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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 12 has been entered.
Response to Amendment
The Amendment filed August 12th, 2026 has been entered. The amendments were sufficient to overcome the 112(b) rejections of claims 1-6 and the 112(f) interpretations previously applied in the office action mailed May 15th, 2026.
Response to Arguments
Applicant's arguments filed August 12th, 2026 have been fully considered but they are not persuasive.
Regarding the 112(b) rejections, the amendments were sufficient to overcome the rejections of claims 1-6. However, the 112(b) rejection of claim 7 and its dependent claims 8-9 is maintained. It is still unclear if the light source irradiates light toward the beam splitter in the scenario where the light source is between the beam splitter and examinee’s eyeball; see 112(b) rejection below.
Regarding the 103 rejections, applicant’s arguments have been fully considered and are appreciated. Applicant argues that the combination of the beam splitter of Lee being incorporated into the device of Raffle would render Raffle’s light guide meaningless and would change the principle of operation of Raffle. However, the examiner respectfully disagrees. As can be seen in Fig. 1 of Raffle, the image output unit 128, the camera 124, and the light sources 134 of the camera are directly coupled to the light guide 102 and the beam splitter 112 is held within the light guide 112. One would retain the light guide of Raffle for the purpose of holding the beam splitter, the light sources, the camera, and the image output unit since these elements must necessarily be held in place in some way and the light guide already fulfills this purpose. Further, the proposed combination can still function with the polarization elements, regardless of whether the polarization elements are necessary or not. The incorporation of the beam splitter of Lee, which is not a polarization beam splitter, does not mean that the polarization function of Raffle ceases to be possible. Polarized light is still capable of passing through the optical system of the proposed combination. The principle of operation of Raffle is not changed. Examiner notes that since Raffle already discloses the light guide and even though Lee does not have the light guide, the combination is still fully operable with the light guide. Therefore, there does not need to be any further justification to retain the light guide; the light guide is already disclosed by the primary reference. It is further notes that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 7, the limitation “the light source of the camera is disposed on a surface of the first dummy optical system between the first dummy optical system and the camera or a surface of the beam splitter between the beam splitter and the examinee’s eyeball, and irradiates light toward the beam splitter” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear in the second case when the light source is disposed between the beam splitter and the examinee’s eyeball, if the light source still irradiates light toward the beam splitter or toward the examinee’s eyeball. As can be seen in Fig. 2B which shows the light source between the beam splitter and the examinee’s eyeball, light that is irradiated from this position can either go towards the beam splitter or towards the examinee’s eyeball. Considering the purpose of the light source is to irradiate the pupil of the examinee’s eye with near-infrared light, as stated in claim 1, it is assumed that when the light source is between the beam splitter and the examinee’s eyeball, the light source does not irradiate light toward the beam splitter. This is then additionally unclear because claim 1, upon which claim 7 is dependent, requires the beam splitter to reflect light output from the light source of the camera to the examinee’s eyeball. It is unclear how it is possible for the light source to be positioned between the beam splitter and the examinee’s eyeball and still fulfill this requirement.
For the purposes of examination, examiner assumes “the light source of the camera is disposed on a surface of the first dummy optical system between the first dummy optical system and the camera
Claims 8-9 are dependent on claim 7 and therefore inherit the same issues.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 2, the claim fails to further limit from claim 1 because all of the requirements of claim 2 are present in claim 1, on which claim 2 is dependent; claim 1 states “wherein the beam splitter comprises a first surface disposed in a direction facing the camera and the examinee's eyeball, and configured to reflect light output from the light source of the camera to the examinee's eyeball, and a second surface disposed in a direction facing the image output unit and the examinee's eyeball, and is configured to allow a portion of each of light output from the image output unit and light of a real world entering from the outside to enter the examinee's eyeball” which fully encompasses every limitation set forth in claim 2.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Raffle et al. (US 20130207887 A1), hereinafter Raffle, in view of Lee et al. (US 20200225464 A1), hereinafter Lee.
