), wherein the diffraction elements have a predefined spacing and curvature (Figure 1) across a length of the diffraction optical element in the first plane, wherein the diffraction elements are collective adapted to (1) spatially separate the individual wavelength components for light in the first plane, (2) impose predefined phase changes to the wavelength components to at least partially correct for optical aberrations to the light and (3) apply a wavelength-dependent optical focusing to the light in the first plane, (with regard to amendment). The diffractive optical element implicitly has different diffraction function to light having different wavelengths, based on the diffraction equation, and this means the imposed phase changes are wavelength-dependent. Stewart et al further teaches that the optical system comprises an optical focusing element (in light of the amendment, 15, Figure 2), disposed between the cylindrical mirror (17) and the diffractive optical element (13, with regard to amendment).
The optical focusing element (15) is a lens that implicitly has a refractive index that dependent wavelength and therefore disperses the light according to the wavelength components. It is implicitly true that the diffractive optical element also disperses or separates light of different wavelength components according to diffraction theory. It is known in the art that the dispersion of the wavelength components of the light by a refractive lens would be in reverse direction as the dispersion of the wavelength components of the light by diffractive optical element. This means the optical focusing element at least partially reverse the wavelength dependent optical focusing imparted by diffractive optical element. However, in light of the amendment, this reference does not teach that the optical focusing element reverse the wavelength-dependent optical focusing imparted by the diffractive optical element in the first plane.
Miura et al in the same field of endeavor teaches a chromatic dispersion compensating apparatus that is comprised of a diffractive optical element (7, Figure 1) and a cylindrical lens serves as the focusing optical element (8) wherein the wavelength dependent focusing by the diffractive optical element and the reverse focusing of the cylindrical lens are in the same plane. It would then have been obvious to apply the teaching of Miura et al to modify the focusing optical element to specifically include a lens that would reverse the focusing of the diffractive optical element at the same plane. Furthermore, Shirasaki et al in the same field of endeavor teaches an optical apparatus that provides an arrangement of the diffractive optical element, the focusing element (252,Figure 20(B)) and the cylindrical mirror may focus incident light at the same plane. It would then have been obvious to apply the teachings of Shirasaki et al to modify the system to have a design to have the focusing of the light in the same plane.
In response to the amendment phrase “a net optical power of the optical focusing element and the diffractive optical element”, as shown in Figure 2 of Stewart et al and Miura et al of Figure 1, the light passing through both the diffractive optical element (13, Figure 2 or 7, Figure 1) and the optical focusing element (15 or 8) will experience a net optical power by both elements.
Claim 1 further includes the amendment phrase “the net optical power …is greater at a second wavelength than at a first wavelength and greater at a third wavelength than at the second wavelength wherein the third wavelength is longer than the second wavelength and the second wavelength is longer than the first wavelength”.
It is known in the art and according to the diffraction equation that the longer wavelength will have higher diffraction angle or will have higher bending angle. This means the longer wavelength will have higher or greater net optical power.
Claim 1 has also been amended to include the phrase “an active switching element for selectively coupling the wavelength component form the at least one input port to the at least output port”.
Stewart et al teaches that the wavelength selective switching system further comprises a LCOS device (11, Figure 2) that is configured to receive the light from the cylindrical mirror (17) and direct the light via the cylindrical mirror at the at least one output (9) that serves as an active switching element for selectively coupling the wavelength component form the at least one input port to the at least output port.
With regard to amended claim 2, it is implicitly true the net optical power for different wavelengths would be different. It is within general level skilled in the art to specific make the net optical power to be positive for one wavelength and negative for another for the benefit of make the switch has the desired property.
With regard to amended claim 4, Stewart et al in light of Miura et al teaches that the optical focusing element (8, Figure 1 of Miura et al) is adapted to provide wavelength-dependent optical focusing of the wavelength components in the first plane, (please see Figure 1 of Miura et al).
With regard to amended claims 3 and 5, Stewart et al teaches that the optical focusing element is a cylindrical lens (15, Figure 2) that is adapted to provide wavelength-independent optical focusing of the wavelength components. It is implicitly true that the optical focusing element would preserves a majority of the wavelength-dependent optical focusing imposed by the diffractive optical element.
