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 .
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 6-14 and 16 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Arribio (US 2023/0340286).
The applied reference has a common assignee and inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Arribio discloses a sol gel technique used to form a variable refractive index thin film that is adapted, according to certain embodiments, to fill gaps and planarize a structured substrate. (Para, 0026). Arribio discloses the sol gel derived thin film may include a phase having the formula SnO(n)X(m) (X=F, Cl, Br, I) where the n-m ratio may be varied across one or more dimensions of the thin film (i.e., length and/or width) such that the refractive index is locally defined without affecting the thin film’s transparency and recessed-feature fill performance. (Para, 0027). Arribio discloses a tin oxyhalide phase may be stoichiometric or non-stoichiometric. (Para, 0027). Arribio further explains a SnO(n)Cl(m)-containing thin film may be formed using a non-hydrolytic sol gel technique, where the Sn valence and O:Cl ratio may be independently controlled upon annealing by the choice and local concentration of solvent. (Para, 0028). Arribio discloses annealing may include thermal annealing at a temperature up to approximately 300° C. (Para, 0028). Arribio discloses, suitable solvents include propylene glycol methyl ether (PGME), dipropylene glycol monomethyl ether (DPGME), propylene glycol methyl ether acetate, tripropylene glycol monomethyl ether, 1,3-dimethoxy-2-propanol, diethylene glycol (DEG), butyl lactate, propylene carbonate, isopropyl alcohol (IPA), ethanol, methanol, and water. (Para, 0029). Arribio explains when different (i.e., first and second) solvents are used, the solvents may be independently selected from the foregoing, including mixtures thereof in any suitable combination. (Para, 0029). These disclosures teach the limitation of claim 1, ‘ A sol-gel material comprising: a solution containing a tin dichloride salt; a solvent including at least one alcohol-containing solvent; …wherein the sol-gel material is configurable to form a coating characterized by a formula SnO(n)X(m), where n:m ratio and n-m values of the coating vary across regions of the coating as a result of thermal annealing…such that a refractive index of the coating varies across the regions of the coating.’ Moreover, these disclosures teach the limitations of claims 3-4.
Arribio discloses an example method may include forming a thin film that includes at least one Sn(II) halide precursor and at least one alcohol or glycol solvent, where the solvent composition and/or solvent concentration are varied across one or more areal dimensions of the thin film to produce variations in the thin film’s refractive index after annealing. (Para, 0033). This disclosure teaches the limitation of claim 7. The thin film may include a continuous SnO(n)X(m) layer (X= F, Cl, Br, I), where the refractive index variation mirrors the changes in the m:n ratio as well as the changes in solvent concentration and/or composition prior to annealing. (Para, 0033). Arribio explains that optical coatings within a tin oxyhalide system may be formed having a single refractive index value, high transparency, and good recessed-feature fill capability; however, the refractive index in such an annealed thin film may be spatially tuned over the range of approximately 1.6 to 2.1 with a local refractive index gradient of at least approximately 0.05 by controlling the solvent composition and concentration across one or more areal dimensions of the thin film. (Para, 0030). Arribio discloses, example methods of depositing a sol gel formulation onto a substrate include dip-coating, spray-coating, ink-jet printing, screen-printing, and contact-printing, although further deposition methods are contemplated. (P0041). These disclosures and the disclosures of Arribio as discussed above teach the limitations of claim 13, ‘A method comprising: depositing a sol-gel material layer on a substrate via spin-coating, ink-jet printing, dip-coating, spray-coating, screen-printing, contact-printing, or casting; …and thermally annealing the substrate, wherein, after the thermal annealing, the sol-gel material layer is characterized by a local refractive index modulation equal to or greater than about 0.1 and a refractive index varying in a range of 1.65-2.35 across regions of the sol-gel material layer.’
Arribio discloses example liquid solvents, which may be incorporated into a coating composition or subsequently deposited onto a coating, may include one or a mixture of more than one of propylene glycol methyl ether, dipropylene glycol monomethyl ether, propylene glycol methyl ether acetate, tripropylene glycol monomethyl ether, 1,3-dimethoxy-2-propanol, diethylene glycol, butyl lactate, propylene carbonate, isopropyl alcohol, methanol, and water. (Para, 0039). These disclosures and the disclosures of Arribio as discussed above teach the limitations of claim 14, ‘ The method of claim 13, wherein the sol-gel material layer comprises a sol-gel material comprising: a solution containing a tin dichloride salt; a solvent including at least one alcohol-containing solvent; …wherein the sol-gel material is configurable to form a coating characterized by a formula SnO(n)X(m), where n:m ratio and n-m values of the coating vary across regions of the coating as a result of…thermal annealing, such that a refractive index of the coating varies across the regions of the coating.’
