DETAILED ACTION
The instant application having Application No. 18/718,603 filed on June 11, 2024 is presented for examination by the examiner.
The amended claims submitted July 10, 2026 in response to the office action mailed March 19, 2026 are under examination. Claims 1-2, 5-7, 9-11, and 18-23 are pending and amended. Claims 3-4, 8 and 12-17 are cancelled.
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.
Claim Objections
Claim 5 is objected to because of the following informalities: Equation (2) is not properly formatted in the amended claims. Each of ne, n1 and n2 are squared, not ne2, n12 and n22. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: Equation (5) is not properly formatted in the amended claims. Each of ne, n1 and n2 are squared, not ne2, n12 and n22. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: line 3 of page 9 of 20 ends in a period rather than a comma. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: Equations (15) and (16) are not properly formatted in the amended claims. Each of ne1, n1, n2, ne2, n3 and n4 are squared, not ne12, n12, n22, ne22, ne32 and ne42. Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities:
Throughout the specification, the parameters f1, f2, f11, f12, f21 and f22 are discussed in a manner that contradicts the numerical values thereof, contradicts their commonsense meanings and which would result in values of λ2, λ21, and λ22, which would not meet the claims.
Specifically, the ratio f1 is discussed as being a ratio of the thickness of the first refractive index layer to a total thickness of the multiple refractive index layer, with similar definitions of f2, f11, f12, f21 and f22. This contradicts the numerical values disclosed. For example, in the first embodiment, paragraphs [00119]-[00126], d1=30nm, there are 12 first refractive index layers and dt=1548 nm, but f1 is given as 0.232, which equals 12xd1/dt, i.e. 12x30/1548 not 0.0193=d1/dt=30/1548, which would be the ratio of the thickness of a single layer to the total thickness. Similarly, in the first embodiment, d2=108 nm and there are 11 second refractive index layers, but f2 is given as 0.767 which equals 11xd2/dt=11x108/1548 not 0.0697=d2/dt.
One additional point of evidence that the current discussions of the ratios f1, f2, f11, f12, f21 and f22 is incorrect, comes from the fact that an effective refractive index of alternating multilayer, ne should take a value between the refractive indices of the constituent layers, n1 and n2. If f1=0.0193 and f2=0.0697, then ne would be (0.0193 x 2.35) + (0.0697 x 1.38)=0.1415, not 1.657 as disclosed in paragraph [00126].
Furthermore, if this small value of ne was used, equation (3) would yield (no x λ2)= (4 x ne x dt)=876.4 nm which is not at least 10 times the wavelength of visible light, even for a visible light wavelength of 400 nm.
Instances within the specification as filed that require correction include:
paragraph
[0019]
f1 is a ratio of the thickness of the first refractive index layer to a total thickness of the multiple refractive index layer… f2 is a ratio of the thickness of the second refractive index layer to the total thickness of the multiple refractive index layer
[0029]
f1 is a ratio of the thickness of the first refractive index layer to a total thickness of the multiple refractive index layer… f2 is a ratio of the thickness of the second refractive index layer to the total thickness of the multiple refractive index layer
[0043]
f11 is a ratio of the thickness of the first refractive index layer to a total thickness of the first multiple refractive index layer… f12 is a ratio of the thickness of the second refractive index layer to the total thickness of the first multiple refractive index layer.
[0046]
f21 is a ratio of the thickness of the third refractive index layer to a total thickness of the second multiple refractive index layer… f22 is a ratio of the thickness of the fourth refractive index layer to the total thickness of the second multiple refractive index layer.
[0062]
f11 is a ratio of the thickness of the first refractive index layer to a total thickness of the first multiple refractive index layer… f12 is a ratio of the thickness of the second refractive index layer to the total thickness of the first multiple refractive index layer.
[0065]
f21 is a ratio of the thickness of the third refractive index layer to a total thickness of the second multiple refractive index layer… f22 is a ratio of the thickness of the fourth refractive index layer to the total thickness of the second multiple refractive index layer.
[00113]
f1 is a ratio of the thickness d1 of the first refractive index layer 111 to the total thickness dt of the multiple refractive index layer 110, and f2 is a ratio of the thickness d2 of the second refractive index layer 112 to the total thickness dt of the multiple refractive index layer 110.
[00125]
Therefore, the ratio f1 of the thickness d1 of the first refractive index layer 111 to the total thickness dt of the multiple refractive index layer 110 is 0.232, and the ratio f2 of the thickness d2 of the second refractive index layer 112 to the total thickness dt of the multiple refractive index layer 110 is 0.767.
[00141]
Therefore, the ratio f1 of the thickness d1 of the first refractive index layer 111 to the total thickness dt of the multiple refractive index layer 110 is 0.2, and the ratio f2 of the thickness d2 of the second refractive index layer 112 to the total thickness dt of the multiple refractive index layer 110 is 0.8.
[00160]
Therefore, the ratio f1 of the thickness d1 of the first refractive index layer 111 to the total thickness dt of the multiple refractive index layer 110 is 0.194, and the ratio f2 of the thickness d2 of the second refractive index layer 112 to the total thickness dt of the multiple refractive index layer 110 is 0.806.
[00192]
wherein ne1 is the effective refractive index of the first multiple refractive index layer 110a, f11 is a ratio of the thickness d1 of the first refractive index layer 111 to the total thickness dt1 of the first multiple refractive index layer 110a, and f12 is a ratio of the thickness d2 of the second refractive index layer 112 to the total thickness dt1 of the first multiple refractive index layer 110a.
[00194]
In addition, the ratio f11 of the thickness d1 of the first refractive index layer 111 to the total thickness dt1 of the first multiple refractive index layer 110a is 0.252, and the ratio f12 of the thickness d2 of the second refractive index layer 112 to the total thickness dt1 of the first multiple refractive index layer 110a is 0.748.
[00198]
wherein ne2 is the effective refractive index of the second multiple refractive index layer 110b, f21 is a ratio of the thickness d3 of the third refractive index layer 113 to the total thickness dt2 of the second multiple refractive index layer 110b, and f22 is a ratio of the thickness d4 of the fourth refractive index layer 114 to the total thickness dt2 of the second multiple refractive index layer 110b.
[00200]
In addition, the ratio f21 of the thickness d3 of the third refractive index layer 113 to the total thickness dt2 of the second multiple refractive index layer 110b is 0.750, and the ratio f22 of the thickness d4 of the fourth refractive index layer 114 to the total thickness dt2 of the second multiple refractive index layer 110b is 0.250.
[00230]
wherein f11 is a ratio of the thickness d1 of the first refractive index layer 111 to a total thickness dt1 of the first multiple refractive index layer 110a, and f12 is a ratio of the thickness d2 of the second refractive index layer 112 to the total thickness dt1 of the first multiple refractive index layer 110a.
[00232]
In addition, the ratio f11 of the thickness d1 of the first refractive index layer 111 to the total thickness dt1 of the first multiple refractive index layer 110a is 0.172, and the ratio f12 of the thickness d2 of the second refractive index layer 112 to the total thickness dt1 of the first multiple refractive index layer 110a is 0.828.
[00236]
wherein f21 is a ratio of the thickness d3 of the third refractive index layer 113 to a total thickness dt2 of the second multiple refractive index layer 110b, and f22 is a ratio of the thickness d4 of the fourth refractive index layer 114 to the total thickness dt2 of the second multiple refractive index layer 110b.
[00238]
In addition, the ratio f21 of the thickness d3 of the third refractive index layer 113 to the total thickness dt2 of the second multiple refractive index layer 110b is 0.700, and the ratio f22 of the thickness d4 of the fourth refractive index layer 114 to the total thickness dt2 of the second multiple refractive index layer 110b is 0.300.
For example, paragraph [0019] should be revised as follows:
“wherein ne is the effective refractive index of the multiple refractive index layer, n1 is the first refractive index of the first refractive index layer, f1 is a ratio of the total thickness of the plurality of first refractive index layers to a total thickness of the multiple refractive index layer, n2 is the second refractive index of the second refractive index layer, and f2 is a ratio of the total thickness of the plurality of second refractive index layers to the total thickness of the multiple refractive index layer.”
Appropriate correction is required.
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 5-6, 9-10 and 18-19 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.
Regarding claims 5, 9 and 18, each of these claims has been amended to identify (claims 5 and 9) “f1 is a ratio of the first thickness to a total thickness of the multiple refractive index layer… f2 is a ratio of the second thickness to a total thickness of the multiple refractive index layer” and (claim 18) “f11 is a ratio of the first thickness to a total thickness of the multiple refractive index layer… f12 is a ratio of the second thickness to a total thickness of the first multiple refractive index layer… f21 is a ratio of the third thickness to a total thickness of the multiple refractive index layer… f22 is a ratio of the fourth thickness to a total thickness of the second multiple refractive index layer”.
Such language is inconsistent with the parameter values and calculations in the instant specification. For example, for the first embodiment, paragraphs [00119]-[00126], d1=30nm, there are 12 first refractive index layers and dt=1548 nm, but f1 is given as 0.232, which equals 12xd1/dt, i.e. 12x30/1548 not 0.0193=d1/dt=30/1548, which would be the ratio of the thickness of a single layer to the total thickness. Similarly, in the first embodiment, d2=108 nm and there are 11 second refractive index layers, but f2 is given as 0.767 which equals 11xd2/dt=11x108/1548 not 0.0697=d2/dt. Previously, the claims had been interpreted as “the thickness of the first refractive index layer” to be the sum of the thicknesses of all the first refractive index layers, consistent with the values of f1 and f2 in the specification. The current amendment precludes such an interpretation, by specifically discussing the first, second, third and fourth thicknesses, that needed to meet equations (1), (4), (13) or (14) in relation to a central wavelength of the reflected visible light.
