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 .
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant’s submissions of the Information Disclosure Statement dated August 20th, 2026 is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending.
Claim Rejections - 35 USC § 112
Applicant’s arguments, filed on July 1st, 2026, with respect to the 112 rejections of the claims have been fully considered and are persuasive. Accordingly the 112 rejections of the claims have been withdrawn.
Claim Rejections - 35 USC § 103
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.
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, 3, 4, 9, and 10, is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoose et al. (US 2003/0142405 A1) in view of Harris et al. (US 2004/0194507 A1).
Regarding claim 1, Hoose teaches immersion diffraction element comprising a prism portion and a diffraction portion, the prism portion and the diffraction portion being an integral unit (See, e.g., the combination of prism 32 in Fig. 3 and the Si wafer described in paragraph [0026] and the combination of grating 34 and grooves 35 in Fig. 3 respectively. Note, insofar as there are no air gaps between the cited elements it is an integral unit).
Hoose lacks an explicit disclosure wherein the prism portion and the diffraction portion being made of the same amorphous glass.
However, in an analogous optical field of endeavor Harris teaches making an optical element out of chalcogenide glass, which is inherently amorphous (See, e.g., paragraph [0017]).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the two claimed elements in the device of Hoose to be chalcogenide glass, as taught by Harris, for the purpose of optimizing the melting point and transmissivity among other things (See, e.g., paragraph [0017] of Harris which explains this).
Regarding claim 3, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein the amorphous glass has a refractive index of 3.0 or more at a wavelength of 10 µm (See, e.g., paragraph [0056] of Harris which explains this).
Regarding claim 4, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein the amorphous glass is chalcogenide glass (See, e.g., the rejection of claim 1 above).
Regarding claim 9, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein a surface of the diffraction portion is covered with a reflective film (See, e.g., paragraph [0026] which explains the diffraction portion can be coated with a gold film, note gold is inherently reflective).
Regarding claim 10, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein the reflective film is made of Au (See, e.g., paragraph [0026] which explains the diffraction portion can be coated with a gold film, note gold is inherently reflective).
Hoose in view of Harris teaches the device set forth above but lacks an explicit disclosure wherein an absolute value of a difference in refractive index at a wavelength of 10 µm between a material constituting the prism portion and the amorphous glass constituting the diffraction portion is 0.3 or less.
However, the difference in refractive index between the materials of the prism and diffraction portion corresponds to a result-effective variable, i.e., a variable which achieves a recognized result, in the instant case the difference in refractive index directly impacts the light path through the entire device. Further, as a result-effective variable, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of such things involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In the instant case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the difference in refractive indices to be within the claimed range for the purpose of optimizing the light path of the overall device, among other things.
Claim(s) 23 and 29-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoose et al. (US 2003/0142405 A1) in view of Harris et al. (US 2004/0194507 A1) and further in view of Umetani et al. (US 5,171,348).
Regarding claim 23, Hoose teaches a method for producing an immersion diffraction element, the method comprising the steps of:
preparing glass to form a prism portion and a diffraction portion as an integral unit to obtain the immersion diffraction element in which the prism portion and the diffraction portion are made (See, e.g., the combination of prism 32 in Fig. 3 and the Si wafer described in paragraph [0026] and the combination of grating 34 and grooves 35 in Fig. 3 respectively. Note, insofar as there are no air gaps between the cited elements it is an integral unit).
Hoose lacks an explicit disclosure wherein the glass is amorphous glass and the prism portion and diffraction portion are made of the same amorphous glass.
However, in an analogous optical field of endeavor Harris teaches making an optical element out of chalcogenide glass, which is inherently amorphous (See, e.g., paragraph [0017]).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the two claimed elements to be chalcogenide glass in the method of Hoose, as taught by Harris, for the purpose of optimizing the melting point and transmissivity among other things (See, e.g., paragraph [0017] of Harris which explains this).
Hoose in view of Harris lacks an explicit disclosure wherein the amorphous glass is mold pressed to form the diffraction portion.
However, in an analogous optical field of endeavor Umetani teaches mold pressing an optical element (See, e.g., paragraphs [0004] and [0009] which explain a press mold is used to create an optical element and that it can be coated with nickel-phosphorus).
