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 February 25, 2026, which has been entered into the file.
By this amendment, the applicant has amended claims 1, 5, 10, and 13-18.
Claims 1-18 remain pending in this application.
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 1-18 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1, 10, 13, 14, and 15 have been amended to include the phrase “change in one or more optical properties of the material”, that is not explicitly supported by the specification of originally filed. Furthermore, it is not clear what considered to be “optical properties” of a material. A material in general have various properties such as refractive index, composition etc., but none is considered “optical property”.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-5, 10, 12-15 and 17-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the US patent issued to Harris (PN. 5,309,272).
Claims 1, 10 and 13-15 have been significantly amended to necessitate the new grounds of rejection.
Harris teaches, with regard to claims 1, 10, and 13-15, a diffractive optical element serves as the optical element having zonal structure (please see Figure 1) comprising a plurality of diffractive and/or refractive optical zones or rings (16 and 12), wherein one or more of the zones comprises one or more noise introduction zonal modulation features, wherein the or each of the noise introducing zonal modulation features is constituted by a portion or region of the zone comprises, within that portion or region of the zone, (with respect to the amendment), one or more noise-introducing material or property discontinuities therein or thereon in a form of (1) a noise-introducing change in the material itself of or from which the discontinuity-containing portion or region of the zone is formed or comprised. Harris teaches the discontinuity in the material (14 or 18) that forms discontinuity-containing portion or region of the zone is formed, (please see Figure 1). Harris also teaches that the discontinuity-containing portion comprises multilevel phase relief structure (i.e. the portions 12 and 14, and portions 18 and 22 that have different relief height and optical height to impart different optical phase to the light passes through the plate), that make the noise-introducing change in one or more optical properties of the portion or region.
The discontinuity-containing portion or region of the zone ext3ends along at least a portion of the length or longitudinal direction of the zone and across at least a portion of this width.
With regard to amended claim 10, a method for forming the optical element is implicitly met.
With regard to amended claim 13, this reference does not teach explicitly that the method is a method of homogenizing light passing through or reflected from the optical element.
Furthermore, since the claim and the specification fails to disclose explicit structure to specifically make the modulation a “light directionally with respect to angular and/or intensity light distribution characteristics, homogenizing noise introduction feature”, the noise introducing modulation taught by Harris therefore implicitly also has the function as a directional homogenizing noise introducing zonal modulation feature the same way as the instant application.
With regard to amended claim 14, this reference does not teach explicitly that the method is a method for suppressing or reducing chromatic aberration in the passing of non-monochromatic light through and/or reflected from the optical element.
With regard to amended claim 15, this reference does not teach explicitly that the method is a method of modifying the angular and/or intensity characteristics of light passing through and/or reflected from the optical element.
Furthermore, since the claims and the specification fails to disclose explicit structure to specifically make the modulation a “light directionally with respect to angular and/or intensity light distribution characteristics, homogenizing noise introduction feature”, the noise introducing modulation taught by Harris therefore implicitly also has the function as a directional homogenizing noise introducing zonal modulation feature the same way as the instant application.
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). Furthermore, since the optical element of the recited reference has an identical structure as the claimed optical element, to pass light through or reflected from the optical element therefore would implicitly achieve the claimed functions of homogenizing light, suppressing or reducing chromatic aberration and/pr modifying the angular and/or intensity characteristics of the light.
With regard to amended claims 2 and 12, since the claim and the specification fails to disclose explicit structure to specifically make the modulation a “light directionally, with respect to angular and/or intensity distribution characteristics homogenizing noise-introducing features”, the noise introducing modulation feature taught by Harris therefore implicitly also has the function as a directional homogenizing noise introducing zonal modulation feature the same way as the instant application.
With regard to claims 3 and 4, Harris teaches that the noise introducing zonal modulation feature is provided within at least one of the optical zones and as for claim 4, Harris teaches that the feature may be provided within each one of the plurality of optical zones, (please see Figures 1(b), 6 and 12).
With regard to claim 5, Harris teaches that the one or more noise introducing zonal modulation features deterministically distributed along the length direction of the zones, (please see Figure 6).
With regard to amended claim 17, Harris teaches that the change in the material of or from which the portion or region the zone is formed comprises a change in the material itself/themselves, (please see Figure 1), to form the discontinuity-containing portion or region.