With regard to claim 11, Steward et al teaches that the diffractive optical element provides a divergent optical focusing to the wavelength components and the optical focusing element provides a convergent optical focusing to the wavelength components, (please see Figure 2).
With regard to amended claim 12, Stewart et al teaches that the optical focusing element (15, Figure 2) is located at a predefined position relative to the diffractive optical element (13). One skilled in the art would have the general knowledge to make the predefined position is chosen such that the net optical power of the optical focusing element and the diffractive optical element is zero at the second wavelength.
With regard to claim 14, Stewart et al teaches that the diffractive optical element is a diffraction grating, (please see Figure 1, column 4, lines 19-25).
With regard to claim 15, Stewart et al teaches that the diffractive optical element is a grating-prism (grism) element, (13, Figure 2, column 4, line 66 to column 5, line 11).
With regard to claim 16, as shown in Figure 1, Stewart et al teaches the diffraction elements are arranged in chirped configuration (or with variable or curved spacings) along the length of the diffractive optical element.
With regard to amended claim 20, Stewart et al teaches that the wavelength dispersive optical system further comprises a liquid crystal on silicon device (LCOS device, 11, Figure 2) serves as the active switching element to steer the wavelength components in a second plane, wherein the second plane is orthogonal to the first plane and wherein the cylindrical mirror (17) is optically between the optical focusing element (15) and the active switching element, (please see Figure 2).
Claim(s) 6-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stewart et al, Miura et al and Shirasaki et al as applied to claim 1 above, and further in view of the US patent application publication by McLaughlin (US 2009/0273840 A1).
The wavelength dispersive optical system taught by Stewart et al in combination with the teachings of Miura et al and Shirasaki et al as described in claim 1 has met all the limitations of the claims.
With regard to claims 6-7 and 9, both Stewart et al and Miura et al teach that the optical focusing element may be cylindrical lens but it does not teach that the focusing element may alternatively be a spherical lens, an aspherical lens or a diffractive optical element. It also does not teach that the focusing element is adapted to provide wavelength-dependent optical focusing of the wavelength components. McLaughlin in the same field of endeavor teaches a wavelength dispersing device that comprises an optical focusing element (107, Figure 6) that may include spherical lens, aspherical lens or a diffraction grating, (please see paragraph [0053]). It would then have been obvious to one skilled in the art to apply the teachings of McLaughlin teaches to alternatively use spherical lens, aspherical lens or a diffractive optical element as the optical focusing element for the benefit of using art well-known optical focusing element to achieve the optical focusing of the wavelength components. For the optical focusing element to comprise a diffractive optical element or diffraction grating, the optical focusing element is adapted to provide wavelength-dependent optical focusing function.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stewart et al, Miura et al and Shirasaki et al as applied to claim 1 above, and further in view of the US patent application publication by Kruizinga et al (US 2019/0017869 A1).
The wavelength dispersive optical system taught by Stewart et al in combination with the teachings of Miura et al and Shirasaki et al as described in claim 1 has met all the limitations of the claims.
With regard to claim 8, both Stewart et al and Miura et al teach that the optical focusing element may comprise cylindrical mirror or lens, but it does not teach explicitly that it includes freeform optical element. Kruizinga et al in the same field of endeavor teaches that an optical focusing element may comprise freeform optical element, (please see Figure 2 and paragraph [0033]). It would then have been obvious to one skilled in the art to apply the teachings of Kruizinga et al to modify the optical focusing element to alternatively include freeform optical element for the benefit of using art well-known element to provide the optical focusing property.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9, 11-12, 14-16 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 17-20 of U.S. Patent No. 10,310,148. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a wavelength dispersive optical element comprises a diffraction grating that includes a substrate and an array of diffraction elements having a predefined spacing and/or curvature across a length of the diffraction grating to spatially separate individual wavelength channels form incident optical beam and to impart predefine phase changes to the wavelength elements to at least partially correct the incident optical beams for optical aberrations.
Response to Arguments
Applicant's arguments filed July 6, 2026, have been fully considered but they are not persuasive. The newly amended and newly added claims have been fully considered and they are rejected for the reasons set forth above.
Applicant’s arguments are mainly drawn to the newly amended features that have been fully addressed in the reasons for rejection set forth above.
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 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
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