Regarding independent claim 1, Raffle discloses an augmented reality apparatus for examining an examinee's ocular dyskinesia1, the augmented reality apparatus comprising:
an image output unit (128; Fig. 1; ¶0015) that outputs light corresponding to an augmented reality image (¶0002);
a camera (124; Fig. 1; ¶0016) photographing the examinee's eyeball by outputting directing light in a near-infrared wavelength band output (¶0020) by a light source (134; Fig. 1; ¶0020) of the camera (124) (since the light source 134 works together with the camera 124 to perform eye tracking, it is considered a light source of the camera) to the examinee's eyeball and receiving light reflected from the examinee's eyeball (¶0020; Fig. 1);
a beam splitter (112; Fig. 1; ¶0016) which reflects or transmits light in a visible wavelength band (¶0015) output from the image output unit (128) or entering the examinee's eyeball from the outside (Fig. 1); light in the near-infrared wavelength band (¶0020) output from the light source of the camera (134) enters a pupil of the examinee (Fig. 1; ¶0020), wherein the beam splitter (112) comprises a first surface (Fig. 1) disposed in a direction facing the camera (124) and the examinee's eyeball (Fig. 1), and is configured to allow a portion of each of light output from the image output unit (128) and light of a real world entering from the outside to enter the examinee's eyeball (Fig. 1);
a first dummy optical system (side of 102 that is to the left of 112 in Fig. 1, i.e., “left 102”; Fig. 1; ¶0014) which is disposed between the camera (124) and the beam splitter (112) to extend an optical distance between the beam splitter (112) and the camera (124) (Fig. 1), wherein the first dummy optical system (left 102) has a length equal to or greater than twice a diameter of a lens (125; Fig. 1; ¶0016) in the camera (124) (Fig. 1), and reduces a size of noise (inherent given the structure and function);
a second dummy optical system (side of 102 that is to the right of 112 in Fig. 1, i.e., “right 102”; Fig. 1; ¶0014) which is disposed on a side surface opposite to a side surface of the beam splitter (112) where the first dummy optical system (left 102) is disposed (Fig. 1) to increase the angular range for examining the examinee's ocular dyskinesia2;
a control unit which controls the operation of the image output unit (128) and the camera (124) (inherent for there to be some control unit in order to be able to use the device; ¶0039); and
a power supply unit which supplies power so that each configuration in the augmented reality apparatus is capable of being operated (inherent for there to be some power supply unit in order to power the device; ¶0039).
Raffle does not disclose the beam splitter causes the light in the near-infrared wavelength band output from the light source of the camera to enter a pupil of the examinee, wherein the beam splitter is configured to reflect light output from the light source of the camera to the examinee’s eyeball, wherein the beam splitter comprises a second surface disposed in a direction facing the image output unit and the examinee’s eyeball, and wherein the first dummy optical system reduces a size of noise generated by the second surface and other noise.
However, it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950). One would have been motivated to move the light source 134 inside the light guide 102 to be placed before the beam splitter 112 in the optical path toward the eye for the purpose of making the device more compact and protecting the light source – resulting in the beam splitter (112) causing light in the near-infrared wavelength band output from the light source (134) of the camera (124) to enter a pupil of the examinee (Fig. 1) and wherein the beam splitter (112) is configured to reflect light output from the light source (134) of the camera (124) to the examinee’s eyeball (Fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raffle so that the beam splitter causes the light in the near-infrared wavelength band output from the camera to enter a pupil of the examinee for the purpose of making the device more compact and protecting the light source.