One point of additional evidence that the current language of claims 5, 9 and 18 is incorrect, comes from the fact that an effective refractive index of alternating multilayer, ne must take a value between the refractive indices of the constituent layers, n1 and n2. If f1=0.0193 and f2=0.0697, then ne would be (0.0193 x 2.35) + (0.0697 x 1.38)=0.1415, not 1.657 as disclosed in paragraph [00126].
Furthermore, if this small value of ne was used, equation (3) would yield (no x λ2)= (4 x ne x dt)=876.4 nm which is not at least 10 times the wavelength of visible light, even for a visible light wavelength of 400 nm.
Thus, the specification as filed does not support claims 5, 9 or 18 as amended.
Claims 6, 10 and 19 depend from claims 5, 9 and 18 and inherit and do not mitigate this written description issue from claims 5, 9 and 18.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakamoto JP 2005266538 A (hereafter Sakamoto, where reference will be made to the attached machine translation).
Regarding claim 1, Sakamoto teaches “A beam splitter (infrared transmission filter 1 which is a beam splitter due to the functionality as follows) using a multiple refractive index layer (alternating films 3 and 4 in Fig. 1), the beam splitter comprising:
a multiple refractive index layer (alternating high refractive index film 3 and low refractive index film 4 in Fig. 1, where it is worth noting that any subset of alternating layers can be construed to correspond to the claimed multiple refractive index layer. For the purposes of the calculations below, consider layers 13-26) configured to reflect visible light and transmit infrared light having a wavelength longer than a wavelength of the visible light (page 5 third paragraph “if the reflecting mirror is formed of a transparent member such as glass and the infrared transmitting filter 1 is attached to the reflecting mirror, the reflecting mirror transmits infrared rays and reflects only visible light.” Infrared wavelengths are longer than visible wavelengths.); and
a base layer (transparent substrate 2 and/or Si layer 1 in Fig. 5 which is a base layer in that it is formed at the base of the stack) provided on one side of the multiple refractive index layer (see Fig. 1) and configured to transmit the infrared light transmitted through the multiple refractive index layer (page 5 third paragraph “if the reflecting mirror is formed of a transparent member such as glass and the infrared transmitting filter 1 is attached to the reflecting mirror, the reflecting mirror transmits infrared rays”),
wherein the wavelength of the infrared light is 10 times or more than the wavelength of the visible light (see Fig. 6 the reflected visible wavelengths include the third design wavelength, 715 nm. Using the definitions of the effective refractive index, ne, and the center wavelength of the transmission area of the second light, λ2 of the instant application, one can calculate ne and λ2 from the data of layers 13-26 in Fig. 5. Note that fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, the physical thickness of layers 14, 16, 18, 20, 22, 24, and 26 is 122.4315 nm. The physical thickness of layers 13, 15, 17, 19, 21, 23, and 25 is 78.39912 nm. From these numbers one can calculate the total thickness of layers 13-26 to be dt=1405.814 and the first and second thickness ratios to thereby obtain ne=2.0003. Then applying the formula of equation (3) one obtains for no=1 λ2=11248.2 nm which is more than 10 times 715 nm. One is free to use these equations, because they represent physical laws that govern the interference properties of alternating quarter wavelength films. Thus, the validity of these expressions is not dependent on their recognition by any previous authors.1 Note that an ordinary skilled artisan would know that the presence of additional layers tuned to smaller design wavelengths primarily acts to broaden the wavelength range of the reflected light.),
wherein the multiple refractive index layer comprises a plurality of first refractive index layers having a first refractive index (high refractive index film 3, TiO2 layers with n=2.28 in Fig. 5 of which there are a plurality, namely the odd numbered layers from layer 7 to 27, including layers 13, 15, 17, 19, 21, 23 and 25) and a plurality of second refractive index layers having a second refractive index (low refractive index film 4, SiO2 layers with n=1.46 in Fig. 5, of which there are a plurality, namely the even numbered layers from layer 6 to 28, including layers 14, 16, 18, 20, 22, 24, and 26) less than the first refractive index (1.46 is less than 2.28),
the first refractive index layers and the second refractive index layers are alternately and repeatedly arranged (see Figs. 1 and 5),
an incident light is vertically incident on the multiple refractive index layer (Fig. 5 is designed in terms of 1/4 λ, not including any angular adjustments, thus is assuming vertically incident light),
the first refractive index layers have a first thickness (The fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, the physical thickness of layers 13, 15, 17, 19, 21, 23, and 25 is 78.39912 nm) and the second refractive index layers have a second thickness (The fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, physical thickness of layers 14, 16, 18, 20, 22, 24, and 26 is 122.4315 nm.),
the first thickness and the second thickness have a relation with a center wavelength of a reflection area of the visible light, the first refractive index, and the second refractive index (See Fig. 5, the optical thicknesses of each layer are chosen to be ¼ of the design wavelengths λ1, λ2 and λ3. Since the optical thickness of a layer is the product of the physical thickness and the refractive index, the physical thicknesses have a relation with the center wavelength of reflection and the first and second refractive indices.),
the first thickness and the second thickness satisfy Equation (1) below:
λ1=2x(n1xd1+n2xd2)/na --- Equation (1) (Fig. 5 the fourth column is the optical thickness of each layer in terms of the three design wavelengths λ1, λ2 and λ3, where the optical thickness is n1xd1 or n2xd2 depending on the layer (subscripts are used for the prior art to differentiate the parameters of the instant application and the prior art). Thus for layers 13-26 λ1=2x(1/4λ3+1/4λ3)=2x(1/2λ3)=λ3. Thus, the first and second thicknesses of the prior art meet equation 1 with na=1 and λ1= λ3.)
wherein λ1 is the center wavelength of the reflection area of the visible light (design wavelength λ3=715 nm), n1 is the first refractive index of the first refractive index layer (2.28 for TiO2), d1 is the thickness of the first refractive index layer (the physical thickness of layers 13, 15, 17, 19, 21, 23, and 25 is 78.39912 nm), n2 is the second refractive index of the second refractive index layer (1.46 for SiO2), d2 is the thickness of the second refractive index layer (the physical thickness of layers 14, 16, 18, 20, 22, 24, and 26 is 122.4315 nm.), and na is a natural number (na=1).”
Regarding claim 2, Sakamoto teaches “The beam splitter of claim 1, wherein the first thickness or the second thickness is formed to be less than or equal to a length of the wavelength of the visible light (see Fig. 5 the optical thickness of all of the layers less than the design wavelengths for that layer. Since physical thicknesses are less than optical thicknesses by a factor of the refractive index, all of the layers have physical thicknesses less than the design wavelength that they are designed to reflect. In particular, the physical thickness of layers 14, 16, 18, 20, 22, 24, 26 and 28 is 122.4315 nm and the physical thickness of layers 13, 15, 17, 19, 21, 23, and 25 is 78.39912 nm both of which are less than 715 nm. The other layers being quarter-wavelength layers with smaller design wavelengths also have thicknesses less than 715 nm. In fact all of the layers have thicknesses less than 400 nm.).”
Regarding claim 5, Sakamoto teaches “The beam splitter of claim 1, wherein an effective refractive index of the multiple refractive index layer (see calculation below ne of layers 13-26 is 2.0003) is less than a refractive index of the base layer (the base layer 1 of Si has n=4.2), and
the effective refractive index of the multiple refractive index layer satisfies Equation (2) below:
ne2=n12xf1+n22xf2 --- Equation (2) (given n1=2.28, f1=548.7939/1405.814=0.390374, n2=1.46 and f2=857.0205/1405.814=0.609626, then ne2=4.0012 and ne=2.0003)
wherein ne is the effective refractive index of the multiple refractive index layer, n1 is the first refractive index of the first refractive index layer (n1=2.28), f1 is a ratio of the first thickness to a total thickness of the multiple refractive index layer (f1 can be calculated from the data of surfaces 13-26 in Fig. 5 after converting the optical thicknesses to physical thicknesses. The sum of the physical thicknesses of the odd-numbered layers within layers 13-26 is 548.7939. The sum of the physical thicknesses of all of the layers 13-26 is 1405.814, thus f1=548.7939/1405.814=0.390374. Note that this interpretation of f1 is consistent with the calculations in the instant specification where for the first embodiment, paragraphs [00119]-[00126], d1=30nm, there are 12 first refractive index layers and dt=1548 nm, but f1=0.232=12xd1/dt=12x30/1548 not 0.0193=d1/dt=30/1548. Such an interpretation is also necessary for ne to take a value between n1 and n2, not some small, unphysical value.), n2 is the second refractive index (n2=1.46), and f2 is a ratio of the second thickness to the total thickness of the multiple refractive index layer (f2 can be calculated from the data of surfaces 13-26 in Fig. 5 after converting the optical thicknesses to physical thicknesses. The sum of the physical thicknesses of the even-numbered layers within layers 13-26 is 857.0205. The sum of the physical thicknesses of all of the layers 13-26 is 1405.814, thus f2=857.0205/1405.814=0.609626. Note that this interpretation of f2 is consistent with the calculations in the instant specification where for the first embodiment, paragraphs [00119]-[00126], d2=108nm, there are 11 second refractive index layers and dt=1548 nm, but f2=0.767=11xd2/dt=11x108/1548 not 0.0697=d2/dt=108/1548. Such an interpretation is also necessary for ne to take a value between n1 and n2, not some small, unphysical value.).”
