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 Arguments
Applicant’s arguments, see remarks, filed April 9, 2026, with respect to claim rejections under 112 have been fully considered and in combination with the amendments are persuasive. The to claim rejections under 112 have been withdrawn.
Applicant's arguments filed April 9, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s arguments centered on, in the combination of Melli as modified by Calafiore, that Melli’s gallium ion implantation into a silicon substrate would not inherently vary the index of refraction, as required by claim 1, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant points out that Melli has an exemplar of gallium ion implantation into a silicon substrate and does not discuss index variation and Calafiore has an exemplar of oxygen ion implantation into a silicon nitride substrate. In the Office Action of January 9, 2026, the examiner noted that the similarities in the ion implantation modulation of Melli and Calafiore and the changes in the index resulting from changes in the ion implantation modulation discussed in Calafiore as support for inheritance. Applicant contends that Calafiore’s change in index would not necessarily (inherently) result in Melli, given the different exemplar materials. The examiner notes that while Melli uses an exemplar of gallium ion implantation into a silicon substrate Melli in paragraph [0031] further states “This technology can be applied to fabrication of any suitable micro/nanostructures, e.g., grating, with any suitable materials, e.g., silicon, glass or polymer, and any suitable ion spices1, e.g., Gallium ions or Argon.” The examiner did not specifically rely upon this exemplar. Further, in arguendo¸ the examiner notes gallium ion implantation into a silicon substrate does have a change in refractive index based on dosage and depth of implantation, see non-patent literature listed in the conclusion. However, so we don’t get lost in the weeds of the exact change in exemplars and/or broadly disclosed combinations the examiner has simplified the rejection and incorporated the change in index taught in Calafiore to explicitly address this feature, as opposed to implicitly including this feature via an inherency based on ion implantation variations in both Melli and Calafiore. Further, in addition to the rejection over the combination of Melli (missing features of slanted gratings and not explicitly discussing index of gratings) as modified by Calafiore (having said features missing from Melli) the examiner is making an additional rejection over the combination of Calafiore (missing an increasing depth) as modified by Melli (having said features missing from Calafiore).
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.
Claim 22 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim 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, at the time the application was filed, had possession of the claimed invention. Regarding claim 22 “the first region comprises first and second photocurable resins layered on each other and having different refractive indexes from each other, and the second region comprises third and fourth photocurable resins having different refractive indexes from each other” amounts to prohibited new matter. While the specification allows for a printer with 4 or more inkjet printer heads (e.g. see figure 18 and paragraph [0080]) there is nothing in the specification to indicate third and fourth resins used anywhere in the grating. For example, figure 21 has resins A & B, only. For purposes of examination the examiner will assume support exists.
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.
Claims 9 and 22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 9 “the two or more inkjet resin films are disposed on each other” raises clarity issues. It is unclear if applicant is claiming:
a final product of an SRG with a grating region having a greyscale grating region, or
a final product of an SRG with a grating region having a multilayer grating region, or
a method of making a greyscale grating region, or
a method of making a multilayer grating region, or
an intermediate product of multiple resin film layers that will be mixed to form a greyscale grating region, or
an intermediate product of multiple resin film layers that form a multilayer grating region.
Given the functional limitations of claim 1, e.g. “the SRG configured for out-coupling the virtual images to an eye of the user” the claimed invention is interpreted to be a “final product.” Applicant has elected a greyscale structure over a multilayer structure. In light of the interview applicant’s remarks it appears applicant wishes this claim to be considered part of the elected species. In light of this, applicant appears to be claiming a process in making a greyscale structure. It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113. In this case, a greyscale structure could be made by mixing the resins and then applying versus applying the resins and then mixing. For purposes of examination the examiner will interpret this as a process limitations in a product claim, i.e. the claim has no patentable weight. The examiner respectfully suggests cancelling this claim.
