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 (i.e., changing from AIA to pre-AIA ) 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.
Response to Amendment
Applicant’s arguments with respect to claims 1, 10, 15 have been considered but are moot in view of the new ground(s) of rejection, as necessitated by amendment.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
a) reference character “10” has been used to designate both “substrate” (in Fig. 3) and “reflection layer” (in Fig. 3).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claims 1, 10, 15, the claim recites “the incident surface is configured to transmit a portion of invisible light and reflect another portion of invisible light…the exit surface is configured to transmit the portion of the invisible light transmitted from the incident surface” which, as per Applicant’s specification includes a description of Figures 3 and 4, however, given the associated description, appears inconsistent with how light reflects and transmits at interfaces1,2. Specifically, the light (LS…LS1…) interacting with the incident surface (111a) is shown as continuing straight, however light (Ls) should be refracted into the substrate (111) as per Snell’s Law3. Furthermore, Applicant’s specification shows the light transmitting through exit surface (111b), however such transmission is shown as straight through which again is inconsistent with Snell’s Law. Light emerging from an exit surface should again refract. Also, for the substrate (110) having a higher index of refraction than the surrounding medium (e.g. medium between prisms (111)), the exit surface would include the conditions for total internal reflection1 and thus Ls would fail to emerge from surface (111b). If substrate (110) has a lower index, then the incident surface (111a) would include total internal reflection conditions for Ls and therefore there would be no transmission.
Accordingly, the function of “configured to…” reflect and transmit is not described by Applicant’s specification to convey possession. Applicant has not provided the sufficient material and angular properties of the substrates/surfaces to show possession of the claimed reflection and transmission function of the device.
Claims 3-9, 11-14, 16-17 are rejected as dependent upon claims 1, 10, 15.
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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 1, 3-17 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.
As to claims 1, 10 ,15, the claim recites “a substrate…a reflection element…” and a description of how light behaves when interacting with the reflection element, however no light source is present. Additionally, as discussed above, the various transmission/reflection properties are not properly disclosed (MPEP 2173.05(g)). The metes and bounds are unclear since the claim appears to require nothing more than a prismatic sheet (e.g. Fig. 3) and how light would interact with the sheet given the same incident light (Ls). For purposes of compact prosecution, so long as the prior art teaches the structure of the reflection element (substrate, circular, etc.), such art necessarily meets the claim.
As to claims 1, 10, 15, the claim recites “invisible light” which is a relative term (MPEP 2173.05(b)). Invisible relative to what? For purposes of compact prosecution, Examiner will understand any light can be invisible.
As to claims 1, 10, 15, the claim recites “for eye tracking” which is a function that does not follow from the recited structure (MPEP 2173.05(g)). Claim 1 does not contain any light source or any computer or imaging to perform any eye tracking. Examiner will understand such language as intended use and not structurally or functionally limiting (MPEP 2173.05(g); 2112.01).
Claims 3-9, 11-14, 16-17 are rejected as dependent upon claims 1, 10, 15.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, 7 are rejected under 35 U.S.C. 102(a1) as being anticipated by Tenmyo (US 2006/0083508).
As to claim 1 (as understood), Tenmyo teaches an optical element (Tenmyo Fig. 2) comprising
a substrate layer (Tenmyo Fig. 2 - 4, 4a);
a reflection element (Tenmyo Fig 2 - 4b; Fig. 5), circular shaped on a surface of the substrate layer (Tenmyo Fig. 2 - 4b), the reflection element comprising a base and a plurality of reflection structures protruding from the base to a direction away from the substrate layer (Tenmyo Fig. 2 - 4b; Fig. 5 - 4g; Figs. 7A-E),
wherein the plurality of reflection structures is arranged along a perimeter direction of the base (Tenmyo Fig. 2 - 4b; Fig. 5 - 4g);
each of the plurality of reflection structures comprises an incident surface and an exit surface (Tenmyo Figs. 7A-E),
the incident surface configured to transmit a portion of invisible light and reflect another portion of the invisible light (Tenmyo Figs. 7A-7E; Figs. 9A-E; Examiner’s note: any light is necessarily “invisible” without context),
the exit surface configured to transmit the portion of the invisible light transmitted from the incident surface to the incident surface of an adjacent reflection structure of the plurality of reflection structures (Tenmyo Figs. 7A-7E; Figs. 9A-E; Examiner’s note: transmission/reflection of such surfaces is dictated by Fresnel equations4), thereby the portion of the invisible light is transmitted between each of the plurality of reflection structures successively, and the other portion of the invisible light exits away from the substrate layer (Tenmyo Figs. 7A-7E; Figs. 9A-E) for eye tracking (Examiner’s note: intended use).
As to claim 3, Tenmyo teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Tenmyo further teaches the incident surface intersects the exit surface (Tenmyo Figs. 7A-E).