Further, Lee teaches a similar apparatus comprising an image output unit (710; Fig. 13; ¶0094) that outputs light corresponding to an augmented reality image (¶0094), a camera (1330; Figs. 13, 18; ¶0139, ¶0107; it is implicit that the image generator 1330 is also a camera due to ¶0107 where image generator 850 is stated to be a camera and ¶0139 where it is stated that light is sent to the image generator 1330), and a beam splitter (1320; Fig. 13; ¶0119), wherein the beam splitter (1320) comprises: a first surface (1420; Figs. 13, 14B, 18; ¶0126-¶0128) which is disposed in a direction facing the camera (1330) and the examinee's eyeball (Figs. 13, 14B); and a second surface (1410; Figs. 13, 14A, 18; ¶0126-¶0128) which is disposed in a direction facing the image output unit (710) and the examinee's eyeball (Figs. 13, 14A), and allows a portion of each of light output from the image output unit (710) and light of a real world entering from the outside to enter the examinee's eyeball (Figs. 17-18; ¶0136-¶0139). Further, it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950). One would be motivated to incorporate the beam splitter of Lee and rearrange the camera and image output unit to face the first and second surfaces as taught be Lee for the purpose of reflecting incident light beams in different directions and allowing light beams to be incident on the camera, image output unit, and eyeball without any additional components, thus reducing the overall size of the system (¶0121 of Lee). The combination of Raffle with Lee would result in the first dummy optical system (left 102 of Raffle) reducing a size of noise generated by the second surface (1410 of Lee) and other noise (inherent given the same structure and function).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raffle to incorporate the beam splitter of Lee for the purpose of reflecting incident light beams in different directions and allowing light beams to be incident on the camera, image output unit, and eyeball without any additional components, thus reducing the overall size of the system (¶0121 of Lee).
Regarding claim 2, Raffle in view of Lee discloses the augmented reality apparatus of claim 1, as set forth above. Raffle further discloses the beam splitter (112) comprises a first surface (Fig. 1) disposed in a direction facing the camera (124) and the examinee’s eyeball (Fig. 1) and allows a portion of each of light output from the image output unit (128) and light of a real world entering from the outside to enter the examinee's eyeball (Fig. 1). Raffle does not disclose the beam splitter is configured to reflect light output from the light source of the camera to the examinee’s eyeball, wherein the beam splitter comprises a second surface disposed in a direction facing the image output unit and the examinee’s eyeball.
However, it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950). One would have been motivated to move the light source 134 inside the light guide 102 to be placed before the beam splitter 112 in the optical path toward the eye for the purpose of making the device more compact and protecting the light source – resulting in the beam splitter (112) causing light in the near-infrared wavelength band output from the light source (134) of the camera (124) to enter a pupil of the examinee (Fig. 1) and wherein the beam splitter (112) is configured to reflect light output from the light source (134) of the camera (124) to the examinee’s eyeball (Fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raffle so that the beam splitter causes the light in the near-infrared wavelength band output from the camera to enter a pupil of the examinee for the purpose of making the device more compact and protecting the light source.
Further, Lee teaches the beam splitter (1320) comprises: a first surface (1420; Figs. 13, 14B, 18; ¶0126-¶0128) which is disposed in a direction facing the camera (1330) and the examinee's eyeball (Figs. 13, 14B); and a second surface (1410; Figs. 13, 14A, 18; ¶0126-¶0128) which is disposed in a direction facing the image output unit (710) and the examinee's eyeball (Figs. 13, 14A), and allows a portion of each of light output from the image output unit (710) and light of a real world entering from the outside to enter the examinee's eyeball (Figs. 17-18; ¶0136-¶0139). Further, it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950). One would be motivated to incorporate the beam splitter of Lee and rearrange the camera and image output unit to face the first and second surfaces as taught be Lee for the purpose of reflecting incident light beams in different directions and allowing light beams to be incident on the camera, image output unit, and eyeball without any additional components, thus reducing the overall size of the system (¶0121 of Lee).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raffle to incorporate the beam splitter of Lee for the purpose of reflecting incident light beams in different directions and allowing light beams to be incident on the camera, image output unit, and eyeball without any additional components, thus reducing the overall size of the system (¶0121 of Lee).
Regarding claim 3, Raffle in view of Lee discloses the augmented reality apparatus of claim 1, as set forth above. Raffle further discloses the image output unit (128) is disposed vertically3 above the beam splitter (112) (the image output unit sends light to the beam splitter, and a direct line can be drawn between the image output unit and the beam splitter, therefore it meets the limitation). Further, the combination of Raffle in view of Lee as stated above would necessarily result in this configuration in order for the device to work.