Regarding claim 22 “the first region comprises first and second photocurable resins layered on each other and having different refractive indexes from each other, and the second region comprises third and fourth photocurable resins having different refractive indexes from each other” has clarity issues. It is unclear if applicant is claiming precursor elements (i.e. ingredients) and/or a process to make the regions. The materials in the first and second regions are already required to be different by claim 1. However, the first and second regions being composed of photocurable resin is a new limitation that the examiner must address. On the other hand, the process to make the regions, e.g. mixing of ingredients would have no patentable weight2. Further, applicant is claiming a final product, thus the ingredients and/or number of ingredients in an intermediate product has no patentable weight. For purposes of examination the examiner will use “the first region the second region comprise[[s]]
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6, 8-11 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Melli et al. US Patent Application Publication 2018/0095201, of record, in view of Calafiore et al. US Patent 10,895,671, of record.
Regarding claim 1 Melli disclose an out-coupling diffractive optical element (DOE) (e.g. figures 2(IV) & 6 non-uniform diffraction grating 200 exit & pupil expansion/EPE diffractive element 608) in a waveguide combiner in a mixed-reality display system, employable by a user, that combines virtual images and views of a real world (no patentable weight3, further optical system 600 using non-uniform diffraction gratings paragraph [0064] “600 can be used for virtual and augmented reality applications”), comprising: a see-through optical substrate (e.g. substrate 610) having a substrate refractive index (inherent material property), the optical substrate propagating virtual images in total internal reflection along a propagation direction (paragraph [0066] “input light beams travels in the waveguide by total internal reflection … OPE diffractive element 606 on a layer is configured to deflect some of the input light beams to the EPE diffractive element 608”); and a surface relief grating (SRG) disposed on the optical substrate (e.g. 608), the SRG including gratings having a depth that increases along the propagation direction of the virtual images (e.g. figure 2 shows non-uniform grating that has increasing depth, which increases diffraction efficiency, and paragraph [0068] “second non-uniform grating can have a gradually increasing diffraction efficiency along the second direction”), the SRG configured for out-coupling the virtual images to an eye of the user (paragraph [0066] “608 that is configured to in turn deflect some of the deflected light beams out of the substrate 610, e.g., toward a user's eye”), wherein the SRG comprises gratings in at least two distinct regions, a first region (e.g. figure 2 right side with high ion density 204) including gratings with a first refractive index (inherent material property), and a second region including gratings (e.g. figure 2 left side with low ion density 204) with a second refractive index (inherent material property) that is higher relative to the refractive index of gratings in the first region (inherent as explained below), and wherein the first and second regions are based on the grating depth in which grating depth is shallower for gratings in the first region relative to the gratings in the second region (see figure 2(IV) showing left side with low ).
Melli does not disclose the grating are slanted, that the first refractive index is lower relative to the substrate refractive index of the optical substrate and a second refractive index is higher relative to the first refractive index of the gratings in the first region.
Calafiore teaches a similar out-coupling DOE (title e.g. figures 24 & 27) with an intended use of combiner in a mixed-reality display system, employable by a user, that combines virtual images and views of a real world (abstract “used in a virtual-reality system or augmented-reality system” see figures 2-3) including an SRG (see figures 24 & 27) with a similar progressive change in ion implantation (e.g. see figures 22 & 26); and further teaches a slanted for the purpose of directing the output light without using a lens (column 7 line 57-column 8 line 11) and the high ion implantation region has a lower refractive index than the low ion implantation region (e.g. see inter alia column 13 lines 34-43 “a variable refractive index after ion implantation. By selectively applying the ion implantation, the layer 2304 having the variable refractive index is formed on the substrate 815. In the embodiment shown in FIG. 23, n1=1.46 and n2=1.98”, see annotated figure A below) for the purpose of controlling a brightness, a uniformity, a field of view (FOV), and/or efficiency of an image projected to an eye of a user (inter alia column 8 lines 31-48). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by Melli to have a slant and n1<nsub and n1<n2 as taught by Calafiore for the purpose of directing the output light without using a lens and controlling a brightness, a uniformity, a field of view (FOV), and/or efficiency of an image projected to an eye of a user.
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Figure A. Annotated portion of Melli figure 2 (on left) showing graded implanted ion density and annotated portion of Calafiore figure 24 (on right) with an inverse relationship between graded implanted ion density and graded refractive index.