As to claim 4, Tenmyo teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Tenmyo further teaches each of the plurality of reflection structures further comprises two side surfaces parallel to each other (Tenmyo Fig. 2), and the incident surface and the exit surface are between and intersect with the side surfaces (Tenmyo Fig. 2).
As to claim 5, Tenmyo teaches all the limitations of the instant invention as detailed above with respect to claim 4, and Tenmyo further teaches each of the plurality of reflection structures is serrated shaped (Tenmyo Fig. 2 - 4b; Figs. 7A-7E; Figs. 9A-E), and an edge of the incident surface connecting the base connects an edge of the exit surface of a next reflective structure connecting the base (Tenmyo Fig. 2 - 4b; Figs. 7A-E; Figs. 9A-E).
As to claim 7, Tenmyo teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Tenmyo further teaches each of the plurality of reflection structures is pyramid shaped and comprises a sharp point (Tenmyo Fig. 2; Figs. 7A-E; Figs. 9A-E).
Claims 1, 3-5 are rejected under 35 U.S.C. 102(a1) as being anticipated by Falicoff et al. (US 2002/0149924 - Falicoff; of record).
As to claim 1, Falicoff teaches an optical element (Falicoff Figs. 50-57) comprising
a substrate layer (Falicoff Fig. 50 - 501, 502; Fig. 55 - 556, 557);
a reflection element (Falicoff Fig. 50 - 503, 504; Fig. 51 - 512, 514; Fig. 57 - 551), circular shaped on a surface of the substrate layer (Falicoff Figs. 53, 54; para. [0285] - substrate and reflection elements are curved and thus “circular shaped”; Figs. 55-57), the reflection element comprising a base and a plurality of reflection structures protruding from the base to a direction away from the substrate layer (Falicoff Fig. 50 - 503, 504; Figs. 51-54; Figs. 55-57 - 551),
wherein the plurality of reflection structures is arranged along a perimeter direction of the base (Falicoff Figs. 53, 54; Figs. 55-57);
each of the plurality of reflection structures comprises an incident surface and an exit surface (Falicoff Fig. 50 - 503, 504; Figs. 51-57),
the incident surface configured to transmit a portion of invisible light and reflect another portion of the invisible light (Falicoff Figs. 50-57; para. [0092]),
the exit surface configured to transmit the portion of the invisible light transmitted from the incident surface to the incident surface of an adjacent reflection structure of the plurality of reflection structures (Falicoff Figs. 50-57), thereby the portion of the invisible light is transmitted between each of the plurality of reflection structures successively (Falicoff Figs. 50-57), and the other portion of the invisible light exits away from the substrate layer (Falicoff Figs. 50-57) for eye tracking (Falicoff Figs. 50-57; Examiner’s note: intended use).
As to claim 3, Falicoff teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Falicoff further teaches the incident surface intersects with the exit surface (Falicoff Figs. 50-57).
As to claim 4, Falicoff teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Falicoff further teaches each of the plurality of reflection surfaces further comprises two side surfaces parallel to each other (Falicoff Figs. 52-54; see below; Figs. 55-57 - 556, 557) and the incident surface and the exit surface are between and intersect with the side surface (Falicoff Figs. 52-54; see below; Figs. 55-57 - 556, 557).
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As to claim 5, Falicoff teaches all the limitations of the instant invention as detailed above with respect to claim 4, and Falicoff further teaches each of the plurality of reflection structures is serrated shaped (Falicoff Figs. 50-57), and an edge of the incident surface connecting the base connects an edge of the exit surface of a next reflection structure connecting the base (Falicoff Figs. 50-57).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Falicoff as applied to claim 4 above, and further in view of Yashiro (US 2010/0246210; of record).
As to claim 6, Falicoff teaches all the limitations of the instant invention as detailed above with respect to claim 4, and Falicoff further teaches each of the plurality of reflection structures is straight-bar shaped (Falicoff Figs. 50-57). Falicoff doesn’t specify each of the plurality of reflection structures further comprises a flat surface parallel to a plane defined by the substrate layer, each of the two side surfaces is between the flat surface and the base and intersects with the flat surface. In the same field of endeavor Yashiro teaches an optical element for emitting light having straight-bar shaped reflection structures and a substrate (Yashiro Fig. 4C) such structures having a flat surface parallel to a plane defined by the substrate layer, each of the two side surfaces is between the flat surface and the base and intersects with the flat surface (Yashiro Fig. 4C). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide such straight-bar type structure since, as taught by Yashiro, such structures allow for increasing the directivity and transmittance efficiency of the light (Yashiro para. [0032]).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Falicoff (cited above).