Regarding claim 6, Sakamoto teaches “The beam splitter of claim 5, wherein a center wavelength of a transmission area of the infrared light transmitted through the multiple refractive index layer is calculated by Equation (3) below:
dt=(noxλ2)/(4xne) --- Equation (3) (Equation 3 can be algebraically rearranged to (noxλ2)=4xdtxne. From Fig. 5 dt is the sum of the physical thicknesses of all of the layers 13-26: dt=1405.814. As calculated above ne=2.0003. Thus for no=1, λ2=4x1405.814x2.0003=11,248.2 nm which is more than 10 times 715 nm and thus meets claim 1.)
wherein dt is the total thickness of the multiple refractive index layer (From Fig. 5 dt is the sum of the physical thicknesses of all of the layers 13-26: dt=1405.814.), no is an odd number (no is 1), λ2 is the center wavelength of the transmission area of the infrared light (the transmitted infrared light, λ2=4x1405.814x2.0003=11,248.2 nm), and ne is the effective refractive index of the multiple refractive index layer (As calculated above ne=1.818.).”
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.
Claims 7, 9-11 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto JP 2005266538 A (hereafter Sakamoto, where reference will be made to the attached machine translation) in view of Kikuchi et al. US 2021/0030263 A1 (hereafter Kikuchi) and Hebrink et al. US 2011/0255155 A1 (hereafter Hebrink).
Regarding claim 7, Sakamoto teaches “A beam splitter (infrared transmission filter 1 which is a beam splitter due to the functionality as follows) using a multiple refractive index layer (alternating films 3 and 4 in Fig. 1), the beam splitter comprising:
a multiple refractive index layer (alternating high refractive index film 3 and low refractive index film 4 in Fig. 1, where it is worth noting that any subset of alternating layers can be construed to correspond to the claimed multiple refractive index layer. For the purposes of the calculations below, consider layers 13-26) configured to reflect visible light and transmit infrared light having a wavelength longer than a wavelength of the visible light (page 5 third paragraph “if the reflecting mirror is formed of a transparent member such as glass and the infrared transmitting filter 1 is attached to the reflecting mirror, the reflecting mirror transmits infrared rays and reflects only visible light.” Infrared wavelengths are longer than visible wavelengths.); and
a base layer (transparent substrate 2 and/or Si layer 1 in Fig. 5 which is a base layer in that it is formed at the base of the stack) provided on one side of the multiple refractive index layer (see Fig. 1) and configured to transmit the infrared light transmitted through the multiple refractive index layer (page 5 third paragraph “if the reflecting mirror is formed of a transparent member such as glass and the infrared transmitting filter 1 is attached to the reflecting mirror, the reflecting mirror transmits infrared rays”),
wherein the wavelength of the infrared light is 10 times or more than the wavelength of the visible light (see Fig. 6 the reflected visible wavelengths include the third design wavelength, 715 nm. Using the definitions of the effective refractive index, ne, and the center wavelength of the transmission area of the second light, λ2 of the instant application, one can calculate ne and λ2 from the data of layers 13-26 in Fig. 5. Note that fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, the physical thickness of layers 14, 16, 18, 20, 22, 24, and 26 is 122.4315 nm. The physical thickness of layers 13, 15, 17, 19, 21, 23, and 25 is 78.39912 nm. From these numbers one can calculate the total thickness of layers 13-26 to be dt=1405.814 and the first and second thickness ratios to be f1=0.6096 and f2=0.3904 and thereby obtain ne=2.0003. Then applying equation (3) one obtains for no=1 λ2=11248.2 nm which is more than 10 times 715 nm. Equation (6) for oblique incidence is the same as equation (3) except for a factor of cosθe. Thus to obtain λ2 at oblique incidence that is still 10x715nm, all that is required is that cosθe is less than 7150/11248.2=0.636, i.e. that θe< 50.5°. One is free to use these equations, because they represent physical laws that govern the interference properties of alternating quarter wavelength films. Thus, the validity of these expressions is not dependent on their recognition by any previous authors.2 Note that an ordinary skilled artisan would know that the presence of additional layers tuned to smaller design wavelengths primarily acts to broaden the wavelength range of the reflected light.),
wherein the multiple refractive index layer comprises a plurality of first refractive index layers having a first refractive index (high refractive index film 3, TiO2 layers with n=2.28 in Fig. 5 of which there are a plurality, namely the odd numbered layers from layer 7 to 27, including layers 13, 15, 17, 19, 21, 23 and 25) and a plurality of second refractive index layers having a second refractive index (low refractive index film 4, SiO2 layers with n=1.46 in Fig. 5, of which there are a plurality, namely the even numbered layers from layer 6 to 28, including layers 14, 16, 18, 20, 22, 24, and 26) less than the first refractive index (1.46 is less than 2.28),
the first refractive index layers and the second refractive index layers are alternately and repeatedly arranged (see Figs. 1 and 5),
…
the first refractive index layers have a first thickness (The fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, the physical thickness of layers 13, 15, 17, 19, 21, 23, and 25 is 78.39912 nm) and the second refractive index layers have a second thickness (The fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, physical thickness of layers 14, 16, 18, 20, 22, 24, and 26 is 122.4315 nm.),
the first thickness and the second thickness have a relation with a center wavelength of a reflection area of the visible light, the first refractive index, …the second refractive index (See Fig. 5, the optical thicknesses of each layer are chosen to be ¼ of the design wavelengths λ1, λ2 and λ3. Since the optical thickness of a layer is the product of the physical thickness and the refractive index, the physical thicknesses have a relation with the center wavelength of reflection and the first and second refractive indices.)…
the first thickness and the second thickness satisfy Equation (4) below:
λ1=2x(n1xd1…+n2xd2…)/na --- Equation (4) (Fig. 5 the fourth column is the optical thickness of each layer in terms of the three design wavelengths λ1, λ2 and λ3, where the optical thickness is n1xd1 or n2xd2 depending on the layer (subscripts are used for the prior art to differentiate the parameters of the instant application and the prior art). Thus for layers 13-26 λ1=2x(1/4λ3+1/4λ3)=2x(1/2λ3)=λ3. Thus, the first and second thicknesses of the prior art meet equation 1 with na=1 and λ1= λ3. Thus the prior art meets equation 4 with na=1, and both cosines equal to 1.)
wherein λ1 is the center wavelength of the reflection area of the visible light (design wavelength λ3=715 nm), n1 is the first refractive index of the first refractive index layer (2.28 for TiO2), d1 is the thickness of the first refractive index layer (the physical thickness of layers 13, 15, 17, 19, 21, 23, and 25 is 78.39912 nm), … n2 is the second refractive index of the second refractive index layer (1.46 for SiO2), d2 is the thickness of the second refractive index layer (the physical thickness of layers 14, 16, 18, 20, 22, 24, and 26 is 122.4315 nm.),… and na is a natural number (na=1).”
However, Sakamoto fails to explicitly teach “wherein incident light is obliquely incident on the multiple refractive index layer… the first thickness and the second thickness have a relation with… a refraction angle of the first refractive index layer… and a refraction angle the second refractive index layer.”
Kikuchi teaches an optical imaging apparatus (Fig. 3) having a beam splitter (dichroic film 203) that is an optical multilayer film (e.g. paragraph [0087]) where as shown in Fig. 3 and disclosed in paragraph [0065]: “light belonging to the visible light wavelength band is reflected and light belonging to the near-infrared wavelength band (fluorescence wavelength band) is transmitted.”
Kikuchi further teaches “wherein incident light is obliquely incident on the multiple refractive index layer (see oblique angle of 203 relative to the entering light in Fig. 3).”