Regarding claim 2 the combination of Melli as modified by Calafiore discloses the out-coupling DOE of claim 1, as set forth above. Melli further discloses the SRG in the out-coupling DOE (e.g. 608) is further configured to expand an exit pupil of the virtual images (inter alia paragraph [0065] “exit pupil expansion (EPE) diffractive element 608”).
Regarding claim 3 the combination of Melli as modified by Calafiore discloses the out-coupling DOE of claim 1, as set forth above. Melli further discloses it is further comprising a third region that is spatially disposed between the first region and the second region (e.g. middle gratings in figure 2(IV)), in which the third region comprises gratings with a third refractive index that is between the first and second refractive indexes (inherent since the ion implantation is graded, see paragraph [0030] & figure 2, resulting in a graded index using the reasoning set forth above).
Regarding claim 4 the combination of Melli as modified by Calafiore discloses the out-coupling DOE of claim 3, as set forth above. Melli further discloses the refractive index of gratings in the third region (e.g. middle gratings in figure 2(IV)) is variable based on spatial location of the gratings within the third region (inherent since the ion implantation is graded, see paragraph [0030] & figure 2, resulting in a graded index using the reasoning set forth above).
Regarding claim 5 the combination of Melli as modified by Calafiore discloses the out-coupling DOE of claim 1, as set forth above. Melli does not disclose the first refractive index of the gratings in the first region is continuously variable between a lowest value for a first group of the gratings in the first region having farthest spatial separation from the second region and a highest value for a second group of the gratings in the first region having closest spatial separation from the second region. Calafiore further teaches a monotonic gradient changes in the refractive index (inter alia column 8 lines 45-48, see figures 24 & 27) for the purpose of controlling a brightness, a uniformity, a field of view (FOV), and/or efficiency of an image projected to an eye of a user (inter alia column 8 lines 31-48). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by the combination of Melli as modified by Calafiore to have the first refractive index of the gratings in the first region is continuously variable between a lowest value for a first group of the gratings in the first region having farthest spatial separation from the second region and a highest value for a second group of the gratings in the first region having closest spatial separation from the second region as further taught by Calafiore for the purpose of controlling a brightness, a uniformity, a field of view (FOV), and/or efficiency of an image projected to an eye of a user.
Regarding claim 6 the combination of Melli as modified by Calafiore discloses the out-coupling DOE of claim 1, as set forth above. Melli does not disclose the second refractive index of the gratings in the second region is continuously variable between a lowest value for a first group of the gratings in the second region having closest spatial separation from the first region and a highest value for a second group of the gratings in the second region having farthest spatial separation from the first region. Calafiore further teaches a monotonic gradient changes in the refractive index (inter alia column 8 lines 45-48, see figures 24 & 27) for the purpose of controlling a brightness, a uniformity, a field of view (FOV), and/or efficiency of an image projected to an eye of a user (inter alia column 8 lines 31-48). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by the combination of Melli as modified by Calafiore to have the second refractive index of the gratings in the second region is continuously variable between a lowest value for a first group of the gratings in the second region having closest spatial separation from the first region and a highest value for a second group of the gratings in the second region having farthest spatial separation from the first region as further taught by Calafiore for the purpose of controlling a brightness, a uniformity, a field of view (FOV), and/or efficiency of an image projected to an eye of a user.
Regarding claim 8-11 the combination of Melli as modified by Calafiore discloses the out-coupling DOE of claim 3, as set forth above. Melli does not disclose the gratings in the third region comprise two or more inkjet resin films having different refractive indexes, as recited in claim 8; or the two or more inkjet resin films are disposed on each other, as recited in claim 9; or the two or more inkjet resin films are configured in a one-dimensional or two-dimensional patterned array, as recited in claim 10; or the two or more inkjet resin films are at least partially merged, as recited in claim 11.
