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.
Priority
As required by M.P.E.P. 201.14(c), acknowledgement is made of applicant’s claim for priority based on the applications filed on October 5th, 2021 (JP 2021-164119 & JP 2021-164117) and July 7th, 2022 (JP 2022-109880). Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant’s submissions of the Information Disclosure Statements dated February 14th, 2024, February 22nd, 2025, and October 17th, 2025 are acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 5-8 and 25-28, rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 5, the limitation “the amorphous glass contains, in terms of percent by mole, 4% to 80% Te, 0% to 50% Ge (exclusive of 0%), and 0% to 20% Ga” is unclear and renders the claim indefinite. Specifically, if the upper end of each range is used that would add up to 150% by mole which is impossible, thus it is not clear which combination of ranges is being claimed here. Further, it is unclear how a range can go from 0-50% but be exclusive of 0%. Accordingly, for the purpose of examining the claims currently pending, this limitation will be interpreted to mean “the amorphous glass contains Te, Ge, and Ga”.
Regarding claim 6, the limitation “the amorphous glass contains, in terms of percent by mole, 50% to 80% S, 0% to 40% Sb (exclusive of 0%), 0% to 18% Ge (exclusive of 0%), 0% to 20% Sn, and 0% to 20% Bi” is unclear and renders the claim indefinite. Specifically, if the upper end of each range is used that would add up to 178% by mole which is impossible, thus it is not clear which combination of ranges is being claimed here. Further, it is unclear how a range can go from 0-40% or 0-18% but be exclusive of 0%. Accordingly, for the purpose of examining the claims currently pending, this limitation will be interpreted to mean “the amorphous glass contains S, Sb, Ge, Sn, and Bi”.
Regarding claim 7, the limitation “wherein the diffraction portion has a value of 2.0 or less obtained by dividing a corner R of a trough of a recessed area by a corner R of a crest of a raised area” is unclear and renders the claim indefinite. Specifically, it is unclear what unit of measurement “2.0” is here, as it appears that the value is obtained by dividing? two physical portions of the device which is generally unclear. Accordingly, for the purpose of examining the claims currently pending, this limitation will be interpreted to mean “wherein the diffraction portions corresponding to a trough of a recessed area and a crest of a raised area exist”.
Regarding claim 25, the limitation “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 R of a trough of the recessed area by a corner R of a crest of the raised area is 2.0 or less” is unclear and renders the claim indefinite. Specifically, it is unclear what unit of measurement “2.0” is here, as it appears that the value is obtained by dividing? two physical portions of the device which is generally unclear. Accordingly, for the purpose of examining the claims currently pending, this limitation will be interpreted to mean “wherein the diffraction portions corresponding to a trough of a recessed area and a crest of a raised area exist”.
Regarding claim 27, the limitation “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 R of a trough of the recessed area by a corner R of a crest of the raised area is 10.0 or less” is unclear and renders the claim indefinite. Specifically, it is unclear what unit of measurement “10.0” is here, as it appears that the value is obtained by dividing? two physical portions of the device which is generally unclear. Accordingly, for the purpose of examining the claims currently pending, this limitation will be interpreted to mean “wherein the diffraction portions corresponding to a trough of a recessed area and a crest of a raised area exist”.
Regarding claims 8, 26, and 28, these claims depend on a rejected base claim and are therefore rejected for at least the reasons stated supra.
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) 1-13, 21, and 22 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 (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).
Hoose lacks an explicit disclosure wherein the prism portion and the diffraction portion being made of 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 2, Hoose teaches an immersion diffraction element comprising:
a prism portion having a first principal surface, a second principal surface, and a third principal surface (See, e.g., the combination of prism 32 in Fig. 3 and the Si wafer described in paragraph [0026], here the first, second, and third surfaces correspond to the dotted line surface on the “right side” of the view shown in Fig. 3, the “bottom left” side with the light paths coming in/out shown in the view of Fig. 3, and the “upper left” side shown in the view of Fig. 3); and
a diffraction portion provided on the first principal surface of the prism portion (See, e.g., the combination of grating 34 and grooves 35, which is on the cited first principal surface of the prism).
Hoose lacks an explicit disclosure wherein the diffraction portion is made of 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 diffraction portion 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 5, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein the amorphous glass contains, in terms of percent by mole, 4% to 80% Te, 0% to 50% Ge (exclusive of 0%), and 0% to 20% Ga (Note this claim is subject to a 112b rejection above that interprets this limitation to be “wherein the amorphous glass contains Te, Ge, and Ga” and paragraph [0056] of Harris teaches that the chalcogenide glass taught above includes Ge and Te).
Hoose in view of Harris lacks an explicit disclosure of Ga, but note any amount of Ga is all that is required in light of the 112 rejections and above prior art rejections.
Accordingly, as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), it would have been obvious to a person having ordinary skill in the art to modify the cited glass above to include some amount of Ga, as the use thereof would have been predictable to one of ordinary skill in the art. This rejection is proper as it is very common to include Ga in amorphous glass, specifically chalcogenide glass, the modification would not materially affect the operation of the device as a slight change in the composition of the glass would not materially affect the light paths through the optical elements, and adding Ga in would allow for optimizing a desired optical property of the device and/or light paths.
