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 .
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 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.
Election/Restrictions
Newly submitted claims 26-32 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: difference in the number of prisms, number of surfaces, connectivity thereof, or the optical effect of those features.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 26-32 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Amendment
Claims 13-32 are pending. Claims 13-15, 17, 19, and 20 stand amended. Claims 22-32 are newly presented. Of the newly presented claims, claims 26-32 are withdrawn as indicated above. Claims 1-12 were canceled by the amendment.
Response to Arguments
Applicant's arguments filed 5/9/2026 have been fully considered but they are not persuasive. Since, based on Applicant’s disclosure, the statutory class of prism module cannot be considered to include a display, the instant amendment must be considered as a statement of intended use, which matter is further detailed below with respect to 35 U.S.C. 112.
Therefore the rejection under 35 U.S.C. 102 is maintained with respect to the instant claim 13.
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.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 13, the instant claim is directed to a prism module, and requires “second light generated by a display”. Applicant’s specification discloses that the display is part of an optical system that also includes a prism module (¶34). It is not clear or definite to one of ordinary skill in the art as to whether a display component is positively recited or a statement of intended use. Since the statutory class is directed to a prism module that the specification indicates as separate from a display, the limitation is considered as intended use (note the allowable subject matter dependent claim 14’s statutory class from the 10/20/2023 Claims with the instant claim 13). Clarification is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Applicant’s admitted prior art disclosed by Liu (US 11953705 B2, effectively filed 4/15/2020).
Regarding claim 13, Liu discloses an Applicant’s admitted prior art prism module (Fig. 1, “PRIOR ART” having three prisms with at least three surfaces each; cf. Applicant’s Figure 6, reprinted below for convenience), comprising:
a first prism (16) comprising a first surface, a second surface and a third surface connected to each other (Fig. 1);
a second prism (15) comprising a fourth surface, a fifth surface and a sixth surface connected to each other wherein the fourth surface is disposed towards the second surface (Fig. 1);
a third prism (14) comprises a seventh surface and an eighth surface connected to each other, wherein the seventh surface is disposed opposite to the eighth surface and the eighth surface is disposed towards the fifth surface (Fig. 1);
wherein first light exits the first prism (16) through the first surface (upper right of Fig. 1), is sequentially reflected on the second surface (which faces the second prism), the third surface and the first surface (nominally indicated by 11), enters from the second surface of the first prism (which faces the fourth surface), exits the second prism through the fourth surface (the light exiting 16 and entering 15), is sequentially reflected on the fifth surface (which is shared by prism 14’s eighth surface as required) and the fourth surface (forming a right angle to the left before exiting prism 15 to the left), and enters from the sixth surface of the second prism (sequitur);
wherein second light (C) enters the third prism (14) through the seventh surface, exits from the eighth surface of the third prism (14) (Fig. 1), enters the second prism (15) through the fifth surface, is reflected on the fourth surface (at a right angle to the left), and exits from the sixth surface of the second prism (Fig. 1).
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However, Liu’s admitted prior art’s second light is not display light, and operates in reverse of the instant claim, such that first light (A) comes from the target object and exits to the eye from first prism (16); in other words, Liu’s admitted prior art does not explicitly show wherein first light enters the first prism (16) through the first surface (upper right of Fig. 1), is sequentially reflected on the second surface (which faces the second prism), the third surface and the first surface (nominally indicated by 11), exits from the second surface of the first prism (which faces the fourth surface), enters the second prism through the fourth surface (the light exiting 16 and entering 15), is sequentially reflected on the fifth surface (which is shared by prism 14 and prism 15) and the fourth surface (forming a right angle to the left before exiting prism 15 to the left), and exits from the sixth surface of the second prism (sequitur).
However, MPEP 2114 II. Indicates that "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In this case, the prior art differs from the instant claim solely on the basis of which direction light from the object illuminates the optical system, however the prisms themselves exhibit no structural difference from that disclosed by Liu.