Calafiore further teaches (see column 3 lines 25-35 figures 8-10) a grating being formed from two resins (e.g. first material 808 & second material 908) with different refractive indices (column 8 line 67-column 9 line 1 “808 has a first refractive index, n1” & column 9 lines 17-19 “second material has a second refractive index, n2 … n2 is greater than the first refractive index n1”) arrayed on a substrate (see figure 9 & column 9 line 55 “pattern of drops varies in two dimensions”) and can be layered (column 9 lines 51-54 “In some embodiments, drops of the first material 808 are placed on drops of the first material 808 and/or drops of the second material 908 are placed on drops of the second material 908”) merged (see figure 10 & column 9 lines 55-57 “Drops of material are configured to blend so that refractive index changes smoothly”) for the purpose of creating a grating with a refractive index that varies in one or two dimensions for use in a virtual-reality system or augmented-reality system to provide angular selectivity from display to a user's eye (column 3 lines 34-38). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by the combination of Melli as modified by Calafiore to have the gratings in the third region comprise two or more inkjet resin films having different refractive indexes, and the two or more inkjet resin films are disposed on each other, and the two or more inkjet resin films are configured in a one-dimensional or two-dimensional patterned array, and the two or more inkjet resin films are at least partially merged as further taught by Calafiore for the purpose of creating a grating with a refractive index that varies in one or two dimensions for use in a virtual-reality system or augmented-reality system to provide angular selectivity from display to a user's eye.
Regarding claims 21-22 the combination of Melli as modified by Calafiore discloses the out-coupling DOE of claim 1, as set forth above. Melli does not disclose the first region comprises first photocurable resins having the first refractive index, the second region comprises second photocurable resins having the second refractive index, wherein the first photocurable resins are different from the second photocurable resins, as required by claim 21; or the first region and the second region comprise photocurable resins, as required by claim 22.
Calafiore further teaches the first and second materials (e.g. first material 808 & second material 908) are a first photocurable resins and a second photocurable resins (e.g. column 9 line 62-column 10 line 1 “the first material 808 and the second material 908 are imprinted and/or cured (e.g., crosslinked using heat and/or ultra-violet (UV) light)”), respectively, wherein the first photocurable resins are different from the second photocurable resins (inherent given different indexes, further column 10 lines 6-8 “the first material 808 could have different properties than the second material 908”) for the purpose of forming a continuous change in the refractive index using an inkjet process (column 9 line-15column 10 line 14). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by the combination of Melli as modified by Calafiore to have first and second materials that are a first photocurable resins and a different second photocurable resins, respectively, as further taught by Calafiore for the purpose of forming a continuous change in the refractive index using an inkjet process.
Regarding claim 23 the combination of Melli as modified by Calafiore discloses the out-coupling DOE of claim 1 including the first region having the first refractive index and the second region having the second refractive index different from the first refractive index, as set forth above. Melli and Calafiore do not disclose or teach a first plurality of the gratings of the first region have the same first refractive index, and a second plurality of the gratings of the second region have the same second refractive index. It would have been an obvious matter of design choice to have more than one of the gratings in each of the first and second regions have the same index since applicant has not disclosed that such a duplication solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with continuously varying indexes in the grating regions, as originally presented in claims 5-6. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have more than one grating duplicate the index in the first and second regions, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (1977); and further it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), see MPEP 2144.04. In this case, one would be motivated to have the same index to tailor the diffraction efficiency in that portion of the two regions, furthermore, the originally presented claims 5-6 indicate there are no unexpected results. Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by the combination of Calafiore’s and Melli to have two or more gratings in each of the first and second regions have the same index for the purpose of tailoring the diffraction efficiency in those portion of the two regions, and since that mere duplication has no patentable significance unless a new and unexpected result is produced and originally presented claims 5-6 indicate there are no unexpected results.
Claims 1-6, 8-11 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Calafiore et al. US Patent 10,895,671, of record, in view of Melli et al. US Patent Application Publication 2018/0095201, of record.