As to claim 7, Falicoff teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Falicoff further teaches each of the plurality of reflection structures and comprises a sharp point (Falicoff Figs. 50-57), but doesn’t show pyramids for the embodiments of Figures 50-57. In the embodiment of Figures 16A-19 and Figs. 21-23 Falicoff teaches pyramids (Fallicoff para. [0178], [0183]-[0186]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide such pyramid structures since, as taught by Falicoff, such light reflectors are well known in the art to reflect in multiple directions (Falicoff para. [0178], [0183]-[0186]).
As to claim 8, Falicoff teaches all the limitations of the instant invention as detailed above with respect to claim 7, and Falicoff further teaches each of the plurality of reflection structures comprises four oblique surfaces intersect on the sharp point (Falicoff Figs. 16A-19), the four oblique surfaces are flat surfaces (Falifcoff Figs. 16A-19), two of the four oblique surfaces intersect with the perimeter direction of the base and are the incident surface and the exit surface (Falicoff Figs. 16A-19), respectively, another two of the four oblique surfaces are parallel to the perimeter direction and are the two side surfaces, respectively (Falicoff Figs. 16A-19).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Falicoff as applied to claim 8 above, and further in view of Yashiro (US 2010/0246210; of record).
As to claim 9, Falicoff teaches all the limitations of the instant invention as detailed above with respect to claim 8, but doesn’t specify an edge of the incident surface connected to the base connects an edge of the exit surface of the reflection structure of an adjacent reflection structure of the plurality of reflection structures connected to the base, and an edge of each of the two side surfaces connected to base connects an edge of the two side surfaces of the reflection structure of an adjacent reflection structure of the plurality of reflection structures.
In the same field of endeavor Yashiro teaches providing an optical element with pyramid reflector/transmitters on a substrate such that an edge of the incident surface connected to the base connects an edge of the exit surface of the reflection structure of an adjacent reflection structure of the plurality of reflection structures connected to the base, and an edge of each of the two side surfaces connected to base connects an edge of the two side surfaces of the reflection structure of an adjacent reflection structure of the plurality of reflection structures (Yashiro Figs. 2B, 2C; Fig. 5). It would have been obvious to one of ordinary skill in the art to provide such pyramids since, as taught by Yashiro, such shapes are well known in the art for increasing the directivity and reliability of light emitted (Yashiro para. [0034]).
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Falicoff (cited above) in view of Deng (US 2024/0069256; of record).
As to claim 10, Falicoff teaches a method of making an optical element comprising providing an imprinting material on a surface of a substrate layer for form in imprinted layer (Falicoff Figs. 50-57);
imprinting a side of the imprinted layer away from the substrate layer to form a pattern of a reflection element (Falicoff Figs. 50-57);
wherein the reflection element (Falicoff Fig. 50 - 503, 504; Fig. 51 - 512, 514; Fig. 57 - 551), is circular shaped (Falicoff Figs. 53, 54; para. [0285] - substrate and reflection elements are curved and thus “circular shaped”; Figs. 55-57), and comprises a base and a plurality of reflection structures protruding from the base to a direction away from the substrate layer (Falicoff Fig. 50 - 503, 504; Figs. 51-54; Figs. 55-57 - 551),
the plurality of reflection structures are arranged along a perimeter direction of the base (Falicoff Figs. 53, 54; Figs. 55-57);
each of the plurality of reflection structures comprises an incident surface and an exit surface (Falicoff Fig. 50 - 503, 504; Figs. 51-57),
the incident surface configured to transmit a portion of invisible light and reflect another portion of the invisible light (Falicoff Figs. 50-57; para. [0092]),
the exit surface is configured to transmit the portion of the invisible light transmitted from the incident surface to the incident surface of an adjacent reflection structure of the plurality of reflection structures (Falicoff Figs. 50-57), thereby the portion of the invisible light is transmitted between each of the plurality of reflection structures successively (Falicoff Figs. 50-57), and the other portion of the invisible light exits away from the substrate layer (Falicoff Figs. 50-57) for eye tracking (Falicoff Figs. 50-57; Examiner’s note: intended use).
Falicoff doesn’t specify nanoimprinting. In the same field of endeavor Deng teaches nanoimprinting optical elements (Deng Figs. 6-29; para. [0032], [0105]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use nanoimprinting since, as taught by Deng, such methods are well known in the art for imprinting optical structures (Deng Figs. 6-29; para. [0002], [0027]).
As to claim 11, Falicoff in view of Deng teaches all the limitations of the instant invention as detailed above with respect to claim 10, and Deng further teaches the providing the imprinting material comprises a semi-transparent and semi-reflective imprinting material (Deng para. [0032], [0105]).
As to claim 12, Falicoff in view of Deng teaches all the limitations of the instant invention as detailed above with respect to claim 11, and Deng further teaches the providing the semi-transparent and semi-reflective material comprises providing titanium dioxide or photosensitive epoxy resin as an imprinting material (Deng para. [0105]).
