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 filed 06/12/2026 have been fully considered but they are not persuasive.
Regarding the 103 rejections of claims 1-20, applicant’s arguments have been fully considered and are appreciated. However, the examiner respectfully disagrees.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues the combination of Watson and Tung is improper because the technical problem solved by Tung is completely different from that in the application and a person with ordinary skill in the art lacks motivation for combination. Specifically, applicant argues that Tung’s technical objective was to reduce the reflection of stray light parallel to the optical axis, whereas the core technical problem of the instant application is to deal with stray light perpendicular to the optical axis. The examiner disagrees that the technical problem solved by Tung is completely different than that of the instant application – both aim to reduce reflections of stray light using microstructures arranged around an aperture to intercept the stray light. Further, the primary reference, Watson, already discloses a structure which is capable of dealing with stray light perpendicular to the optical axis (Fig. 7). Examiner further notes: "The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below)."
Applicant argues Watson fails to teach the alternate ring arrangement and the forced modification would disrupt its principle of operation and geometry. Specifically, applicant argues that arranging the retroreflectors into alternate adjacent rings would distort the equilateral triangle base and therefore eliminate their retroreflective optical function, thereby undermining Watson’s structure and principle of operation. Examiner disagrees that this arrangement would eliminate the retroreflective optical function. Watson’s retroreflective optical function performs a reduction of stray light by using a pyramid-shaped reflector to reflect the stray light, which is the same as that of the instant application. Clearly, since the invention of the instant application is functional, Watson’s pyramid-shaped retroreflectors arranged in this shape must necessarily function to reflect stray light as well. Examiner further notes it has been held that a mere change in shape of an element is generally recognized as being with in the level of ordinary skill in the art when the change in shape is not significant to the function of the combination. In re Dailey 149 USPQ 47 (CCPA 1966). The function of the combination is to reflect stray light, which is the same in either arrangement of the retroreflectors. Further, it is possible to arrange the retroreflectors into a ring without distorting the shape of the retroreflectors. Examiner notes 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). It is further noted that “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” and in addition it has been further held that "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle" and taking into account "the inferences and creative steps that a person of ordinary skill in the art would employ." KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007), see MPEP 2141.
Applicant argues the geometric features are not a simple “instead” or a ring arrangement. Specifically, applicant argues that Watson’s alternate mesh cannot be forced into a ring such that all extension lines are aligned with the central axis due to incompatibility from converting a linear mesh to concentric rings. Examiner notes again that 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). It is further noted that “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” and in addition it has been further held that "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle" and taking into account "the inferences and creative steps that a person of ordinary skill in the art would employ." KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007), see MPEP 2141. It is obvious that one could look at the retroreflector shape of Watson and the ring arrangement of Tung and choose to combine these features, using the inferences and creativity that a person of ordinary skill in the art would have.
Regarding the 103 rejections of claims 15-17, applicant’s arguments have been fully considered and are appreciated. However, the examiner respectfully disagrees.
Applicant argues the variables of claims 15-17 are not recognized as result-effective variables and therefore one of ordinary skill in the art lacks direction and motivation to conduct routine experiments to determine the optimal range. However, each of these ranges pertain to properties of the size, shape, and position of a mirror. Given the laws of physics and utilizing basic concepts such as ray tracing, it is known that adjusting the size, shape, and position of a mirror would affect how much light is reflected, which portion of incident light is reflection, and the direction in which the light is reflected. See OpenStax1 for a description of reflection and mirror principles. Adjusting parameters such as the height, side length, and magnitude of the angle of the base, are simply adjusting the angle at which light is being reflected and how much light/the portion of incident light that is being reflected, which are result-effective variables. The height-to-base angle relationship, side length-to-base angle relationship, etc. would necessarily follow from adjusting these parameters.
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) 1-6 and 8-20 are rejected under 35 U.S.C. 103 as being unpatentable over Watson et al. (US 20060119919 A1), hereinafter Watson, in view of Tung et al. (US 20240241353 A1), hereinafter Tung.
Regarding independent claim 1, Watson discloses an optical element for multiple reflections of stray light, comprising:
a plurality of microstructures (106; Fig. 7; ¶0034) around a central axis of the optical element (Fig. 7), wherein each of a microstructure (106) comprises a first reflective surface and a second reflective surface (any two faces of 106; Fig. 7; ¶0034) which are in contact and has a connection line (Fig. 7), wherein the connection line is a boundary line between the first reflective surface and the second reflective surface (Fig. 7), and
wherein the plurality of microstructures (106) are arranged in a plurality of lines adjacent to each other (Fig. 7), and the plurality of microstructures (106) of two adjacent lines among the plurality of lines are alternately arranged with each other (Fig. 7; ¶0034).