Arribio discloses that in certain embodiments, in addition to a tin oxyhalide precursor and a liquid solvent, a sol gel formulation may include one or more additives, including stabilizers, acids, bases, peroxides, surfactants, cross-linkers, flexibilizers and toughening agents. (Para, 0040). This disclosures teaches the limitation of claim 1, ‘ A sol-gel material comprising: …and optionally a photo-acid generator or photo-acid…’ the limitation of claim 14, ‘ The method of claim 13, wherein the sol-gel material layer comprises a sol-gel material comprising: …and optionally a photo-acid generator or photo-acid…’ Arribio discloses, a stabilizer may include ethanolamine, diethanolamine, triethanolamine, an aliphatic amine, a diamine, a triamine, or a polyamine as well as one or a mixture of organic antioxidants and inorganic antioxidants. (Para, 0040). Arribio discloses in some embodiments, a sol gel formulation may include a secondary oxo-donor, such as a peroxide. (Para, 0040).
Arribio also discloses The following will provide, with reference to FIGS. 1-7, detailed descriptions of sol gel-derived thin films having a locally variable refractive index, including example methods of manufacture, and resulting structures, properties, and applications. (Para, 0046). The discussion associated with FIGS. 1-5 relates to sol gel techniques and related processes for forming variable index thin films, including variable index thin films within the SnOxCly system. (Para, 0046). Figures 3-5 illustrate various comparative examples such as Trials 1-22. Within these examples, UV and heat at various temperatures are used to anneal the sol-gel composition once applied to the substrate and also illustrates the varying refractive index of the film in various zones and the resulting absorption values. (Figure 3, Trials 1-4). These disclosures and the disclosures of Arribio as discussed above teach the limitation of claim 1, ‘ A sol-gel material comprising: …as a result of selective photo-excitation followed by blanket thermal annealing…’ the limitation of claim 13, ‘ A method comprising: … exposing a portion of the sol-gel material layer to light…’ and the limitations of claims 8-9, 11 and 16.
Arribio summarizes that from these various trials it is demonstrated that an inorganic thin film, such as one formed from a sol gel composition may have a locally defined (i.e., spatially defined) refractive index. (Para, 0075). Arribio discloses the thin films may be highly transparent (<0.1%/100 nm) and partially or fully amorphous and may include a local refractive index variability of at least approximately 0.05 within and over a range of approximately 1.6 to approximately 2.1. (Para, 0075). Such an inorganic thin film may be formed using a sol gel process where two or more sol gel compositions each including at least one tin(II) halide precursor and an alcohol or glycol solvent are co-deposited onto a substrate with spatial selectivity and annealed. (Para, 0075). These disclosures and the disclosures of Arribio as discussed above teach the limitations of claims 6 and 10.
Arribio discloses the various embodiments of the present disclosure may include or be implemented in conjunction with various types of artificial-reality systems. (Para, 0098). Arribio explains artificial reality is a form of reality that has been adjusted in some manner before presentation to a user, which may include, for example, a virtual reality, an augmented reality, a mixed reality, a hybrid reality, or some combination and/or derivative thereof and content may include completely computer-generated content or computer-generated content combined with captured (e.g., real-world) content. (Para, 0098). Arribio discloses, artificial-reality content may include video, audio, haptic feedback, or some combination thereof, any of which may be presented in a single channel or in multiple channels (such as stereo video that produces a three-dimensional (3D) effect to the viewer). (Para, 0098). Arribio discloses that in addition, artificial reality may also be associated with applications, products, accessories, services, or some combination thereof, that are used to, for example, create content in an artificial reality and/or are otherwise used in (e.g., to perform activities in) an artificial reality. (Para, 0098).
Arribio discloses, in addition to or instead of using display screens, some of the artificial-reality systems described herein may include one or more projection systems. (Para, 0116). Arribio discloses, display devices in augmented-reality system 600 and/or virtual-reality system 700 may include micro-LED projectors that project light (using, e.g., a waveguide) into display devices, such as clear combiner lenses that allow ambient light to pass through. (Para, 0116). Arribio explains the display devices may refract the projected light toward a user’s pupil and may enable a user to simultaneously view both artificial-reality content and the real world. (Para, 0116). Arribio discloses the display devices may accomplish this using any of a variety of different optical components, including waveguide components (e.g., holographic, planar, diffractive, polarized, and/or reflective waveguide elements), light-manipulation surfaces and elements (such as diffractive, reflective, and refractive elements and gratings), coupling elements, etc. (Para, 0116). Arribio discloses artificial-reality systems may also be configured with any other suitable type or form of image projection system, such as retinal projectors used in virtual retina displays. (Para, 0116). These disclosures teach the limitation of claim 12.
Therefore, claims
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arribio as applied to claims 1-4, 6-14 and 16 in paragraph 4 above, and further in view of Toriyama.
