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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 29, 2025 has been entered.
This Office Action is also in response to applicant’s amendment filed on July 1, 2025, which has been entered into the file.
By this amendment, the applicant has amended claims 1 and 16.
Claims 4, 5, 7, 13, 15 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 7, 2024.
Claims 1-3, 6, 8-12, 14, 16-18 and 20 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 1-3, 6, 8-12, 14, 16-18 and 20 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 and 16 have been amended to include the phrase “wherein each of the plurality of first second pattern is a separate column nano structure and each plurality of second second pattern is a separate column nano structure” that is not fully supported by the specification of originally filed.
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) 1-3, 6, 8-12 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the patent issued to Ma et al (PN. 9,151,891) in view of the US patent application by Shishido et al (US 2017/0075210 A1) and US patent application publication by Zaidi et al (US 2004/0041283 A1).
Claim 1 has been amended to necessitate new grounds of rejection.
Ma et al teaches a metamaterial based optical lenses that is comprised of a substrate (the metamaterial portion of Figure 8(a) and 13(a)) comprising a plurality of first patterns serves as the meta-surface provided on a first region of a first surface of the transparent substrate, and a plasmonic waveguide coupler (PWC) serve as the light control member provided on a second region of a second surface of the transparent substrate and configured to surround an entirety of the first region in which the meta-surface is provided. Ma et al teaches that the meta-surface with the plurality of first patterns and the light control member may comprise dielectric materials, (please see column 4, lines 10-15 and column 9, lines 10-15).
This reference has met all the limitations of the claims. It however does not teach explicitly that the light control member comprises a plurality of second patterns. Shishido et al in the same field of endeavor teaches a mass shift mask that is comprised of a light shielding pattern (20c, Figure 4c) wherein the light shielding pattern comprises a plurality of patterns. It would then have been obvious to one skilled in the art to apply the teachings of the Shishido et al to modify the light control member of Ma et al to make it with a plurality of second patterns for the benefit of allowing the light control member to properly shield the light.
Claim 1 also includes the phrase “wherein the plurality of second patterns comprises a plurality of first second patterns provided on a first side of the plurality of first pattern and a plurality of second second patterns provided on a second side of the plurality of first patterns opposite to the first side”.
Ma et al teaches that the light control member (PMC) provided on the second region comprises a first pattern provided on a first side of the plurality of first patterns and a second pattern provided on a second side of the plurality of the first patterns opposite to the first side, (please see Figures 8(a) and 13A). Shishido et al teaches that the light shielding pattern (20c, Figure 4c) may comprise a first plurality of shielding patterns provided in a first side of the plurality of first patterns (20a) and a second plurality of shielding patterns provided on a second side of the plurality of first patterns, opposite to the first side, (please see Figure 4c). Shishido et al teaches that the light shielding areas with the first plurality of light shielding patterns and the second plurality of light shielding patterns may be in the form of a ring or a band, (please see paragraph [0006]). A band by dictionary definition is “surround (an object) with something in the form of a strip”.
Claim 1 has been amended to include the phrase “wherein each of the plurality of first second patterns is a separate columnar nano structure and each plurality of second second patterns is a separate columnar nano structure”.
This phrase is being rejected under 25 USC 112, first paragraph, for the reasons set forth above. Shishido et al teaches that each of the plurality of first second patterns and a plurality of second second patterns is each of separate columnar structure. Shishido et al teaches that the separate columnar structure may be formed by a plurality of layers (13a, 13b and 13c, Figure 4c) that each with a thickness in nanometers, (please see Table 1). Shishido et al teaches that the plurality of second patterns (20b) may comprise alignment mark pattern, (please see paragraph [0181]). Zaidi et al in the same field of endeavor teaches an alignment mark (3, Figures 1 and 2) that may comprise separate columnar nanostructure (please see the abstract). It would then have been obvious to one skilled in the art to apply the teachings of Zaidi et al to modify the plurality of second pattern of Shishido et al to comprise separate columnar nanostructure for the benefit of making the second plurality of patterns to have desired optical properties.
With regard to claim 2, Ma et al teaches that the meta-surface comprises a plurality of a column pattern, ( please see Figures 8(a) or 13(a)).
With regard to claim 3, Ma et al teaches that the meta-surface and the light control member are on the same side of the transparent substrate (please see Figures 8(a) and 13(a)).
With regard to claim 6, both Ma et al and the Shishido et al that the light control member may also comprise metal material such as Chromium (please see paragraph [0122] of Shishido et al), or silver (please see column 6, lines 20-25, of Ma et al), which implicitly has absorptive property.
With regard to claim 8, Ma et al teaches that the first patterns comprises a columnar pattern, (please see Figure 4c).
With regard to claim 9, as shown in Figures 3A to 3D, Shishido et al teaches that the first plurality of patterns and the second plurality of patterns may comprise a same material.
With regard to claim 10, as shown in Figures 3A and 4A of Shishido et al, the second plurality of patterns may be uniformly distributed on an entirety of the second region.
With regard to claim 11, Ma et al teaches that the plurality of first patterns are meta-pattern having a dimension different from the second pattern, (please see Figure 8(a) and 13(a)).
With regard to claim 12, Ma et al in light of Shishido et al teaches that the plurality of second patterns may comprise alignment key pattern (20b, please see paragraph [0176] ) wherein the alignment key pattern comprises a layer (13c) that covers the alignment key pattern. The layer (13c) may comprise highest content of chromium (please see paragraph [0135]) that has the property of the absorption.
With regard to claim 20, 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).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al, Shishido et al and Zaidi et al as applied to claim 1 above, and further in view of patent issued to Katagiri et al (PN. 7,745,237).