Watson does not disclose an extension line of the connection line passes through the central axis, wherein the plurality of microstructures are arranged in a plurality of rings adjacent to each other, and the plurality of microstructures of two adjacent rings among the plurality of rings are alternately arranged with each other.
However, Tung teaches a similar optical element comprising a plurality of microstructures (150; Figs. 1F-1I; ¶0061) around a central axis of the optical element (Figs. 1F-1I; ¶0060-¶0061), wherein each of a microstructure (150) comprises a first reflective surface and a second reflective surface (both faces of each microstructure 150; Figs. 1F, 1I) which are in contact and has a connection line (Figs. 1F, 1I), wherein the connection line is a boundary line between the first reflective surface and the second reflective surface (Figs. 1F-1I), an extension line of the connection line passes through the central axis (Figs. 1F-1I; ¶0060-¶0061), and wherein the plurality of microstructures (150) are arranged in a plurality of rings adjacent to each other (Figs. 1F-1I).
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 Watson to have the plurality of microstructures be arranged in a plurality of rings instead of a plurality of lines and therefore have an extension line of the connection line pass through the central axis as taught by Tung for the purpose of effectively reducing the reflecting of the stray light by arranging the microstructures orthogonally to the optical axis (¶0060-¶0061 of Tung).
Regarding claim 2, Watson in view of Tung discloses the optical element according to claim 1, as set forth above. Watson further discloses the microstructure (106) is substantially a pyramid2 (Fig. 7; ¶0034), further comprising: a base (bottom surface of each microstructure, in contact with the plate 104; Fig. 7) in contact with the first reflective surface and the second reflective surface, and an apex, wherein the connection line passes through the apex (Fig. 7).
Regarding claim 3, Watson in view of Tung discloses the optical element according to claim 2, including the plurality of microstructures being arranged in a plurality of rings, as set forth above. Watson further discloses wherein the base comprises an angle, less than 90° (as each microstructure 106 is shown in Fig. 7 to be equilateral, the angle is assumed to be around 60°). Watson does not disclose an extension line of an angle bisector of the angle passes through the central axis.
However, Tung teaches microstructure (150) has a base (Figs. 1F-1I), wherein the base comprises an angle, less than 90° (Figs. 1F-1I), and an extension line of an angle bisector of the angle passes through the central axis (Figs. 1F-1I). This is a result of arranging the microstructures in a ring shape, and having an extension line of an angle bisector of the angle passes through the central axis would be a natural result of arranging the plurality of microstructures in a plurality of rings instead of a plurality of lines.
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 Watson to have the plurality of microstructures be arranged in a plurality of rings instead of a plurality of lines and therefore have an extension line of an angle bisector of the angle pass through the central axis as taught by Tung for the purpose of effectively reducing the reflecting of the stray light by arranging the microstructures orthogonally to the optical axis (¶0060-¶0061 of Tung).
Regarding independent claim 4, Watson discloses an optical element for multiple reflections of stray light, comprising:
a plurality of microstructures (106; Fig. 7; ¶0034) around a central axis of the optical element (Fig. 7), wherein each of a microstructure (106) comprises:
a base (bottom surface of each microstructure, in contact with the plate 104; Fig. 7);
an apex (Fig. 7); and
a first reflective surface and a second reflective surface (any two faces of 106; Fig. 7; ¶0034) which are in contact with each other being formed from the base to the apex (Fig. 7), and having a connection line (Fig. 7), wherein the connection line is a boundary line between the first reflective surface and the second reflective surface (Fig. 7), and orthographic projections of the first reflective surface and the second reflective surface on the base form an angle (Fig. 7),
wherein the plurality of microstructures (106) are arranged in a plurality of lines adjacent to each other (Fig. 7), and the plurality of microstructures (106) of two adjacent lines among the plurality of lines are alternately arranged with each other (Fig. 7; ¶0034).
Watson does not disclose an extension line of an angle bisector of the angle passes through the central axis, wherein the plurality of microstructures are arranged in a plurality of rings adjacent to each other, and the plurality of microstructures of two adjacent rings among the plurality of rings are alternately arranged with each other.