Therefore the structure of the claim is anticipated by Applicant’s admitted prior art.
Allowable Subject Matter
Claims 22-25 allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claims 22, the independent claim was introduced to rewrite previously allowable dependent claims in independent form. The dependent claims 23-25 depend from an allowable claim and are therefore allowable.
Claims 14-21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 14, Liu teaches an optical device (Fig. 1, “PRIOR ART”), comprising: the prism module as claimed in claim 13;
an object lens unit (id. “In operation, a first light beam A emitted from an object (not shown) sequentially passes through the objective module”).
Liu does not explicitly show wherein, when entering the optical device, the first light passes through the object lens unit and enters the first prism through the first surface; an eyepiece unit wherein, after exiting from the sixth surface of the second prism, the first light and the second light pass through the eyepiece unit and exit from the optical device; wherein the first light and the second light are visible light; wherein the first light and the second light overlap when exiting from the sixth surface of the second prism; wherein central axes of the object lens unit and the eyepiece unit are in parallel and do not coincide.
Regarding claim 15, Liu teaches an optical device, comprising: the prism module as claimed in claim 13;
an object lens unit (id. “In operation, a first light beam A emitted from an object (not shown) sequentially passes through the objective module”).
Liu does not explicitly show wherein, when entering the optical device, the first light passes through the object lens unit and enters the first prism through the first surface; an eyepiece unit wherein, after exiting from the sixth surface of the second prism, the first light and the second light pass through the eyepiece unit and exit from the optical device; wherein the first light and the second light are visible light; wherein central axes of the object lens unit and the eyepiece unit are in parallel and do not coincide.
Regarding claim 16, Liu discloses the prism module as claimed in claim 13, but does not explicitly show further comprising: a fourth prism comprising a tenth surface, an eleventh surface and a twelfth surface connected to each other, wherein the tenth surface is disposed towards the ninth surface; wherein the fifth surface is disposed opposite to the fourth surface; wherein the third prism further comprises a ninth surface which is connected to the eighth surface and is disposed opposite to the eighth surface; wherein third light enters the fourth prism through the tenth surface, is sequentially reflected on the eleventh surface and the twelfth surface, exits from the tenth surface of the fourth prism, enters the third prism through the ninth surface, exits from the eighth surface of the third prism, enters the second prism through the fifth surface, exits from the fourth surface of the second prism, enters the first prism through the second surface, is sequentially reflected on the first surface, the third surface and the second surface, and exits from the first surface of the first prism.
Regarding claim 19, Liu discloses the prism module as claimed in claim 16, but does not explicitly show further comprising: a fifth prism comprising a thirteenth surface, a fourteenth surface and a fifteenth surface connected to each other; a sixth prism comprising a sixteenth surface and a seventeenth surface connected to each other wherein the sixteenth surface is disposed towards the fourteenth surface, and the seventeenth surface is disposed opposite to the sixteenth surface; a seventh prism comprises an eighteenth surface, a nineteenth surface and a twentieth surface connected to each other, wherein the eighteenth surface is disposed towards the seventeenth surface; wherein third light is reflected by a target object, enters the fifth prism through the thirteenth surface, is sequentially reflected on fourteenth surface, the fifteenth surface and thirteenth surface, exits from the fourteenth surface of the fifth prism, enters the sixth prism through the sixteenth surface, exits from the seventeenth surface of the sixth prism, enters the seventh prism through the eighteenth surface, is reflected on the nineteenth surface, and exits from the twentieth surface of the seventh prism; wherein the third light enters the fifth prism in a first direction and exits from the twentieth surface of the seventh prism in a second direction, and the first direction is opposite to the second direction.
Regarding claims 17, 18, 20, and 21, the dependent claims depend from a claim that recites allowable subject matter and therefore recite allowable subject matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached at 5712701284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/COLLIN X BEATTY/Primary Examiner, Art Unit 2872
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