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:
This requirement is presented formally in response to a telephone election, discussed below.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-4, drawn to a prism module having a first design, mode of operation, or effect as claimed, classified in G02B 23/04, G02B 5/04.
II. Claim 5-8, drawn to a prism module having a second design, mode of operation, or effect as claimed, classified in G02B 23/02, G02B 5/04.
III. Claim 11, drawn to a prism module having a third design, mode of operation, or effect as claimed, classified in G02B 23/02, G02B 5/04.
IV. Claim 12, drawn to a prism module having a fourth design, mode of operation, or effect as claimed, classified in G02B 23/02, G02B 5/04.
V. Claims 13-21, drawn to a prism module having a fifth design, mode of operation, or effect as claimed, classified in G02B 23/04, G02B 5/04.
The inventions are independent or distinct, each from the other because:
Inventions I, II, III, IV, and V are directed to related prism modules. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed differ based on the number of prisms, number of surfaces, films, and the optical effect of those features, e.g. how the prism module’s structure affects incoming light. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The detailed and complex arrangement of multiple prisms, their multiple surfaces, and their optical effects concerning the manner and number of reflections on or through (or not) constitute distinct and divergent fields of search such that each is not likely to result in finding art pertinent to the other inventions.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these 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.
During a telephone conversation discussing the different operations of the prism modules claimed with Mr. Daniel McClure on 2/5/2025, a provisional election was made without traverse to prosecute the invention of Group V, claims 13-21. Affirmation of this election must be made by applicant in replying to this Office action. Accordingly, claims 1-12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Disposition of the Claims
Claims 1-21 are pending. Claims 1-12 are withdrawn from consideration. Claims 13-21 are examined for patentability.
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.
Claims 19-21 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 19, the parent claim 13 recites the limitation "a third prism", while the instant claim recites “a fifth prism”, “a sixth prism”, and “a seventh prism”. It is not clear or definite to one of ordinary skill in the art as to whether a fourth prism is required. However, claim 16 recites a fourth prism, without further recitation of a fifth, sixth, or seventh; therefore, from context, it is presumed for purposes of examination that claim 19 should depend from claim 16. The dependent claims do not remedy the deficiency of their parent and therefore inherit it.
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 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 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;
a display (12) configured to generate the second light (C. 1, ll. 14-55, “A second light beam B emitted by the OLED 12 is reflected by a reflecting mirror 17 and sequentially passes through the first prism 14, the second prism 15, the third prism 16 and the ocular module to provide an image information and a reticle (generated by the OLED 12) for user's view”);
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; a display (12) configured to generate the second light (C. 1, ll. 14-55, “A second light beam B emitted by the OLED 12 is reflected by a reflecting mirror 17 and sequentially passes through the first prism 14, the second prism 15, the third prism 16 and the ocular module to provide an image information and a reticle (generated by the OLED 12) for user's view”);
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, and generally disclose Schmidt-Pechan type prism systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLLIN X BEATTY whose telephone number is (571)270-1255. The examiner can normally be reached M - F, 10am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Pham can be reached on 5712723689. 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