However, Tung teaches a similar optical element comprising a plurality of microstructures (150; Figs. 1F-1I; ¶0061) around a central axis of the optical element (Figs. 1F-1I; ¶0060-¶0061), wherein each of a microstructure (150) comprises a first reflective surface and a second reflective surface (both faces of each microstructure 150; Figs. 1F, 1I) which are in contact and has a connection line (Figs. 1F, 1I), wherein the connection line is a boundary line between the first reflective surface and the second reflective surface (Figs. 1F-1I), and orthographic projections of the first reflective surface and the second reflective surface on the base form an angle (Figs. 1F-1I), and an extension line of an angle bisector of the angle passes through the central axis (Figs. 1F-1I; ¶0060-¶0061), and wherein the plurality of microstructures (150) are arranged in a plurality of rings adjacent to each other (Figs. 1F-1I).
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 Watson to have the plurality of microstructures be arranged in a plurality of rings instead of a plurality of lines and therefore have an extension line of an angle bisector of the angle pass through the central axis as taught by Tung for the purpose of effectively reducing the reflecting of the stray light by arranging the microstructures orthogonally to the optical axis (¶0060-¶0061 of Tung).
Regarding claim 5, Watson in view of Tung discloses the optical element according to claim 4, including the plurality of microstructures being arranged in a plurality of rings instead of lines, as set forth above. Watson further discloses a spacing between the base of the plurality of microstructures (106) is located in a same line/ring in the plurality of lines/rings is smaller than a shortest side length of the base (Fig. 7).
Regarding claim 6, Watson in view of Tung discloses the optical element according to claim 4, as set forth above. Neither Watson nor Tung explicitly disclose a reflectivity of the microstructure is less than 5%.
However, it is implicit in Watson from ¶0026, which discusses the reflectance being reduced for another embodiment using channels instead of the pyramid shaped microstructures, that a reflectivity of the microstructure is less than 5%. Further, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Watson in view of Tung has all the claimed elements of an optical element comprising a plurality of microstructures arranged in a plurality of rings around a central axis, fulfilling the general conditions of the claim. One would be motivated to have the reflectivity of the microstructure be less than 5% for the purpose of substantially reducing or eliminating reflections (¶0026 of Watson).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the reflectivity of the microstructure be less than 5% for the purpose of substantially reducing or eliminating reflections (¶0026 of Watson).
Regarding claim 8, Watson in view of Tung discloses the optical element according to claim 4, as set forth above. Watson further discloses wherein the optical element is an annular optical element (aperture plate 104 with circular aperture opening 108; Fig. 7; ¶0034).
Regarding claims 9 and 18, Watson in view of Tung discloses the optical element according to claims 4 and 3, as set forth above. Watson further discloses the microstructure (106) satisfies a following relation equation: α+β ≦ 180°, α ≧ 90°, β < 90°, wherein α is an angle between the base and the central axis, and β is an angle between the base and the connection line (the base is orthogonal to the central axis, and the angle between the base and the connection line is between the angle between the base and the central axis; Fig. 7).
Regarding claims 10 and 19, Watson in view of Tung discloses the optical element according to claims 4 and 3, as set forth above. Watson further discloses the microstructure (106) satisfies a following relation equation: 90° ≦ α ≦ 135°, wherein α is an angle between the base and the central axis (the base and the central axis are orthogonal to each other; Fig. 7), and an angle difference between the base of each of the plurality of microstructures is less than or equal to 5° (each microstructure 150 is the same shape and are disposed directly next to each other, therefore the angle difference between the base of each is 0°; Fig. 7).
Regarding claim 11, Watson in view of Tung discloses the optical element according to claim 4, as set forth above. Watson further discloses the microstructure (106) satisfies a following relation equation: 90° ≦ α ≦ 135°, wherein α is an angle between the base and the central axis (the base and the central axis are orthogonal to each other; Fig. 7), and a difference between a maximum length of the base of each of the plurality of microstructures is less than or equal to 5% (each microstructure 150 is the same shape and are disposed directly next to each other, therefore the maximum length difference between the base of each is 0°; Fig. 7).
Regarding claim 12, Watson in view of Tung discloses the optical element according to claim 4, as set forth above. Watson further discloses a shape of the base is substantially a triangle (Fig. 7; ¶0034).
Regarding claim 13, Watson in view of Tung discloses the optical element according to claim 4, as set forth above. Watson further discloses wherein the microstructure (106) satisfies a following relation equation: 55° ≦ θ ≦ 65°, wherein θ is a magnitude of the angle of the base (as each microstructure 106 is shown in Fig. 7 to be equilateral, the angle is assumed to be around 60°).
Regarding claim 14, Watson in view of Tung discloses the optical element according to claim 4, as set forth above. Neither Watson nor Tung disclose the microstructure satisfies a following relation equation: 35° ≦ θ ≦ 45°, wherein θ is a magnitude of the angle of the base (although it can be implied from Fig. 1I of Tung).