Regarding claim 1 Calafiore discloses an out-coupling diffractive optical element (DOE) (title e.g. figures 24 & 27) in a waveguide combiner in a mixed-reality display system, employable by a user, that combines virtual images and views of a real world (abstract “used in a virtual-reality system or augmented-reality system” see figures 2-3), comprising: a see-through optical substrate (e.g. substrate 812) having a substrate refractive index (inherent physical property e.g. column 9 lines 8-14 gives an exemplar 812 material of silicon, which has n=3.98), the optical substrate propagating virtual images in total internal reflection along a propagation direction (e.g. see figure 4); and a surface relief grating (SRG) disposed on the optical substrate (e.g. see figures 24 & 27), the SRG including slanted gratings (e.g. see figures 24 & 27), the SRG configured for out-coupling the virtual images to an eye of the user (abstract “used in a virtual-reality system or augmented-reality system” see figures 2-3), wherein the SRG comprises gratings in at least two distinct regions (e.g. see figures 24 & 27), a first region including gratings (e.g. left side of figures 24 & 27) with a first refractive index (e.g. n1 column 13 lines 34-43 “n1=1.46”) that is lower relative to the substrate refractive index of the optical substrate (1.46<3.98), and a second region including gratings (e.g. right side of figures 24 & 27) with a second refractive index (e.g. n2 column 13 lines 34-43 “n2=1.98”) that is higher relative to the first refractive index of the gratings in the first region (1.98>1.46).
Calafiore dos not disclose the SRG having a depth that increases along the propagation direction of the virtual images, and wherein the first and second regions are based on the grating depth in which grating depth is shallower for the gratings in the first region relative to the gratings in the second region.
Melli teaches a similar an out-coupling diffractive optical element (DOE) (e.g. figures 2(IV) & 6 non-uniform diffraction grating 200 exit & pupil expansion/EPE diffractive element 608) in a waveguide combiner in a mixed-reality display system, employable by a user, that combines virtual images and views of a real world (no patentable weight4, further optical system 600 using non-uniform diffraction gratings paragraph [0064] “600 can be used for virtual and augmented reality applications”), comprising: a see-through optical substrate (e.g. substrate 610) having a first refractive index (inherent material property), the optical substrate propagating virtual images in total internal reflection along a propagation direction (paragraph [0066] “input light beams travels in the waveguide by total internal reflection … OPE diffractive element 606 on a layer is configured to deflect some of the input light beams to the EPE diffractive element 608”); and a surface relief grating (SRG) disposed on the optical substrate (e.g. 608), the SRG configured for out-coupling the virtual images to an eye of the user (paragraph [0066] “608 that is configured to in turn deflect some of the deflected light beams out of the substrate 610, e.g., toward a user's eye”), wherein the SRG comprises gratings in at least two distinct regions, a first region (e.g. figure 2 right side with high ion density 204), and a second region including gratings (e.g. figure 2 left side with low ion density 204); and further teaches the SRG including gratings having a depth that increases along the propagation direction of the virtual images (e.g. figure 2 shows non-uniform grating that has increasing depth, which increases diffraction efficiency, and paragraph [0068] “second non-uniform grating can have a gradually increasing diffraction efficiency along the second direction”) and wherein the regions are based on the grating depth in which grating depth is shallower for gratings in the first region (e.g. figure 2 right side) relative to gratings in the second region (e.g. figure 2 left side) for the purpose of having non-uniform diffraction efficiencies along a light propagation path such that uniform diffracted light can be achieved when light prorogates and is gradually deflected along the path (paragraph [0072]). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by Calafiore to have the grating depth is shallower for the gratings in the first region relative to the gratings in the second region along the propagation direction as taught by Melli for the purpose of having non-uniform diffraction efficiencies along a light propagation path such that uniform diffracted light can be achieved when light prorogates and is gradually deflected along the path.
Regarding claim 2 the combination of Calafiore as modified by Melli discloses the out-coupling DOE of claim 1, as set forth above. Calafiore further discloses the SRG in the out-coupling DOE is further configured to expand an exit pupil of the virtual images (necessarily follows since, see figure 3, 340 is expanded image light).
Regarding claim 3 the combination of Calafiore as modified by Melli discloses the out-coupling DOE of claim 1, as set forth above. Calafiore further discloses it is further comprising a third region (e.g. middle of figures 24 & 27) that is spatially disposed between the first region (e.g. left side of figures 24 & 27) and the second region (e.g. right side of figures 24 & 27), in which the third region comprises gratings (e.g. see figures 24 & 27) with a third refractive index that is between the first and second refractive indexes (necessarily follows given selective ion implantation seen in figures 22-27).