With regard to amended claim 18, Harris teaches that the change in one or more optical properties of the portion or region of the zone comprises variation of an optical relief height or depth in the material of that portion or region of the zone, (noted the discontinuity 18 or 22 of Figure 1 forms binary phase relief structure that have different optical height or depth).
This reference has anticipated the claims.
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harris as applied to claim 1 above, and further in view of the patent issued to Hill et al (PN. 8,488,242).
The diffractive optical element taught by Harris as described in claim 1 has met all the limitations of the claim.
With regard to claim 6, Harris teaches that the zones comprise at least one patterning feature, it however does not teach explicitly that the patterning feature is selected from the claimed features. Hill et al in the same field of endeavor teaches an optical element comprises a plurality of zones that each zone comprises a noise introducing zone modulation feature wherein the feature comprises patterning feature wherein the patterning feature may comprise graphical image, (please see Figures 5A, 5B and 6). It would then have been obvious to one skilled in the art to apply the teachings of Hill et al to alternatively to make the noise introducing zonal modulation feature comprises graphical image for the benefit of using graphic image to provide the modulation feature.
Claim(s) 7, 8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harris in view of the US patent application publication by Endoh (US 2008/0094710 A1)
The diffractive optical element or zone plate taught by Harris as described in claim 1 above has met all the limitations of the claims.
With regard to claim 7, Harris does not teach explicitly that the optical element is a diffractive Fresnel lens. Endoh in the same field of endeavor teaches an optical element comprises a plurality of rings or zones that assume a diffractive Fresnel lens, (Figure 1(b) please see the abstract). It would then have been obvious to one skilled in the art to apply the teachings of Endoh to modify the diffractive optical element to be a diffractive Fresnel lens for the benefit of allowing the optical element to have Fresnel lens function.
With regard to amended claim 8, it is either implicitly true or obvious to one skilled in the art to make the Fresnel zone plate to be utilized with an optical diffuser or a homogenizing element for the benefit of achieving desired functions.
With regard to claim 11, it is implicitly true that the formation method of this diffractive Fresnel lens must include to determine the diffractive Fresnel lens specification and a design process. The method implicitly include zone modulation and diffractive Fresnel lens forming.
Claim(s) 9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harris as applied to claim 1 above, and further in view of the patent issued to Hosokawa et al (PN. 5,114,513).
The diffractive optical element taught by Harris as described in claim 1 has met all the limitations of the claim.
With regard to claims 9 and 16, this reference does not teach explicitly to include a cover layer and a carrier. Hosokawa et al in the same field of endeavor teaches specifically that the Fresnel lens may comprise a carrier (43, Figure 17) and Hosokawa et al further teaches that the Fresnel lens may be provided with a protective layer (44, Figure 17) as a cover layer, (please see column 12, lines 14-44). It would then have been obvious to one skilled in the art to apply the teachings of Hosokawa et al to modify the diffractive Fresnel lens to further include a carrier layer and protective layer for the benefit of allowing the diffractive Fresnel lens to be properly supported and protected.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,726,242. Although the claims at issue are not identical, they are not patentably distinct from each other because both of the instant application and the cited patent recites an optical element having a zonal structure comprises a plurality of diffractive and/or refractive optical zones wherein at least one or more of the zones comprises within the or respective zones, one or more noise introducing features.
Response to Arguments
Applicant's arguments filed February 25, 2026, have been fully considered but they are not persuasive. The newly amended claims have been fully considered and rejected for the reasons set forth above.
In response to applicant’s arguments concerning the rejection of claims under double patenting rejection, it is respectfully noted that the restriction requirement set forth in the parent application 15/129,119 is respect to different species and is not about have or not have a “noise-introducing zonal modulation feature” . Specifically, the parent application 15/129,119 (patent number 11,726,242) indeed recites a “noise-introducing zonal displacement feature” that is the same as the “noise-introducing zonal modulation feature” of the instant application. The arguments therefore are not persuasive to overcome the rejection of the claims under the double patenting rejection. The applicant is respectfully noted that a divisional application does not automatically exempt from double patenting rejection, if the claims are drawn to the same invention. The claims of the current application and the claims of the parent application are NOT patentably distinct from each other.
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.
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, Stephone B Allen can be reached on 571-272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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AUDREY Y. CHANG
Primary Examiner
Art Unit 2872
/AUDREY Y CHANG/ Primary Examiner, Art Unit 2872