Regarding claim 6, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein the amorphous glass contains, in terms of percent by mole, 50% to 80% S, 0% to 40% Sb (exclusive of 0%), 0% to 18% Ge (exclusive of 0%), 0% to 20% Sn, and 0% to 20% Bi (Note this claim is subject to a 112b rejection above that interprets this limitation to be “the amorphous glass contains S, Sb, Ge, Sn, and Bi”. and paragraph [0056] of Harris teaches that the chalcogenide glass taught above includes Ge).
Hoose in view of Harris lacks an explicit disclosure of S, Sb, Sn, and Bi but note any amount of these elements is all that is required in light of the 112 rejections and above prior art rejections.
Accordingly, as the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), it would have been obvious to a person having ordinary skill in the art to modify the cited glass above to include some amount of S, Sb, Sn, and Bi as the use thereof would have been predictable to one of ordinary skill in the art. This rejection is proper as it is very common to include S, Sb, Sn, and Bi in amorphous glass, specifically chalcogenide glass, the modification would not materially affect the operation of the device as a slight change in the composition of the glass would not materially affect the light paths through the optical elements, and adding S, Sb, Sn, and Bi in would allow for optimizing a desired optical property of the device and/or light paths.
Regarding claim 7, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein the diffraction portion has a value of 2.0 or less obtained by dividing a corner R of a trough of a recessed area by a corner R of a crest of a raised area (See, e.g., the combination of grating 34 and grooves 35 in Fig. 3 and note this limitation is met in light of the 112 rejection above because the diffraction portions corresponding to a trough of a recessed area and a crest of a raised area exist).
Regarding claim 8, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein an angle formed by faces defining the trough of the recessed area is not less than 60° and not more than 120° (See, e.g., Fig. 3 which shows this angle to be approximately 90 degrees).
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.
Regarding claim 12, Hoose in view of Harris teaches the device set forth above but lacks an explicit disclosure wherein an absolute value of a difference in coefficient of thermal expansion between a material constituting the prism portion and the amorphous glass constituting the diffraction portion is 150 X 10⁻⁷/°C or less.
However, the difference in coefficient of thermal expansion 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 this difference directly impacts how the portions expand/contract relative to each other which directly impacts the stability of the 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 coefficients of thermal expansion between the prism and diffraction portion to be within the claimed range for the purpose of optimizing the stability of the device, among other things.
Regarding claim 13, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein the prism portion is made of Si (See, e.g. the rejection of claim 2 above which explains this).
Regarding claim 21, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein the diffraction portion is provided on the first principal surface of the prism portion with a second underlying film in between (See, e.g., Fig. 3 which shows this, and note the cited prism portion above includes the Si film between the prism and diffraction portion).
Regarding claim 22, Hoose in view of Harris teaches the device set forth above and as modified above further teaches wherein the second underlying film is made of Si (See, e.g., the rejection of claims 2 and 21).
Claim(s) 23-31 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 diffraction portion (See, e.g., the combination of grating 34 and grooves 35 in Fig. 3).
Hoose lacks an explicit disclosure wherein the glass is 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 24, Hoose teaches a method for producing an immersion diffraction element, the method comprising the steps of:
preparing a prism (See, e.g., prism 32 in Fig. 3);
form a diffraction portion (See, e.g., the combination of grating 34 and grooves 35 in Fig. 3); and
bonding the prism and the diffraction portion together (See, e.g., paragraph [0026] which explains this).
Hoose lacks an explicit disclosure wherein the prism and diffraction portion are made of 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 25, Hoose in view of Harris and Umetani, teaches the method set forth above and as modified above further teaches 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 R of a trough of the recessed area by a corner R of a crest of the raised area is 2.0 or less (See, e.g., the combination of grating 34 and grooves 35 in Fig. 3 and note this limitation is met in light of the 112 rejection above because the diffraction portions corresponding to a trough of a recessed area and a crest of a raised area exist).
Regarding claim 26, Hoose in view of Harris and Umetani, teaches the method set forth above and as modified above further teaches wherein in forming the recessed area and the raised area of the diffraction portion, the amorphous glass is mold press formed so that an angle formed by faces defining the trough of the recessed area is not less than 60° and not more than 120° (See, e.g., Fig. 3 which shows this angle to be approximately 90 degrees).
Regarding claim 27, Hoose in view of Harris and Umetani, teaches the method set forth above and as modified above further teaches 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 (Note this is how mold press forming works, at least in the way the cited references apply the method) and whose value obtained by dividing a corner R of a crest of a raised area by a corner R of a trough of a recessed area is 10.0 or less (See, e.g., the combination of grating 34 and grooves 35 in Fig. 3 and note this limitation is met in light of the 112 rejection above because the diffraction portions corresponding to a trough of a recessed area and a crest of a raised area exist).
Regarding claim 28, Hoose in view of Harris and Umetani, teaches the method set forth above and as modified above further teaches wherein the amorphous glass is mold press formed using a press mold having an angle of not less than 60° and not more than 120° formed by faces defining the trough of the recessed area (See, e.g., Fig. 3 which shows this angle to be approximately 90 degrees).
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 14-20 and 32 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s reasons for indicating allowable subject matter:
Regarding claim 14, 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 32, 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.
Regarding claims 15-20, these claims depend on an allowable base claim and are thus allowable for at least the reasons stated supra.
Conclusion
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
/WYATT A STOFFA/ Primary Examiner, Art Unit 2881
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