As to claim 13, Falicoff in view of Deng teaches all the limitations of the instant invention as detailed above with respect to claim 10, and Deng further teaches the imprinting a side of the imprinted layer away from the substrate layer to form a nanoimprint pattern of a reflection element comprises: imprinting the imprinted layer by a template (Deng Fig. 14 - 31’, 33, 31, 33; para. [0124]), making a surface of the template with the nanoimprinted pattern in close contact with the side of the imprinted layer away from the base layer (Deng Fig. 14 - 31’, 33, 31, 33; para. [0124]), and applying pressure to the template to transfer the nanoimprinted pattern on the template to the imprinted layer (Deng Fig. 14 - 31’, 33, 31, 33; para. [0124]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Falicoff and Deng as applied to claim 13 above, and further in view of Zhang (US 2020/0400951; of record).
As to claim 14, Falicoff in view of Deng teaches all the limitations of the instant invention as detailed above with respect to claim 13, but doesn’t specify forming an anti-adhesion layer on the surface of the template is comprises before imprinting a side of the imprinted layer away from the substrate layer.
In the same field of endeavor Zhang teaches providing an anti-adhesion layer on the surface of the template is comprises before imprinting a side of the imprinted layer away from the substrate layer (Zhang Figs. 9A-D; para. [0109]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide the anti-adhesive layer since, as taught by Zhang, such layer allows for facilitating the separation of the template and formed device (Zhang para. [0109]).
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 2024/0085703 - Chen; of record) in view of Falicoff (cited above).
As to claim 15, Chen teaches a head mounted device (Chen Fig. 1; para. [0014]) comprising
a frame (Chen Fig. 1 - 12, 12T);
a light source on the frame for emitting invisible light (Chen Fig. 3 - 44; para. [0021]);
an optical element on the frame and on an optical path of the invisible light (Chen Fig. 3 - 46, 16, 40) and a substrate layer (Chen Fig. 3 - 16) and
a reflection element (Chen Fig. 9 - 62; para. [0030]) for eye tracking (Chen para. [0021]).
Chen does specify the details of the reflection element.
In the same field of endeavor Falicoff teaches
a substrate layer (Falicoff Fig. 50 - 501, 502; Fig. 55 - 556, 557);
a reflection element (Falicoff Fig. 50 - 503, 504; Fig. 51 - 512, 514; Fig. 57 - 551), circular shaped on a surface of the substrate layer (Falicoff Figs. 53, 54; para. [0285] - substrate and reflection elements are curved and thus “circular shaped”; Figs. 55-57), the reflection element comprising a base and a plurality of reflection structures protruding from the base to a direction away from the substrate layer (Falicoff Fig. 50 - 503, 504; Figs. 51-54; Figs. 55-57 - 551),
wherein the plurality of reflection structures is arranged along a perimeter direction of the base (Falicoff Figs. 53, 54; Figs. 55-57);
each of the plurality of reflection structures comprises an incident surface and an exit surface (Falicoff Fig. 50 - 503, 504; Figs. 51-57),
the incident surface configured to transmit a portion of invisible light and reflect another portion of the invisible light (Falicoff Figs. 50-57; para. [0092]),
the exit surface configured to transmit the portion of the invisible light transmitted from the incident surface to the incident surface of an adjacent reflection structure of the plurality of reflection structures (Falicoff Figs. 50-57), thereby the portion of the invisible light is transmitted between each of the plurality of reflection structures successively (Falicoff Figs. 50-57), and the other portion of the invisible light exits away from the substrate layer (Falicoff Figs. 50-57).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide such reflection element since, as taught by Falicoff, such structures are easy to manufacture elements that eject light along the desired direction and axis and create an area emitter (Falicoff para. [0281], [0003]).
As to claim 16, Chen in view of Falicoff teaches all the limitations of the instant invention as detailed above with respect to claim 15, and Falicoff further teaches the incident surface intersects with the exit surface (Falicoff Fig. 50 - 503, 504).
As to claim 17, Chen in view of Falicoff teaches all the limitations of the instant invention as detailed above with respect to claim 16, and Falicoff further teaches each of the plurality of reflection structures is serrated shaped, straight-bar shaped, or pyramid shaped (Falicoff Figs. 16A-19; Figs. 50-57).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Patent Documents: Cited for showing additional disclosed and claimed features including the pyramid shapes, circular element, and reflection/transmission surfaces and behaviors
Locke et al. (US 10,752,040; 2019/0358989); Lee (US 9,746,603; 2015/0029741); McGaffigan (US 6,031,958); Baek et al. (US 2015/0184829).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
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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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 August 27, 2026
1 https://en.wikipedia.org/wiki/Total_internal_reflection
2 https://en.wikipedia.org/wiki/Reflection_(physics)
3 https://en.wikipedia.org/wiki/Snell%27s_law
4 https://www.rp-photonics.com/fresnel_equations.html
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