Accordingly, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method in the combination of Hoose and Harris to include the step of mold pressing the amorphous glass to form the diffraction portion, as taught by Umetani, for the purpose of making the process more efficient, thus allowing for mass production of the element (See, e.g., paragraph [0004] which explains this).
Regarding claim 29, Hoose in view of Harris and Umetani, teaches the method set forth above and as modified above further teaches wherein the amorphous glass has a glass transition point of not lower than 140°C and not higher than 250°C (See, e.g., paragraph [0026] of Harris which explains that the glass transition point Tg2 is approximately 240C which is within the claimed range).
Regarding claim 30, Hoose in view of Harris and Umetani, teaches the method set forth above but lacks an explicit disclosure wherein in forming the diffraction portion, the amorphous glass is mold press formed at a temperature of not lower than a glass transition temperature of the amorphous glass plus 5°C and not higher than the glass transition temperature plus 50°C.
However, the molding temperature relative to the glass transition temperature corresponds to a result-effective variable, i.e., a variable which achieves a recognized result, in the instant case this difference directly impacts the malleability of the glass and thus multiple parts of the molding process such as time required and thus efficiency of the process. Further, as a result-effective variable, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of such things involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In the instant case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the difference to be within the claimed range for the purpose of optimizing the efficiency of the process, among other things.
Regarding claim 31, Hoose in view of Harris and Umetani, teaches the method set forth above and as modified above further teaches wherein in forming the diffraction portion, the amorphous glass is mold press formed using a press mold plated with nickel and phosphorus (See, e.g., the rejection(s) of claims 23 and 24 which explain this).
Allowable Subject Matter
Claims 2, 11-13, 15-22 and 24 are allowed.
Claims 5-8 and 25-28 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.
Regarding claim 2, the prior art, alone or in combination, fails to teach wherein the diffraction portion and the prism portion are bonded together by a solder provided across the side surface of the diffraction portion and the prism portion and the solder has a melting point lower than a glass transition point of the amorphous glass.
Regarding claim 5, the prior art, alone or in combination, fails to teach wherein the amorphous glass contains, in terms of percent by mole, 4% to 80% Te, above 0% to 50% Ge, and 0.1% to 20% Ga.
Regarding claim 6, the prior art, alone or in combination, fails to teach wherein the amorphous glass contains, in terms of percent by mole, 50% to 80% S, above 0% to 40% Sb, and above 0% to 18% Ge.
Regarding claim 7, the prior art, alone or in combination, fails to teach wherein the diffraction portion has a value of 2.0 or less obtained by dividing a corner radius (µm) of a trough of a recessed area by a corner radius (µm) of a crest of a raised area.
Regarding claim 24, the prior art, alone or in combination, fails to teach wherein in the step of bonding the prism and the diffraction portion together, a solder is provided across a side surface of the diffraction portion and the prism, and the prism and the diffraction portion are bonded with the solder and the solder has a melting point lower than a glass transition point of the amorphous glass.
Regarding claim 25, the prior art, alone or in combination, fails to teach wherein in forming a recessed area and a raised area of the diffraction portion, the amorphous glass is mold press formed so that a value obtained by dividing a corner radius (µm) of a trough of the recessed area by a corner radius (µm) of a crest of the raised area is 2.0 or less
Regarding claim 27, the prior art, alone or in combination, fails to teach wherein in forming a recessed area and a raised area of the diffraction portion, the amorphous glass is mold press formed using a press mold which has a counter-shape to the recessed area and the raised area of the diffraction portion and whose value obtained by dividing a corner radius (µm) of a crest of a raised area by a corner radius (µm) of a trough of a recessed area is 10.0 or less.
Regarding claims 8, 11-13, 15-22, 26, and 28 these claims depend on an allowable base claim and are thus allowable for at least the reasons stated supra.
Response to Arguments
Applicant's arguments with respect to the claim(s) have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mitchell Oestreich whose telephone number is (571)270-7559. The examiner can normally be reached M-F 7:00-11:00 MT.
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/MITCHELL T OESTREICH/ Examiner, Art Unit 2872
/BALRAM T PARBADIA/ Primary Examiner, Art Unit 2872