Hebrink teaches a beam splitter (e.g. paragraph [0049]: “Layer pairs, number of layers, and thickness of layers may be selected so that the optical stack reflects a first bandwidth of light and transmits a second bandwidth of light. For example… transmit infrared wavelengths and reflect UV wavelengths.” Transmitting one wavelength while reflecting another is beam splitting.) using a multiple refractive index layer (Figs. 1A-1B multilayer optical film 100, with first optical layers 160a-160n and second optical layers 162a-162n which have different refractive indices see e.g. paragraph [0033]: “first optical layers 160 and second optical layers 162 have respective refractive indices that are different, n1 and n2, respectively.”), the beam splitter comprising:
a multiple refractive index layer (Figs. 1A-1B multilayer optical film 100, with first optical layers 160a-160n and second optical layers 162a-162n which have different refractive indices see e.g. paragraph [0033]: “first optical layers 160 and second optical layers 162 have respective refractive indices that are different, n1 and n2, respectively.”) configured to reflect first light and transmit second light having a wavelength longer than a wavelength of the first light (e.g. paragraph [0049]: “Layer pairs, number of layers, and thickness of layers may be selected so that the optical stack reflects a first bandwidth of light and transmits a second bandwidth of light. For example… transmit infrared wavelengths and reflect UV wavelengths.” Infrared wavelengths start at about 800 nm which is longer than UV wavelengths that end at about 400 nm); and
a base layer (e.g. paragraph [0079]: “The multilayer optical films may be positioned onto a pane of glass… the multilayer optical films may be positioned onto other substantially transparent plastics to provide reflective properties.”) provided on one side of the multiple refractive index layer (e.g. paragraph [0079]: “The multilayer optical films may be positioned onto a pane of glass… the multilayer optical films may be positioned onto other substantially transparent plastics to provide reflective properties.”) and configured to transmit the second light transmitted through the multiple refractive index layer (see paragraphs [0049] and [0079] if the glass or plastic were not configured to transmit the second light, the function of transmitting infared wavelengths would not be achieved. Thus the base layer is configured to transmit the second light.),
wherein the multiple refractive index layer comprises a first refractive index layer having a first refractive index and a second refractive index layer having a second refractive index less than the first refractive index (paragraph [0033]: “first optical layers 160 and second optical layers 162 have respective refractive indices that are different, n1 and n2, respectively.” Hebrink does not specify which one is the layer with the smaller refractive index, however, since n1 and n2 are different from one another, whichever is higher corresponds to the first refractive index layer and whichever is lower corresponds to the second refractive index layer.),
the first refractive index layer and the second refractive index layer are alternately and repeatedly arranged (paragraph [0029]: “Again referring to FIG. 1B, second optical layers 162 are disposed in a repeating sequence with first optical layers 160. The layer pairs (e.g., wherein first optical layers 160 are A and second optical layers 162 are B may be arranged as alternating layer pairs (e.g., ABABAB . . . ) as shown in FIG. 1B.”), and
the wavelength of the second light (paragraph [0047]: “In one embodiment, the optical stack of the present disclosure transmits at least one of the following: at least a portion of the wavelengths between about 700-2500 nm… By "at least a portion" is meant to comprise not only the entire range of wavelengths,”) is 10 times or more than the wavelength of the first light (paragraphs [0047]-[0048]: “By "at least a portion" is meant to comprise not only the entire range of wavelengths… the optical stack of the present disclosure reflects at least one of the following:… between about 250-400 nm.” Where 2500 nm is 10 times 250 nm.).”
wherein incident light is obliquely incident on the multiple refractive index layer (paragraph [0036]: “The equation λ/2=n1d1+n2d2 can be used to tune the optical layers to reflect light of wavelength λ at a normal angle of incidence. At other angles, the optical thickness of the layer pair depends on the distance traveled through the component optical layers (which is larger than the thickness of the layers) and the indices of refraction for at least two of the three optical axes of the optical layer.”),
the first refractive index layers have a first thickness and the second refractive index layers have a second thickness (paragraph [0036]: “The equation λ/2=n1d1+n2d2 can be used to tune the optical layers to reflect light of wavelength λ at a normal angle of incidence. At other angles, the optical thickness of the layer pair depends on the distance traveled through the component optical layers (which is larger than the thickness of the layers) and the indices of refraction for at least two of the three optical axes of the optical layer.” see also paragraph [0035]: “The optical layers can each be a quarter-wavelength thick or the optical layers can have different optical thicknesses, as long as the sum of the optical thicknesses for the layer pair is half of a wavelength (or a multiple thereof).”,
the first thickness and the second thickness have a relation with a center wavelength of a reflection area…, the first refractive index, a refraction angle of the first refractive index layer, the second refractive index and a refraction angle the second refractive index layer (paragraph [0036]: “The equation λ/2=n1d1+n2d2 can be used to tune the optical layers to reflect light of wavelength λ at a normal angle of incidence. At other angles, the optical thickness of the layer pair depends on the distance traveled through the component optical layers (which is larger than the thickness of the layers) and the indices of refraction for at least two of the three optical axes of the optical layer.” see also paragraph [0035]: “The optical layers can each be a quarter-wavelength thick or the optical layers can have different optical thicknesses, as long as the sum of the optical thicknesses for the layer pair is half of a wavelength (or a multiple thereof).” Elementary geometry dictates that the distance traveled through a given layer depends on the thickness of the layer and the angle at which the light is passing through that layer.).”
Kikuchi further teaches (paragraph [0015]): “a rigid-scope optical system including: an image-formation optical system that causes an image in each of wavelength bands to be formed in a predetermined imaging device, the wavelength bands including a fluorescence wavelength band belonging to a near-infrared light wavelength band and a visible light wavelength band; and a color-separation-prism optical system having a dichroic film that separates an optical path of light to be imaged by the image-formation optical system into an optical path of the visible light wavelength band and an optical path of the fluorescence wavelength band”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a beam splitter as taught by Sakamoto in an optical system where the entering light is incident at an oblique angle as taught by Kikuchi so that the beam splitter can direct the infrared and shorter wavelengths to two different detectors simultaneously as taught by Kikuchi (Fig. 3 and paragraph [0015]).
When adapting the beam splitter of Sakamoto to this purpose it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take into account the change in optical path length due to the oblique incidence as taught by Hebrink in the beam splitter of Sakamoto, because Hebrink teaches that the angle of incidence will influence that path lengths within the alternating film layers.
However, Sakamoto fails to explicitly teach “λ1=2x(n1xd1x cosθ1 + n2xd2xcosθ2)/na --- Equation (4) wherein… θ1 is the refraction angle of the first refractive index layer… θ2 is the refraction angle of the second refractive index layer.”
Hebrink teaches “the first thickness and the second thickness satisfy Equation (4) below:
λ1=2x(n1xd1x cosθ1 + n2xd2xcosθ2)/na --- Equation (4) (paragraph [0036]: “The equation λ/2=n1d1+n2d2 can be used to tune the optical layers to reflect light of wavelength λ at a normal angle of incidence. At other angles, the optical thickness of the layer pair depends on the distance traveled through the component optical layers (which is larger than the thickness of the layers) and the indices of refraction for at least two of the three optical axes of the optical layer.” The equation of Hebrink is algebraically the same as equation 1 where na=1 and θ1=θ2=0. Thus, at least for slightly oblique angles, of, for example 10° or less, where cosθ1 and cosθ2 are both still close to 1, the value λ1 calculated using equation 4 will still be a central reflected wavelength. Furthermore, whether equation 4 results in a central reflected wavelength for the multiple refractive index layer is a matter of physics, and thus is independent of whether or not the prior art has recognized this attribute. See MPEP §2112(I)-(II) “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) ("[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.");”)
wherein λ1 is the center wavelength of the reflection area …(a central reflected wavelength λ), n1 is the first refractive index (paragraph [0033]: “first optical layers 160 and second optical layers 162 have respective refractive indices that are different, n1 and n2, respectively.”), d1 is the first thickness (paragraph [0035]: “d1 and d2 are the respective thicknesses of the first and second optical layers in the layer pair.”), θ1 is the refraction angle of the first refractive index layer (the refraction angle within the first refractive index layer, which is dictated from the incident angle and the refractive index by Snell’s Law), n2 is the second refractive index (paragraph [0033]: “first optical layers 160 and second optical layers 162 have respective refractive indices that are different, n1 and n2, respectively.”), d2 is the second thickness (paragraph [0035]: “d1 and d2 are the respective thicknesses of the first and second optical layers in the layer pair.”), θ2 is the refraction angle of the second refractive index layer (the refraction angle within the second refractive index layer, which is dictated from the incident angle and the refractive index by Snell’s Law), and na is a natural number (na=1).”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a beam splitter as taught by Sakamoto in an optical system where the entering light is incident at an oblique angle as taught by Kikuchi so that the beam splitter can direct the infrared and shorter wavelengths to two different detectors simultaneously as taught by Kikuchi (Fig. 3 and paragraph [0015]).
When adapting the beam splitter of Sakamoto to this purpose it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take into account the change in optical path length due to the oblique incidence as taught by Hebrink in the beam splitter of Sakamoto, because Hebrink teaches that the angle of incidence will influence that path lengths within the alternating film layers.
Regarding claim 9, the Sakamoto – Kikuchi – Hebrink combination teaches “The beam splitter of claim 7,” and Sakamoto further teaches “wherein an effective refractive index of the multiple refractive index layer (see calculation below ne of layers 13-26 is 2.0003) is less than a refractive index of the base layer (the base layer 1 of Si has n=4.2), and
the effective refractive index of the multiple refractive index layer satisfies Equation (5) below:
ne2=n12xf1+n22xf2 --- Equation (5) (given n1=2.28, f1=548.7939/1405.814=0.390374, n2=1.46 and f2=857.0205/1405.814=0.609626, then ne2=4.0012 and ne=2.0003)
wherein ne is the effective refractive index of the multiple refractive index layer, n1 is the first refractive index (n1=2.28), f1 is a ratio of the first thickness to a total thickness of the multiple refractive index layer (f1 can be calculated from the data of surfaces 13-26 in Fig. 5 after converting the optical thicknesses to physical thicknesses. The sum of the physical thicknesses of the odd-numbered layers within layers 13-26 is 548.7939. The sum of the physical thicknesses of all of the layers 13-26 is 1405.814, thus f1=548.7939/1405.814=0.390374. Note that this interpretation of f1 is consistent with the calculations in the instant specification where for the first embodiment, paragraphs [00119]-[00126], d1=30nm, there are 12 first refractive index layers and dt=1548 nm, but f1=0.232=12xd1/dt=12x30/1548 not 0.0193=d1/dt=30/1548. Such an interpretation is also necessary for ne to take a value between n1 and n2, not some small, unphysical value.), n2 is the second refractive index (n2=1.46), and f2 is a ratio of the second thickness to the total thickness of the multiple refractive index layer (f2 can be calculated from the data of surfaces 13-26 in Fig. 5 after converting the optical thicknesses to physical thicknesses. The sum of the physical thicknesses of the even-numbered layers within layers 13-26 is 857.0205. The sum of the physical thicknesses of all of the layers 13-26 is 1405.814, thus f2=857.0205/1405.814=0.609626. Note that this interpretation of f2 is consistent with the calculations in the instant specification where for the first embodiment, paragraphs [00119]-[00126], d2=108nm, there are 11 second refractive index layers and dt=1548 nm, but f2=0.767=11xd2/dt=11x108/1548 not 0.0697=d2/dt=108/1548. Such an interpretation is also necessary for ne to take a value between n1 and n2, not some small, unphysical value.).”