The metamaterial based lens taught by Ma et al in combination with the teachings of Shishido et al and Zaidi et al as described in claim 1 has met all the limitations of the claims.
With regard to claim 14, these references do not teach explicitly that a gap is formed between the meta-surface and the light control member. Katagiri et al in the same field of endeavor teaches a pattern that comprises a first pattern and a second pattern (12b, Figures 8-10) that surrounds the first pattern wherein the second patter is an alignment mark. The alignment mark and the first patterns formed with a gap between these two patterns. Although this reference does not teach explicitly that the gap is less than or equal to 5 mm, however such modification is considered to be obvious matters of design choice to one skilled in the art since the dimension of the gap does not affect the operation of the metamaterial based lenses.
Claim(s) 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over the patent issued to Ma et al (PN. 9,151,891) in view of the US patent application publication by Shishido et al (US 2017/0075210 A1) and US patent application publication by Zaidi et al (US 2004/0041283 A1).
Claim 16 has been amended to necessitate the new grounds of rejection.
Ma et al teaches a metamaterial based optical lens that implicitly includes method for manufacturing such optical lens, wherein the method comprises step of forming a material layer on a first surface of a transparent substrate (metamaterial portion, Figures 8(a) and 13(a)), and patterning the material wherein the patterning the material layer comprises forming a meta-surface comprising a plurality of first patterns on a first region of the first surface of the transparent substrate and forming a plasmonic waveguide coupler (PWC), serves as the light control member, on a second region of a second surface of the transparent substrate (please see Figures 8(a) and 13(a)). The light control member is configured to surround an entirety of the first region in which the meta-surface is provided. Ma et al teaches that the meta-surface with the plurality of first patterns and the light control member may comprise dielectric materials, (please see column 4, lines 10-15 and column 9, lines 10-15).
This reference has met all the limitations of the claims. It however does not teach explicitly that the light control member comprises a plurality of second patterns. Shishido et al in the same field of endeavor teaches a mass shift mask that is comprised of a light shielding pattern (20c, Figure 4c) wherein the light shielding pattern comprises a plurality of patterns. It would then have been obvious to one skilled in the art to apply the teachings of the Shishido et al to modify the light control member of Ma et al to make it with a plurality of second patterns for the benefit of allowing the light control member to properly shield the light. Shishido et al teaches that the second pattern is columnar pattern, (please see Figure 4c).
Shishido et al also teaches that the first plurality of patterns and the second plurality of patterns may be formed in the same operation. It would then have been obvious to apply the teachings of Shishido et al to modify the manufacturing method to Ma et al to make the first and second plurality of patterns in a same operation for the benefit of simplifying the manufacturing process.
Claim 16 also includes the phrase “wherein the plurality of second patterns comprises a plurality of first second patterns provided on a first side of the plurality of first pattern and a plurality of second second patterns provided on a second side of the plurality of first patterns opposite to the first side”.
Ma et al teaches that the light control member (PMC) provided on the second region comprises a first pattern provided on a first side of the plurality of first patterns and a second pattern provided on a second side of the plurality of the first patterns opposite to the first side, (please see Figures 8(a) and 13A). Shishido et al teaches that the light shielding pattern (20c, Figure 4c) may comprise a first plurality of shielding patterns provided in a first side of the plurality of first patterns (20a) and a second plurality of shielding patterns provided on a second side of the plurality of first patterns, opposite to the first side, (please see Figure 4c). Shishido et al teaches that the light shielding areas with the first plurality of light shielding patterns and the second plurality of light shielding patterns may be in the form of a ring or a band, (please see paragraph [0006]). A band by dictionary definition is “surround (an object) with something in the form of a strip”.
Claim 16 has been amended to include the phrase “wherein each of the plurality of first second patterns is a separate columnar nano structure and each plurality of second second patterns is a separate columnar nano structure”.
This phrase is being rejected under 25 USC 112, first paragraph, for the reasons set forth above. Shishido et al teaches that each of the plurality of first second patterns and a plurality of second second patterns is each of separate columnar structure. Shishido et al teaches that the separate columnar structure may be formed by a plurality of layers (13a, 13b and 13c, Figure 4c) that each with a thickness in nanometers, (please see Table 1). Shishido et al teaches that the plurality of second patterns (20b) may comprise alignment mark pattern, (please see paragraph [0181]). Zaidi et al in the same field of endeavor teaches an alignment mark (3, Figures 1 and 2) that may comprise separate columnar nanostructure (please see the abstract). It would then have been obvious to one skilled in the art to apply the teachings of Zaidi et al to modify the plurality of second pattern of Shishido et al to comprise separate columnar nanostructure for the benefit of making the second plurality of patterns to have desired optical properties.
With regard to claim 17, Ma et al teaches that the plurality of first patterns are meta-pattern having a dimension different from the second pattern, (please see Figure 8(a) and 13(a)).
With regard to claim 18, Ma et al teaches that the meta-surface and the light control member are on the same side of the transparent substrate (please see Figures 8(a) and 13(a)).
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 1-3, 6, 8-12, 14, 16-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,808,918. Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose a meta-surface optical device that is comprised of a meta-surface comprising a plurality of columnar patterns provided on a first region of a surface of the transparent substrate and a light control member comprising a plurality of second columnar patterns provided on a second region of the surface of the transparent substrate wherein the second patterns are configured to surround an entirety of the first region in which the meta-surface is provided. The plurality of first pattern and the plurality of second patterns are made of dielectric material.
Response to Arguments
Applicant's arguments filed July 1, 2025 have been fully considered but they are not persuasive. The newly amended 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 considered and addressed in reasons for rejection set forth above.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
AUDREY Y. CHANG
Primary Examiner
Art Unit 2872
/AUDREY Y CHANG/Primary Examiner, Art Unit 2872