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Watson in view of Tung has all the claimed elements of an optical element comprising a plurality of microstructures arranged in a plurality of rings around a central axis, fulfilling the general conditions of the claim. One would be motivated to have 35° ≦ θ ≦ 45° for the purpose of substantially reducing or eliminating residual reflections (¶0026 of Watson).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the microstructure to satisfy 35° ≦ θ ≦ 45° for the purpose of substantially reducing or eliminating residual reflections (¶0026 of Watson).
Regarding claim 15, Watson in view of Tung discloses the optical element according to claim 4, as set forth above. Neither Watson nor Tung explicitly disclose the microstructure satisfies a following relation equation: 0.45 μm/degrees ≦ H/θ ≦9 .1 μm/degrees, wherein H is a vertical height from the base to the apex, and θ is a magnitude of the angle of the base.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Watson in view of Tung has all the claimed elements of an optical element comprising a plurality of microstructures arranged in a plurality of rings around a central axis, fulfilling the general conditions of the claim. One would be motivated to have 0.45 μm/degrees ≦ H/θ ≦9 .1 μm/degrees for the purpose of substantially reducing or eliminating residual reflections (¶0026 of Watson).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the microstructure to satisfy 0.45 μm/degrees ≦ H/θ ≦9 .1 μm/degrees for the purpose of substantially reducing or eliminating residual reflections (¶0026 of Watson).
Regarding claim 16, Watson in view of Tung discloses the optical element according to claim 4, as set forth above. Neither Watson nor Tung explicitly disclose the microstructure satisfies a following relation equation: 0.45 μm/degrees ≦ L/θ ≦ 9.1 μm/degrees, wherein L is a shortest side length of the base, and θ is a magnitude of the angle of the base.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Watson in view of Tung has all the claimed elements of an optical element comprising a plurality of microstructures arranged in a plurality of rings around a central axis, fulfilling the general conditions of the claim. One would be motivated to have 0.45 μm/degrees ≦ L/θ ≦ 9.1 μm/degrees for the purpose of substantially reducing or eliminating residual reflections (¶0026 of Watson).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the microstructure to satisfy 0.45 μm/degrees ≦ L/θ ≦ 9.1 μm/degrees for the purpose of substantially reducing or eliminating residual reflections (¶0026 of Watson).
Regarding claims 17 and 20, Watson in view of Tung discloses the optical element according to claims 4 and 3, as set forth above. Neither Watson nor Tung explicitly disclose the microstructure satisfies a following relation equation: 0.6 ≦ H/L ≦ 1.0, wherein H is a vertical height from the bottom to the apex, and L is a shortest side length of the base.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Watson in view of Tung has all the claimed elements of an optical element comprising a plurality of microstructures arranged in a plurality of rings around a central axis, fulfilling the general conditions of the claim. One would be motivated to have 0.6 ≦ H/L ≦ 1.0 for the purpose of substantially reducing or eliminating residual reflections (¶0026 of Watson).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the microstructure to satisfy 0.6 ≦ H/L ≦ 1.0 for the purpose of substantially reducing or eliminating residual reflections (¶0026 of Watson).
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Watson (US 20060119919 A1) in view of Tung (US 20240241353 A1) and further in view of Liu et al. (US 20230367097 A1), hereinafter Liu.
Regarding claim 7, Watson in view of Tung discloses the optical element according to claim 4, as set forth above. Neither Watson nor Tung disclose the optical element is a lens barrel.
However, Liu teaches a similar optical element comprising a plurality of microstructures (103; Fig. 2a; ¶0022) comprising a base and an apex (Figs. 2a, 3-4), wherein the plurality of microstructures (103) are arranged in a plurality of rings (Figs. 2a, 4) adjacent to each other (Figs. 2a, 4), and further teaches the optical element is a lens barrel (11; Fig. 2a; ¶0022).
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 the optical element be a lens barrel for the purpose of changing the scattering distribution characteristics of the lens barrel surface to achieve the effect of suppressing stray light (¶0022 of Liu).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATASHA NIGAM/Examiner, Art Unit 2872 July 30th, 2026
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872
1 Urone, Paul Peter, and Roger Hinrichs. “16.1 Reflection - Physics.” OpenStax, OpenStax, 26 Mar. 2020, openstax.org/books/physics/pages/16-1-reflection.
2 A pyramid is being interpreted according to its general definition, wherein a pyramid is defined as a structure whose visible surfaces are triangular and converge at the top, regardless of the number of sides of the base. Therefore, while a pyramid is most commonly thought of as a square pyramid, a triangular pyramid also reads on the limitation.
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