Regarding claim 10, the Sakamoto – Kikuchi – Hebrink combination teaches “The beam splitter of claim 9,” and Sakamoto further teaches “wherein a center wavelength of a transmission area of the infrared light transmitted through the multiple refractive index layer satisfies Equation (6) below:
dt=(noxλ2)/(4xne…) --- Equation (6) (Equation 6 can be algebraically rearranged to (noxλ2)=4xdtxne. From Fig. 5 dt is the sum of the physical thicknesses of all of the layers 13-26: dt=1405.814. As calculated above ne=2.0003. Thus for no=1, λ2=4x1405.814x2.0003= 11,248.2 nm which is more than 10 times 400 nm and thus meets claim 7.)
wherein dt is the total thickness of the multiple refractive index layer (From Fig. 5 dt is the sum of the physical thicknesses of all of the layers 13-26: dt=1405.814.), no is an odd number (no is 1), λ2 is the center wavelength of the transmission area of the infrared light (the transmitted infrared light), ne is the effective refractive index of the multiple refractive index layer (As calculated above ne=1.818.).”
However, Sakamoto fails to explicitly teach “dt=(noxλ2)/(4xnexcosθ) --- Equation (6) wherein θe is an effective refraction angle of the multiple refractive index layer.”
The question of whether a wavelength λ2, calculated by equation (6) will be a center wavelength of the transmission area of the second light transmitted through the multiple refractive index layer is a matter of physics and thus, is independent of whether or not the prior art has recognized this attribute. See MPEP §2112(I)-(II) “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) ("[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.").”
In the instant case, the structure of the multilayer film of Sakamoto and the instant application are both designed such that the combined optical path length of a pair of one high index and one low index layer next to each other is equal to half the design wavelength of the reflected light. At oblique incidence, the system of Sakamoto has been adjusted in view of Hebrink to take into account the change in optical path length. Thus, the multilayer film so-adapted must transmit light of a wavelength λ2 defined by equation (6), because the structure of the prior art and the instant application are the same.
Regarding claim 11, Sakamoto teaches “A beam splitter (infrared transmission filter 1 which is a beam splitter due to the functionality as follows) using a multiple refractive index layer (alternating films 3 and 4 in Fig. 1, see elements thereof below), the beam splitter comprising:
a multiple refractive index layer (alternating high refractive index film 3 and low refractive index film 4 in Fig. 1, where it is worth noting that any subset of alternating layers can be construed to correspond to the claimed multiple refractive index layer.) configured to reflect visible light and transmit infrared light having a wavelength longer than a wavelength of the visible light (page 5 third paragraph “if the reflecting mirror is formed of a transparent member such as glass and the infrared transmitting filter 1 is attached to the reflecting mirror, the reflecting mirror transmits infrared rays and reflects only visible light.” Infrared wavelengths are longer than visible wavelengths.); and
a base layer (transparent substrate 2 and/or Si layer 1 in Fig. 5 which is a base layer in that it is formed at the base of the stack) provided on one side of the multiple refractive index layer (see Figs. 1 and 5) and configured to transmit the infrared light transmitted through the multiple refractive index layer (page 5 third paragraph “if the reflecting mirror is formed of a transparent member such as glass and the infrared transmitting filter 1 is attached to the reflecting mirror, the reflecting mirror transmits infrared rays”),
wherein the wavelength of the infrared light is 10 times or more than the wavelength of the visible light (see Fig. 6 the reflected visible wavelengths include the third design wavelength, 715 nm. Using the definitions of the effective refractive index, ne, and the center wavelength of the transmission area of the second light, λ2 of the instant application, one can calculate ne and λ2 from the data of layers 13-26 in Fig. 5. Note that fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, the physical thickness of layers 14, 16, 18, 20, 22, 24, and 26 is 122.4315 nm. The physical thickness of layers 13, 15, 17, 19, 21, 23, and 25 is 78.39912 nm. From these numbers one can calculate the total thickness of layers 13-26 to be dt=1405.814 and the first and second thickness ratios to be f1=0.6096 and f2=0.3904 and thereby obtain ne=2.0003. Then applying equation (3) one obtains for no=1 λ2=11248.2 nm which is more than 10 times 715 nm. Equation (6) for oblique incidence is the same as equation (3) except for a factor of cosθe. Thus to obtain λ2 at oblique incidence that is still 10x715nm, all that is required is that cosθe is less than 7150/11248.2=0.636, i.e. that θe< 50.5°. One is free to use these equations, because they represent physical laws that govern the interference properties of alternating quarter wavelength films. Thus, the validity of these expressions is not dependent on their recognition by any previous authors.3 Note that an ordinary skilled artisan would know that the presence of additional layers tuned to smaller design wavelengths primarily acts to broaden the wavelength range of the reflected light.), and
wherein the multiple refractive index layer comprises:
a first multiple refractive index layer (Fig. 5 layers 6-12) comprising a plurality of first refractive index layers having a first refractive index (high refractive index film 3, odd-numbered TiO2 layers with n=2.28 amongst layers 6-12 in Fig. 5, i.e. the three layers 7, 9 and 11) and a plurality of second refractive index layers having a second refractive index (low refractive index film 4, even-numbered SiO2 layers amongst layers 6-12 with n=1.46 in Fig. 5, i.e. the four layers 6, 8, 10 and 12) less than the first refractive index (1.46 is less than 2.28), the first refractive index layers and the second refractive index layers being alternately and repeatedly arranged (see Figs. 1 and 5), the first multiple refractive index layer being configured to reflect an area including a first center wavelength (wavelength λ2=603 nm which is a center wavelength ± 100 nm) from among reflection areas of the visible light (603 nm is within the range of reflected visible wavelengths); and
a second multiple refractive index layer (Fig. 5 layers 13-26) comprising a plurality of third refractive index layers having a third refractive index (high refractive index film 3, odd-numbered TiO2 layers with n=2.28 amongst layers 13-26 in Fig. 5, i.e. the seven layers 13, 15, 17, 19, 21, 23 and 25) and a plurality of fourth refractive index layers having a fourth refractive index (low refractive index film 4, even-numbered SiO2 layers amongst layers 13-26 with n=1.46 in Fig. 5, i.e, the seven layers 14, 16, 18, 20, 22, 24 and 26) less than the third refractive index (1.46 is less than 2.28), the third refractive index layers and the fourth refractive index layers being alternately and repeatedly arranged (see Figs. 1 and 5), the second multiple refractive index layer being configured to reflect an area including a second center wavelength (wavelength λ3=715 nm which is a center wavelength ± 150 nm) that is different from the first center wavelength (715 nm is different than 603 nm) from among the reflection areas of the visible light (715 nm is within the range of reflected visible wavelengths),
…
the first refractive index layers, the second refractive index layers, the third refractive index layers, and the fourth refractive index layers respectively have a first thickness (The fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, the physical thickness of layers 7, 9 and 11 is d1=66.11842 nm), a second thickness (The fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, the physical thickness of layers 6, 8, 10 and 12 is d2=103.2534 nm), a third thickness (The fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, the physical thickness of layers 13, 15, 17, 19, 21, 23, and 25 is d3=78.39912 nm), and a fourth thickness (The fourth column in Fig. 5 are the optical thicknesses, which is the product of the physical thickness and the refractive index of that layer. Thus, physical thickness of layers 14, 16, 18, 20, 22, 24, and 26 is d4=122.4315 nm.),
the first thickness and the second thickness have a relation with the first center wavelength of the reflection area of the visible light, the first refractive index… the second refractive index (See Fig. 5, the optical thicknesses of each layer are chosen to be ¼ of the design wavelengths λ1, λ2 and λ3. Since the optical thickness of a layer is the product of the physical thickness and the refractive index, the physical thicknesses have a relation with the center wavelength of reflection and the first and second refractive indices.)… and
the third thickness and the fourth thickness have a relation with the second center wavelength of the reflection area of the visible light, the third refractive index, … the fourth refractive index, (See Fig. 5, the optical thicknesses of each layer are chosen to be ¼ of the design wavelengths λ1, λ2 and λ3. Since the optical thickness of a layer is the product of the physical thickness and the refractive index, the physical thicknesses have a relation with the center wavelength of reflection and the first and second refractive indices.) …
the first thickness and the second thickness satisfy Equation (13) below,
λ11=2x(n1xd1…+n2xd2…)/na --- Equation (13) (Fig. 5 the fourth column is the optical thickness of each layer in terms of the three design wavelengths λ1, λ2 and λ3, where the optical thickness is n1xd1 or n2xd2 depending on the layer (subscripts have been used for the prior art to distinguish between the parameters of the instant application and the prior art). Thus for example for layers 6 and 7 λ11=2x(1/4λ2+1/4λ2)=2x(1/2λ2)=λ2. Thus the prior art meets equation 13 with na=1, λ11= λ2 and both cosines equal to 1.)
wherein λ11 is the first center wavelength of the reflection area of the visible light (wavelength λ2=603 nm which is visible light), n1 is the first refractive index (2.28 for TiO2), d1 is the first thickness (d1=66.11842 as noted above for the odd layers of 6-12)… n2 is the second refractive index (1.46 for SiO2), d2 is the second thickness (d2=103.2534 as noted above for the even layers of 6-12)… and na is a natural number (na=1), and
the third thickness and the fourth thickness satisfy Equation (14) below, which includes the second center wavelength of the reflection area of the visible light:
λ12=2x(n3xd3…+n4xd4…)/na --- Equation (14) (Fig. 5 the fourth column is the optical thickness of each layer in terms of the three design wavelengths λ1, λ2 and λ3, where the optical thickness is n3xd3 or n4xd4 depending on the layer (subscripts have been used for the prior art to distinguish between the parameters of the instant application and the prior art). Thus for example for layers 13 and 14 λ12=2x(1/4λ3+1/4λ3)=2x(1/2λ3)=λ3. Thus the prior art meets equation 14 with na=1, λ11= λ3 and both cosines equal to 1.)
wherein λ12 is the second center wavelength of the reflection area of the first light (wavelength λ3=715 nm which is visible light), n3 is the third refractive index (2.28 for TiO2), d3 is the third thickness (d3=78.4 for the odd layers of 13-26 as noted above)… n4 is the fourth refractive index (1.46 for SiO2), d4 is the fourth thickness (d4=122.4 for the even layers of 13-26 as noted above)… and na is a natural number (na=1).”