Regarding claim 4 the combination of Calafiore as modified by Melli discloses the out-coupling DOE of claim 3, as set forth above. Calafiore further discloses the refractive index of the gratings in the third region is variable based on spatial location of the gratings within the third region (necessarily follows given selective ion implantation seen in figures 22-27).
Regarding claim 5 the combination of Calafiore as modified by Melli discloses the out-coupling DOE of claim 1, as set forth above. Calafiore further discloses the first refractive index of the gratings (e.g. n1) in the first region is continuously variable between a lowest value for a first group of the gratings in the first region having farthest spatial separation from the second region and a highest value for a second group of the gratings in the first region having closest spatial separation from the second region (necessarily follows given selective ion implantation seen in figures 22-27).
Regarding claim 6 the combination of Calafiore as modified by Melli discloses the out-coupling DOE of claim 1, as set forth above. Calafiore further discloses the second refractive index (e.g. n2) of the gratings in the second region is continuously variable between a lowest value for a first group of the gratings in the second region having closest spatial separation from the first region and a highest value for a second group of the gratings in the second region having farthest spatial separation from the first region (necessarily follows given selective ion implantation seen in figures 22-27).
Regarding claims 8-11 the combination of Calafiore’s embodiment in figures 24 & 27 and Melli discloses the out-coupling DOE of claim 3, as set forth above.
Calafiore’s embodiment in figures 24 & 27 and Melli do not disclose or teach the gratings in the third region comprise two or more inkjet resin films having different refractive indexes, as recited in claim 8; or the two or more inkjet resin films are disposed on each other, as recited in claim 95; or the two or more inkjet resin films are configured in a one-dimensional or two-dimensional patterned array, as recited in claim 10; or the two or more inkjet resin films are at least partially merged, as recited in claim 11.
Calafiore further teaches (see column 3 lines 25-35 figures 8-10) a similar grating being formed from two resins (e.g. first material 808 & second material 908) with different refractive indices (column 8 line 67-column 9 line 1 “808 has a first refractive index, n1” & column 9 lines 17-19 “second material has a second refractive index, n2 … n2 is greater than the first refractive index n1”) arrayed on a substrate (see figure 9 & column 9 line 55 “pattern of drops varies in two dimensions”) and can be layered (column 9 lines 51-54 “In some embodiments, drops of the first material 808 are placed on drops of the first material 808 and/or drops of the second material 908 are placed on drops of the second material 908”) merged (see figure 10 & column 9 lines 55-57 “Drops of material are configured to blend so that refractive index changes smoothly”) for the purpose of creating a grating with a refractive index that varies in one or two dimensions for use in a virtual-reality system or augmented-reality system to provide angular selectivity from display to a user's eye (column 3 lines 34-38). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by the combination of Calafiore’s embodiment in figures 24 & 27 and Melli to have the gratings in the third region comprise two or more inkjet resin films having different refractive indexes, and the two or more inkjet resin films are layered, and the two or more inkjet resin films are configured in a one-dimensional or two-dimensional patterned array, and the two or more inkjet resin films are at least partially merged as further taught by Calafiore’s embodiment in figures 8-10 for the purpose of creating a grating with a refractive index that varies in one or two dimensions for use in a virtual-reality system or augmented-reality system to provide angular selectivity from display to a user's eye.
Regarding claim 21 the combination of Calafiore’s embodiment in figures 24 & 27 and Melli discloses the out-coupling DOE of claim 1 including the first region comprises first material having the first refractive index and the second region comprises second material having the second refractive index, as set forth above.
Calafiore’s embodiment in figures 24 & 27 and Melli do not disclose or teach the first and second materials are a first photocurable resins and a second photocurable resins, respectively, wherein the first photocurable resins are different from the second photocurable resins.