While the disclosures of Arribio as discussed above do teach acid as an optional component in the sol-gel composition discloses, the disclosures of Arribio still fall short of teaching and/or suggesting the limitation of claim 5, ‘ The sol-gel material of claim 1, wherein the photo-acid generator or photo-acid comprises at least one of a diarylsulfonium compound, a diazomethane compound, a bis(sulfonyl)diazomethane compound, a Diaryliodonium compound, a triarylselenonium compound, an arene ferrocene compound, or a sulfonic acid ester compound.’ However, the disclosures of Arribio further in view of the disclosures of Toriyama provides such teachings.
Toriyama discloses a methos of manufacturing an optical substrate and the optical substrate obtained. Toriyama discloses in this process it is allowable to use a photo-curable sol-gel material, other than using the sol-gel material which is cured by being heated. (Para, 0089). Toriyama explains that it is possible to adopt, for example, a method in which photo-acid generator such as hexafluorophosphate aromatic sulfonium salt which generates acid by light is used, or a method in which chemical modification (chelation) is caused by adding beta-diketone represented by acetylacetone to a sol solution (sol) and the chemical modification is removed by being irradiated with light. (Para, 0089). The disclosures of Arribio as discussed in paragraph 4 above further in view of these disclosures of Toriyama teaches and/or suggests the limitation of claim 5.
It would have been obvious to one of ordinary skill in the art at the time of filing of the present application by Applicant to modify the disclosures of Arribio further in view of the disclosures of Toriyama because both are directed to analogous methods of forming optical films and/or substrates using sol-gel compositions and Toriyama discloses the inclusion of photoacid can improve the method when forming fine patterns so that desired pattern results.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arribio as applied to claims 1-4, 6-14 and 16 in paragraph 4 above, and further in view of Nakamura (US 6632585).
The disclosures of Arribio as discussed above fail to teach and/or suggest the limitations of claim 15, ‘ The method of claim 13, wherein exposing the portion of the sol-gel material layer to light comprises: exposing the portion of the sol-gel material layer to a light source with an excitation wavelength >365 nm and power of ≤ 300 mW/cm2 for 0.001 to 300 seconds, such that photo-exposed areas have a lower refractive index value than non-exposed areas upon thermal annealing; or exposing the portion of the sol-gel material layer to an interference light pattern to create a holographic optical element within the sol-gel material layer upon thermal annealing.’ However, the disclosures of Arribio further in view of Nakamura provide such teachings.
Nakamura discloses a photosensitive composition for forming an optical device such as an optical waveguide. Nakamura discloses a process for fabricating a Brag diffraction grating in the optical waveguide of the present invention where the Bragg diffraction grating is formed from the photosensitive sol-gel liquid composition. Nakamura discloses that in forming this waveguide, a double-beam interference exposure method (holographic method) may be used to write a Bragg diffraction grating. (Col.13, 50-col.14, 10). Nakamura discloses a He-Cd laser (325 nm, 421 nm) and Ar laser (351 nm) may be used as the light source used for this exposure. (Col.13, 50-col.14, 10). Nakamura discloses exposure by an Ar ion laser (514.5 nm) may be made possible by using a sol-gel liquid composition having photosensitivity at a visible range and adding a visible light sensitizer. (Col.13, 50-col.14, 10). Nakamura explains that to produce an embedded or ridge type optical waveguide by light irradiation, a double-bond portion sufficient for holographic exposure for the formation of a diffraction grating must be left in the film by controlling irradiation energy. (Col.13, 50-col.14, 10). The disclosures of Arribio as discussed above further in view of these disclosures of Nakamura teach and/or suggest the limitations of claim 15.
It would have been obvious to one of ordinary skill in the art at the time of filing of the present application by Applicant to modify the disclosures of Arribio further in view of the disclosures of Nakamura because both are directed to analogous methods of forming optical films and/or substrates using sol-gel compositions and Nakamura discloses the process forms gratings that are easily incorporated into an optical device.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-16 of the present application are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-15 of co-pending Application No. 18/786347 (US 2025/0034404). Although the claims at issue are not identical, they are not patentably distinct from each other because both the recitations of claims 1-16 of the present application and the recitations of claims 1 and 5-15 of co-pending Application No. 18/786347 are directed to an analogous sol-gel material composition, which is incorporated into analogous optical coating layers which comprise sol-gel materials which are used in analogous methods where a sol-gel containing compositions is used to form an optical layer, having a varying refractive index across the layer by incorporating light exposure and/or annealing process steps. Moreover, the recitations of claims 1-16 of the present application fully encompass the recitations of claim 1 and 5-15 of co-pending US Patent Application No. 18/786347.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/CALEEN O SULLIVAN/Primary Examiner, Art Unit 2899
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