However, Sakamoto fails to explicitly teach “an incident light is obliquely incident on the multiple refractive index layer,
the first thickness and the second thickness have a relation with … a refraction angle of the first refractive index layers, … and a refraction angle of the second refractive index layers, and
the third thickness and the fourth thickness have a relation with …a refraction angle of the third refractive index layers, … and a refraction angle of the fourth refractive index layers.
Kikuchi teaches an optical imaging apparatus (Fig. 3) having a beam splitter (dichroic film 203) that is an optical multilayer film (e.g. paragraph [0087]) where as shown in Fig. 3 and disclosed in paragraph [0065]: “light belonging to the visible light wavelength band is reflected and light belonging to the near-infrared wavelength band (fluorescence wavelength band) is transmitted.”
Kikuchi further teaches “wherein incident light is obliquely incident on the multiple refractive index layer (see oblique angle of 203 relative to the entering light in Fig. 3).”
Hebrink teaches a beam splitter (e.g. paragraph [0049]: “Layer pairs, number of layers, and thickness of layers may be selected so that the optical stack reflects a first bandwidth of light and transmits a second bandwidth of light. For example… transmit infrared wavelengths and reflect UV wavelengths.” Transmitting one wavelength while reflecting another is beam splitting.) using a multiple refractive index layer (Figs. 1A-1B multilayer optical film 100, with first optical layers 160a-160n and second optical layers 162a-162n which have different refractive indices see e.g. paragraph [0033]: “first optical layers 160 and second optical layers 162 have respective refractive indices that are different, n1 and n2, respectively.”), the beam splitter comprising:
a multiple refractive index layer (Figs. 1A-1B multilayer optical film 100, with first optical layers 160a-160n and second optical layers 162a-162n which have different refractive indices see e.g. paragraph [0033]: “first optical layers 160 and second optical layers 162 have respective refractive indices that are different, n1 and n2, respectively.”) configured to reflect first light and transmit second light having a wavelength longer than a wavelength of the first light (e.g. paragraph [0049]: “Layer pairs, number of layers, and thickness of layers may be selected so that the optical stack reflects a first bandwidth of light and transmits a second bandwidth of light. For example… transmit infrared wavelengths and reflect UV wavelengths.” Infrared wavelengths start at about 800 nm which is longer than UV wavelengths that end at about 400 nm); and
a base layer (e.g. paragraph [0079]: “The multilayer optical films may be positioned onto a pane of glass… the multilayer optical films may be positioned onto other substantially transparent plastics to provide reflective properties.”) provided on one side of the multiple refractive index layer (e.g. paragraph [0079]: “The multilayer optical films may be positioned onto a pane of glass… the multilayer optical films may be positioned onto other substantially transparent plastics to provide reflective properties.”) and configured to transmit the second light transmitted through the multiple refractive index layer (see paragraphs [0049] and [0079] if the glass or plastic were not configured to transmit the second light, the function of transmitting infared wavelengths would not be achieved. Thus the base layer is configured to transmit the second light.),
wherein the multiple refractive index layer comprises a first refractive index layer having a first refractive index and a second refractive index layer having a second refractive index less than the first refractive index (paragraph [0033]: “first optical layers 160 and second optical layers 162 have respective refractive indices that are different, n1 and n2, respectively.” Hebrink does not specify which one is the layer with the smaller refractive index, however, since n1 and n2 are different from one another, whichever is higher corresponds to the first refractive index layer and whichever is lower corresponds to the second refractive index layer.),
the first refractive index layer and the second refractive index layer are alternately and repeatedly arranged (paragraph [0029]: “Again referring to FIG. 1B, second optical layers 162 are disposed in a repeating sequence with first optical layers 160. The layer pairs (e.g., wherein first optical layers 160 are A and second optical layers 162 are B may be arranged as alternating layer pairs (e.g., ABABAB . . . ) as shown in FIG. 1B.”), and
the wavelength of the second light (paragraph [0047]: “In one embodiment, the optical stack of the present disclosure transmits at least one of the following: at least a portion of the wavelengths between about 700-2500 nm… By "at least a portion" is meant to comprise not only the entire range of wavelengths,”) is 10 times or more than the wavelength of the first light (paragraphs [0047]-[0048]: “By "at least a portion" is meant to comprise not only the entire range of wavelengths… the optical stack of the present disclosure reflects at least one of the following:… between about 250-400 nm.” Where 2500 nm is 10 times 250 nm.).”
wherein incident light is obliquely incident on the multiple refractive index layer (paragraph [0036]: “The equation λ/2=n1d1+n2d2 can be used to tune the optical layers to reflect light of wavelength λ at a normal angle of incidence. At other angles, the optical thickness of the layer pair depends on the distance traveled through the component optical layers (which is larger than the thickness of the layers) and the indices of refraction for at least two of the three optical axes of the optical layer.”), and
the first refractive index layers, the second refractive index layers… have a first thickness (d1), a second thickness (d2),
the first thickness and the second thickness have a relation with the first center wavelength of the reflection area of the visible light, the first refractive index, a refraction angle of the first refractive index layers, the second refractive index, and a refraction angle of the second refractive index layers
(paragraph [0036]: “The equation λ/2=n1d1+n2d2 can be used to tune the optical layers to reflect light of wavelength λ at a normal angle of incidence. At other angles, the optical thickness of the layer pair depends on the distance traveled through the component optical layers (which is larger than the thickness of the layers) and the indices of refraction for at least two of the three optical axes of the optical layer.” see also paragraph [0035]: “The optical layers can each be a quarter-wavelength thick or the optical layers can have different optical thicknesses, as long as the sum of the optical thicknesses for the layer pair is half of a wavelength (or a multiple thereof).” Elementary geometry dictates that the distance traveled through a given layer depends on the thickness of the layer and the angle at which the light is passing through that layer.).
Kikuchi further teaches (paragraph [0015]): “a rigid-scope optical system including: an image-formation optical system that causes an image in each of wavelength bands to be formed in a predetermined imaging device, the wavelength bands including a fluorescence wavelength band belonging to a near-infrared light wavelength band and a visible light wavelength band; and a color-separation-prism optical system having a dichroic film that separates an optical path of light to be imaged by the image-formation optical system into an optical path of the visible light wavelength band and an optical path of the fluorescence wavelength band”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a beam splitter as taught by Sakamoto in an optical system where the entering light is incident at an oblique angle as taught by Kikuchi so that the beam splitter can direct the infrared and shorter wavelengths to two different detectors simultaneously as taught by Kikuchi (Fig. 3 and paragraph [0015]).
When adapting the beam splitter of Sakamoto to this purpose it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take into account the change in optical path length due to the oblique incidence as taught by Hebrink in the beam splitter of Sakamoto, because Hebrink teaches that the angle of incidence will influence that path lengths within the alternating film layers.
However, Sakamoto fails to explicitly teach “λ11=2x(n1xd1x cosθ1 + n2xd2xcosθ2)/na --- Equation (13) wherein… θ1 is the refraction angle of the first refractive index layer… θ2 is the refraction angle of the second refractive index layer…
λ12=2x(n3xd3x cosθ3 + n4xd4xcosθ4)/na --- Equation (14) wherein… θ3 is the refraction angle of the first refractive index layer… θ4 is the refraction angle of the second refractive index layer.”