Calafiore’s embodiment in figures 8-10 further teaches the first and second materials are a first photocurable resins and a second photocurable resins (e.g. column 9 line 62-column 10 line 1 “the first material 808 and the second material 908 are imprinted and/or cured (e.g., crosslinked using heat and/or ultra-violet (UV) light)”), respectively, wherein the first photocurable resins are different from the second photocurable resins (inherent given different indexes, further column 10 lines 6-8 “the first material 808 could have different properties than the second material 908”) for the purpose of forming a continuous change in the refractive index using an inkjet process (column 9 line-15column 10 line 14). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by the combination of Calafiore’s embodiment in figures 24 & 27 and Melli to have the first and second materials are a first photocurable resins and a different second photocurable resins, respectively, as further taught by Calafiore’s embodiment in figures 8-10 for the purpose of forming a continuous change in the refractive index using an inkjet process.
Regarding claim 22 the combination of Calafiore’s embodiment in figures 24 & 27 and Melli discloses the out-coupling DOE of claim 1, as set forth above. Calafiore’s embodiment in figures 24 & 27 and Melli do not disclose or teach the first region and the second region comprise photocurable resins.
Calafiore’s embodiment in figures 8-10 further teaches the first and second materials are a first photocurable resins and a second photocurable resins (e.g. column 9 line 62-column 10 line 1 “the first material 808 and the second material 908 are imprinted and/or cured (e.g., crosslinked using heat and/or ultra-violet (UV) light)”) for the purpose of forming a variable refractive index grating using an inkjet process (column 9 line-15column 10 line 14). Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by the combination of Calafiore’s embodiment in figures 24 & 27 and Melli to have the first and second materials be photocurable resins as further taught by Calafiore’s embodiment in figures 8-10 for the purpose of forming a variable refractive index grating using an inkjet process.
Regarding claim 23 the combination of Calafiore and Melli discloses the out-coupling DOE of claim 1 including the first region having the first refractive index and the second region having the second refractive index different from the first refractive index, as set forth above.
Calafiore’s and Melli do not disclose or teach a first plurality of the gratings of the first region have the same first refractive index, and a second plurality of the gratings of the second region have the same second refractive index.
The combination of Calafiore and Melli discloses the claimed invention except for having more than one of the gratings in the first region have the same index and the more than one of the gratings in the second region have the same index. It would have been an obvious matter of design choice to have more than one of the gratings in each of the first and second regions have the same index since applicant has not disclosed that such a duplication solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with continuously varying indexes in the grating regions, as originally presented in claims 5-6. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have more than one grating duplicate the index in the first and second regions, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (1977); and further it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), see MPEP 2144.04. In this case, one would be motivated to have the same index to tailor the diffraction efficiency in that portion of the two regions, furthermore, the originally presented claims 5-6 indicate there are no unexpected results. Therefore, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the gratings in the out-coupling DOE as disclosed by the combination of Calafiore’s and Melli to have two or more gratings in each of the first and second regions have the same index for the purpose of tailoring the diffraction efficiency in those portion of the two regions, and since that mere duplication has no patentable significance unless a new and unexpected result is produced and originally presented claims 5-6 indicate there are no unexpected results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bhattacharya et al. “Effect of ion implantation on the refractive index of glass” Pramãna, Vol. 6, No 2, 1976, pp. 102-108; in regards to changes of the index of refraction in glass due to ion implantation.
Heidemann “Complex-refractive-index profiles of 4 MeV Ge ion-irradiation damage in silicon” Philosophical Magazine B, 1981, VOL. 44, No. 4, 465-485; in regards to changes of the index of refraction in silicon due to germanium ion implantation.
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.
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/George G. King/Primary Examiner, Art Unit 2872 April 22, 2026
1 Assumed that “spices” is a typographical error and “species” is meant.
2 It has been held that the presence of process limitations in a product claim, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to the product. In re Stephens 135 USPQ 656 (CCPA 1965). Furthermore, the patentability of a product does not depend upon its method of production. If the product in a product by process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed Cir 1985). See MPEP 2113.
3 This recitation in the preamble is directed to intended use of the device and has not been given any patentable weight since it has been held "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation" Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81, see MPEP 2111.02
4 This recitation in the preamble is directed to intended use of the device and has not been given any patentable weight since it has been held "where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation" Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81, see MPEP 2111.02
5 No patentable weight is given to claim 9, see 112 rejection above
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