Regarding claim 4, Raffle in view of Lee discloses the augmented reality apparatus of claim 1, as set forth above. Raffle further discloses the camera (124) is disposed on a side surface far from the beam splitter (112) of the first dummy optical system (left 102) (Fig. 1).
Regarding claim 5, Raffle in view of Lee discloses the augmented reality apparatus of claim 1, as set forth above. Raffle further discloses the camera (124) receives light in the near-infrared wavelength band (¶0020).
Regarding claim 6, Raffle in view of Lee discloses the augmented reality apparatus of claim 1, as set forth above. Raffle further discloses a second beam splitter (113; Fig. 1; ¶0017) disposed at an intersection point of a path of light output from the image output unit (128) and the path of light towards the camera (124) (Fig. 1). Raffle does not disclose this is the same beam splitter.
However, Lee teaches a similar apparatus comprising an image output unit (710; Fig. 13; ¶0094) that outputs light corresponding to an augmented reality image (¶0094), a camera (1330; Figs. 13, 18; ¶0139, ¶0107; it is implicit that the image generator 1330 is also a camera due to ¶0107 where image generator 850 is stated to be a camera and ¶0139 where it is stated that light is sent to the image generator 1330), and a beam splitter (1320; Fig. 13; ¶0119), wherein the beam splitter (1320) is disposed at an intersection point of a path of light output from the image output unit (710) and the optical path towards the camera (1330) (Fig. 13). Further, it has been held that making in one piece an article which has formerly been formed in multiple pieces involves only routine skill in the art. In re Larson 144 USPQ 347, 349, (CCPA 1965).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raffle to incorporate the beam splitter of Lee for the purpose of reflecting incident light beams in different directions and allowing light beams to be incident on the camera, image output unit, and eyeball without any additional components, thus reducing the overall size of the system (¶0121 of Lee) and since it has been held that making in one piece an article which has formerly been formed in multiple pieces involves only routine skill in the art.
Regarding claim 7, Raffle in view of Lee discloses the augmented reality apparatus of claim 2, as set forth above. Raffle does not disclose the light source of the camera is disposed on a surface of the first dummy optical system between the first dummy optical system and the camera or a surface of the beam splitter between the beam splitter and the examinee’s eyeball, and irradiates light toward the beam splitter.
However, Raffle teaches in an alternate embodiment (Fig. 3) a light source (302; Fig. 3; ¶0031) disposed on a surface of the second dummy optical system (right 102), and irradiate light toward the beam splitter (112). It has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950). Whether the light source is positioned facing the eyeball as shown in Fig. 2, on the surface of the first dummy optical system, or on the surface of the second dummy optical system is functionally equivalent.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raffle to have the light source of the camera disposed on the surface of the first dummy optical system between the camera and the first dummy optical system and irradiating light toward the beam splitter since it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950).
Regarding claim 8, Raffle in view of Lee discloses the augmented reality apparatus of claim 7, including the light source of the camera being disposed between the camera and the first dummy optical system and the first surface configured to reflect light output from the light source of the camera, as set forth above. This configuration necessarily results in a configuration wherein the light source of the camera (134) irradiates light toward the first surface (Fig. 1 of Raffle).
Regarding claim 9, Raffle in view of Lee discloses the augmented reality apparatus of claim 7, as set forth above. Raffle further discloses the light source of the camera is disposed biased in a preset direction (Fig. 1; ¶0020).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 9-4.
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/NATASHA NIGAM/Examiner, Art Unit 2872 September 21st, 2026
/George G. King/Primary Examiner, Art Unit 2872
1 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. Further, any device that can perform eye tracking can perform this intended use, such as the device of Lee in view of Modrzejewska and further in view of McGrath.
2 A claim containing 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” if the prior art apparatus teaches all the structural limitations of the claim. Because the prior art device meets all the structural limitations of the claimed apparatus it therefore also meets this limitation. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP § 2114.
3 Regarding the term “vertically” it is not interpreted to mean a particular direction since no frame of reference is established.
Prosecution Insights