Hebrink teaches “the first thickness and the second thickness satisfy Equation (13) below,
λ11=2x(n1xd1x cosθ1 + n2xd2xcosθ2)/na --- Equation (13) (paragraph [0036]: “The equation λ/2=n1d1+n2d2 can be used to tune the optical layers to reflect light of wavelength λ at a normal angle of incidence. At other angles, the optical thickness of the layer pair depends on the distance traveled through the component optical layers (which is larger than the thickness of the layers) and the indices of refraction for at least two of the three optical axes of the optical layer.” The equation of Hebrink is algebraically the same as equation 1 where na=1 and θ1=θ2=0. Thus, at least for slightly oblique angles, of, for example 10° or less, where cosθ1 and cosθ2 are both still close to 1, the value λ1 calculated using equation 4 will still be a central reflected wavelength. Furthermore, whether equation 4 results in a central reflected wavelength for the multiple refractive index layer is a matter of physics, and thus is independent of whether or not the prior art has recognized this attribute. See MPEP §2112(I)-(II) “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) ("[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.");”)
wherein λ11 is the center wavelength of the reflection area of the [first] light (a central reflected wavelength λ), n1 is the first refractive index (paragraph [0033]: “first optical layers 160 and second optical layers 162 have respective refractive indices that are different, n1 and n2, respectively.”), d1 is the first thickness (paragraph [0035]: “d1 and d2 are the respective thicknesses of the first and second optical layers in the layer pair.”), θ1 is the refraction angle of the first refractive index layer (the refraction angle within the first refractive index layer, which is dictated from the incident angle and the refractive index by Snell’s Law), n2 is the second refractive index (paragraph [0033]: “first optical layers 160 and second optical layers 162 have respective refractive indices that are different, n1 and n2, respectively.”), d2 is the second thickness (paragraph [0035]: “d1 and d2 are the respective thicknesses of the first and second optical layers in the layer pair.”), θ2 is the refraction angle of the second refractive index layer (the refraction angle within the second refractive index layer, which is dictated from the incident angle and the refractive index by Snell’s Law), and na is a natural number (na=1).”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a beam splitter as taught by Sakamoto in an optical system where the entering light is incident at an oblique angle as taught by Kikuchi so that the beam splitter can direct the infrared and shorter wavelengths to two different detectors simultaneously as taught by Kikuchi (Fig. 3 and paragraph [0015]).
When adapting the beam splitter of Sakamoto to this purpose it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to take into account the change in optical path length due to the oblique incidence as taught by Hebrink in the beam splitter of Sakamoto, because Hebrink teaches that the angle of incidence will influence that path lengths within the alternating film layers. This accounting for the oblique angle of incidence applies equally to both the first multiple refractive index layer with equation 13 and the second multiple refractive index layer with equation 14.
Regarding claim 18, the Sakamoto – Kikuchi – Hebrink combination teaches “The beam splitter of claim 11,” and Sakamoto further teaches “wherein an effective refractive index of the first multiple refractive index layer (see calculation below ne of layers 6-12 is 1.768) is less than an effective refractive index of the second multiple refractive index layer (see calculation below ne of layers 13-26 is 2.0003), the effective refractive index of the second multiple refractive index layer is less than a refractive index of the base layer (the base layer 1 of Si has n=4.2), the effective refractive index of the first multiple refractive index layer is calculated by Equation (15) below:
ne12=n12xf11+n22xf12--- Equation (15) (given the values of f11=0.324 and f12=0.676 below, n1=2.28 and n2=1.46, ne1 calculated from ne12=n12xf11+n22xf12=4.203 and ne1=2.05)
wherein ne1 is the effective refractive index of the first multiple refractive index layer (see calculation above ne of layers 6-12 is 2.05), n1 is the first refractive index (n1=2.28), f11 is a ratio of the first thickness to a total thickness of the first multiple refractive index layer (f11 can be calculated from the data of surfaces 6-12 in Fig. 5 after converting the optical thicknesses to physical thicknesses. The sum of the physical thicknesses of the odd-numbered layers within layers 6-12 is 198.36 The sum of the physical thicknesses of all of the layers 6-12 is 611.37, thus f11=198.36/611.37=0.324), n2 is the second refractive index (n2=1.46), and f12 is a ratio of the second thickness to the total thickness of the first multiple refractive index layer (f12 can be calculated from the data of surfaces 6-12 in Fig. 5 after converting the optical thicknesses to physical thicknesses. The sum of the physical thicknesses of the even-numbered layers within layers 6-12 is 413.01 The sum of the physical thicknesses of all of the layers 6-12 is 611.37, thus f12=413.01/611.37=0.676), and
the effective refractive index of the second multiple refractive index layer is calculated by Equation (16) below:
ne22=n32xf21+n42xf22--- Equation (16) (given the values of f21=0.3904 and f12=0.6096 below, n3=2.28 and n4=1.46, ne2 calculated from ne22=n32xf21+n42xf22=4.0012 and ne2=2.0003)
wherein ne2 is the effective refractive index of the second multiple refractive index layer (see calculation above ne of layers 13-26 is 2.0003), n3 is the third refractive index (n3=2.28), f21 is a ratio of the third thickness to a total thickness of the second multiple refractive index layer (f21 can be calculated from the data of surfaces 13-26 in Fig. 5 after converting the optical thicknesses to physical thicknesses. The sum of the physical thicknesses of the odd-numbered layers within layers 13-26 is 548.793. The sum of the physical thicknesses of all of the layers 13-26 is 1405.814, thus f21=548.793/1405.814=0.390374), n4 is the fourth refractive index (n4=1.46), and f22 is a ratio of the fourth thickness to the total thickness of the second multiple refractive index layer (f22 can be calculated from the data of surfaces 13-26 in Fig. 5 after converting the optical thicknesses to physical thicknesses. The sum of the physical thicknesses of the even-numbered layers within layers 13-26 is 857.0205 The sum of the physical thicknesses of all of the layers 13-26 is 1405.814, thus f22=0.609626).”
Regarding claim 19, the Sakamoto – Kikuchi – Hebrink combination teaches “The beam splitter of claim 18, wherein a first center wavelength of a transmission area of the infrared light transmitted through the first multiple refractive index layer is calculated by Equation (17) below:
dt1=(noxλ21)/(4xne1…)--- Equation (17) (Equation 17 can be algebraically rearranged to (noxλ21)=4xdtxne1. From Fig. 5 dt1 is the sum of the physical thicknesses of the layers 6-12: dt1=611.37. As calculated above ne1=2.05. Thus for no=1, λ21=4x611.37x2.05=5013.8 nm, which is more than 10 times 400 nm and thus meets claim 11. Moreover, note that claim 11 merely requires that the wavelength of the infrared light is 10 times or more than the wavelength of the visible light, not that both λ21≥10x λ11 and λ22≥10x λ12. Thus as written it is sufficient that either of λ21 or λ22 is 10 times or more relative to one of λ11 or λ12, or even that the band of transmitted infrared light includes wavelengths that are 10 time of more than a wavelength within the band of reflected visible light.)
wherein dt1 is the total thickness of the first multiple refractive index layer (From Fig. 5 dt1 is the sum of the physical thicknesses of the layers 6-12: dt1=611.37), no is an odd number (no=1), λ21 is the first center wavelength of the transmission area of the infrared light (as calculated above λ21=5013.8 nm), ne1 is the effective refractive index of the first multiple refractive index layer (As calculated above ne1=2.05), … and
the second center wavelength of the transmission area of the infrared light transmitted through the second multiple refractive index layer is calculated by Equation (18) below:
dt2=(noxλ22)/(4xne2…) --- Equation (18) (Equation 18 can be algebraically rearranged to (noxλ22)=4xdt2xne2. From Fig. 5 dt2 is the sum of the physical thicknesses of the layers 13-26: dt2=1405.814. As calculated above ne2=2.0003. Thus for no=1, λ22=4 x 1405.814 x 2.0003 = 11248.2nm which is more than 10 times 715 nm and thus meets claim 11.)
wherein dt2 is the total thickness of the second multiple refractive index layer (From Fig. 5 dt2 is the sum of the physical thicknesses of the layers 13-26: dt2=1405.814.), no is an odd number (no=1), λ22 is the second center wavelength of the transmission area of the infrared light (as calculated above λ22=11248.2 nm), ne2 is the effective refractive index of the second multiple refractive index layer (As calculated above ne2=2.003)…”
However, Sakamoto fails to explicitly teach “dt1=(noxλ21)/(4xne1xcosθe1) --- Equation (17) wherein θe1 is an effective refraction angle of the first multiple refractive index layer…. “dt2=(noxλ22)/(4xne2xcosθe2) --- Equation (18) wherein θe2 is an effective refraction angle of the second multiple refractive index layer.”
The question of whether wavelengths λ21 or λ22, calculated by equations (17) and (18) will be a center wavelength of the transmission area of the second light transmitted through the first and second multiple refractive index layers is a matter of physics and thus, is independent of whether or not the prior art has recognized this attribute. See MPEP §2112(I)-(II) “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) ("[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.").”
In the instant case, the structure of the multilayer film of Sakamoto and the instant application are both designed such that the combined optical path length of a pair of one high index and one low index layer next to each other is equal to half the design wavelength of the reflected light. At oblique incidence, the system of Sakamoto has been adjusted in view of Hebrink to take into account the change in optical path length. Thus, the multilayer film so-adapted must transmit light of a wavelengths λ21 and λ22 defined by equations 17 and 18, because the structure of the prior art and the instant application are the same.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto JP 2005266538 A (hereafter Sakamoto, where reference will be made to the attached machine translation) in view of Kikuchi et al. US 2021/0030263 A1 (hereafter Kikuchi) and Hebrink et al. US 2011/0255155 A1 (hereafter Hebrink) as applied to claim 11 above, and further in view of Ballif et al. US 2017/0123122 A1 (hereafter Ballif).
Regarding claim 20, the Sakamoto – Kikuchi – Hebrink combination teaches the beam splitter of claim 11, however, Sakamoto fails to teach “further comprising an anti-reflection layer provided on one side of the base layer and configured to prevent reflection of the infared light transmitted through the multiple refractive index layer.”
Baliff teaches an infrared transmitting cover sheet of Fig. 4 (see paragraph [0094] having a interferential multilayer 320.
Baliff further teaches “further comprising an anti-reflection layer provided on one side of the base layer (paragraph [0118]: “In an embodiment of said first, second and third type of infrared transmitting cover sheets, an anti-reflective coating may be arranged to the incident light surface. An exemplary anti-reflective coating consists of a single layer made of MgF2. In another example, the anti-reflective coating may comprise three layers made of Al2O3, ZrO2 and MgF2.”) and configured to prevent reflection of the second light transmitted through the multiple refractive index layer (In paragraph [0093] Baliff teaches “an additional diffusing layer may be arranged on said front sheet 210 to give a mate appearance and/or to reduce the total reflection of said infrared transmitting cover layer 1. Said diffusing layer may be arranged on an additional foil arranged to said first infrared transmitting cover layer 1. In an embodiment said front sheet 210 may comprise at least a textured or roughened surface. In a variant, at least an anti-reflective coating may be arranged on said front sheet 210.” Thus it is evident in Baliff that infrared light is amongst the wavelengths which the anti-reflective coating reduces the reflections thereof.).”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an anti-reflective coating to the incident surface of the base layer as taught by Baliff in the device of the Sakamoto combination in order to prevent reflection of light at the incident surface of the filter as taught by Baliff (paragraphs [0093] and [0118]).
Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto JP 2005266538 A (hereafter Sakamoto, where reference will be made to the attached machine translation) as applied to claim 1 above, and further in view of Uemura et al. US 5,197,105 (hereafter Uemura).
Regarding claim 21, Sakamoto teaches “the beam splitter using the multiple refractive index layer of any one of claims claim 1 (see claim 1 above) configured to reflect visible light … and transmit infrared light having a wavelength longer than a wavelength of the visible light (page 5 third paragraph “if the reflecting mirror is formed of a transparent member such as glass and the infrared transmitting filter 1 is attached to the reflecting mirror, the reflecting mirror transmits infrared rays and reflects only visible light.” Infrared wavelengths are longer than visible wavelengths.).”
However, Sakamoto is silent regarding “A defective element detection device comprising:
the beam splitter … configured to reflect visible light incident from an inspection target element and transmit infrared light having a wavelength longer than a wavelength of the visible light incident from the inspection target element;
a first image generator configured to generate first image information by receiving the visible light reflected from the beam splitter using the multiple refractive index layer;
a second image generator configured to generate second image information by receiving the infrared light transmitted through the beam splitter using the multiple refractive index layer;
and a determiner configured to determine whether the inspection target element is defective, based on the first image information and the second image information.”
Uemura teaches “A defective element detection device (inspecting apparatus 10) comprising:
the beam splitter (cold mirror 150 which splits the light see Fig. 3A and col. 10 lines 21-34) … configured to reflect visible light incident from an inspection target element (col. 10 lines 21-34: “the red light contained in the effective luminous flux La (i.e., the reflected light LR from the surface of the printed circuit board 20) is reflected by this mirror 150”) and transmit infrared light having a wavelength longer than a wavelength of the visible light (col. 10 lines 21-34: “The cold mirror 150 is adapted to transmit only infrared light.” Infrared wavelengths are longer than red wavelengths) incident from the inspection target element (col. 10 lines 21-34: “the infrared light contained in the effective luminous flux La (i.e., the transmitted light LT through the through hole 25) is transmitted through the mirror 150”);
a first image generator (first CCD linear image sensor 161) configured to generate first image information (col. 10 lines 34-44: “the first linear image sensor 161 detects a one-dimensional image of the surface of the printed circuit board 20 through the reflective illumination”) by receiving the visible light reflected from the beam splitter using the multiple refractive index layer (col. 10 lines 21-34: “the red light contained in the effective luminous flux La (i.e., the reflected light LR from the surface of the printed circuit board 20) is reflected by this mirror 150 to progress in the direction (+Y), and imaged on a photos-detective plane of the first CCD linear image sensor 161.”);
a second image generator (second CCD linear image sensor 162) configured to generate second image information (col. 10 lines 34-44: “the second linear image sensor 162 detects a one-dimensional image of the through hole 25 through the transmitting illumination.”) by receiving the infrared light transmitted through the beam splitter using the multiple refractive index layer (col. 10 lines 21-34: “the infrared light contained in the effective luminous flux La (i.e., the transmitted light LT through the through hole 25) is transmitted through the mirror 150 and imaged on a photo-detective plane of the second CCD linear image sensor 162.”);
and a determiner (e.g. col. 10 lines 49-53: “Image signals obtained in the linear image sensors 161 and 162 are digitalized by circuits described below, and thereafter binarized using threshold values TH1 and TH2, as shown in FIGS. 5A and 5B.”) configured to determine whether the inspection target element is defective (e.g. col. 1 lines 16-25: “In order to inspect whether or not the wiring pattern and the through hole are formed with an accuracy within a predetermined tolerance”), based on the first image information and the second image information (e.g. col. 5 lines 28-33: “detection of the respective images can be attained at a high speed and appearance inspection of printed circuit boards can be conducted at a high speed and in high accuracy.”).”
Uemura further teaches that col. 5 lines 19-37: “The optical-amount of the light for transmitting illumination is fully usable in detection of the through hole image, and relatively large part of the light for regular reflection is usable in detection of the wiring pattern image…. The present invention is applicable not only to appearance inspection of a printed circuit board, but also to image reading systems in various inspecting apparatuses such as that for appearance inspection of a magnetic disk or a semiconductor wafer.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the beam splitter of Sakamoto to transmit infrared light and reflect visible light in a defective element detection device, because Uemura teaches that directing infrared light that detects the holes to one CCD sensor while simultaneously directing red light that images the wiring pattern to another CCD sensor enables appearance inspection of a printed circuit board or image reading systems in various inspecting apparatuses such as that for appearance inspection of a magnetic disk or a semiconductor wafer (Uemura col. 5 lines 33-37).
Regarding claim 22, the Sakamoto – Uemura combination teaches “The defective element detection device of claim 21,” however, Sakamoto fails to teach “wherein a length of a first optical path connecting the first image generator to the inspection target element is formed to be greater than a length of a second optical path connecting the second image generator to the inspection target element.”
Uemura teaches “wherein a length of a first optical path connecting the first image generator to the inspection target element (see e.g. Fig. 17, the portion of the inspection target imaged by the infrared sensor includes the bottom opening thereof) is formed to be greater than a length of a second optical path connecting the second image generator to the inspection target element (see e.g. Fig. 3A, the portion of the inspection target imaged by the visible light sensor is the top wiring pattern. Since the top wiring pattern is inherently closer to the beam splitter than the bottom of the holes in the inspection target, the length of a first optical path connecting the first image generator to the inspection target element is greater than a length of a second optical path connecting the second image generator to the inspection target element, so long as the spacing from the beam splitter to the sensors is the same. The relative distance from the beam splitter to the two CCDs is a genus with only three species, (a) the path of LT is longer than LR, (b) the path of LT is the same as LR or (c) the path of LR is longer than LT. The first two of these species, a and b, meet the relative distances claimed given the different heights on the target being inspected. Thus an ordinary skilled artisan would at once envisage that the arrangement of Uemura meets the claim.4).”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the beam splitter of Sakamoto to transmit infrared light and reflect visible light in a defective element detection device where the length of the path between the target and the infrared detector is greater than the length of the path between the target and the visible detector as taught by Uemura because Uemura teaches using the infrared light to inspect the holes in the target and the visible light to inspect the wiring patterns on top of the target.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto JP 2005266538 A (hereafter Sakamoto, where reference will be made to the attached machine translation) as applied to claim 1 above, and further in view of Ballif et al. US 2017/0123122 A1 (hereafter Ballif).
Regarding claim 23, Sakamoto teaches the beam splitter of claim 1, however, Sakamoto fails to teach “further comprising an anti-reflection layer provided on one side of the base layer and configured to prevent reflection of the infrared light transmitted through the multiple refractive index layer.”
Baliff teaches an infrared transmitting cover sheet of Fig. 4 (see paragraph [0094] having a interferential multilayer 320.
Baliff further teaches “further comprising an anti-reflection layer provided on one side of the base layer (paragraph [0118]: “In an embodiment of said first, second and third type of infrared transmitting cover sheets, an anti-reflective coating may be arranged to the incident light surface. An exemplary anti-reflective coating consists of a single layer made of MgF2. In another example, the anti-reflective coating may comprise three layers made of Al2O3, ZrO2 and MgF2.”) and configured to prevent reflection of the second light transmitted through the multiple refractive index layer (In paragraph [0093] Baliff teaches “an additional diffusing layer may be arranged on said front sheet 210 to give a mate appearance and/or to reduce the total reflection of said infrared transmitting cover layer 1. Said diffusing layer may be arranged on an additional foil arranged to said first infrared transmitting cover layer 1. In an embodiment said front sheet 210 may comprise at least a textured or roughened surface. In a variant, at least an anti-reflective coating may be arranged on said front sheet 210.” Thus it is evident in Baliff that infrared light is amongst the wavelengths which the anti-reflective coating reduces the reflections thereof.).”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an anti-reflective coating to the incident surface of the base layer as taught by Baliff in the device of Sakamoto in order to prevent reflection of light at the incident surface of the filter as taught by Baliff (paragraphs [0093] and [0118]).
Response to Arguments
Applicant's arguments filed July 10, 2026 have been fully considered but they are not persuasive.
In the first two paragraphs of page 14 of 20 of the applicant’s remarks the applicant lists the status of the claims, and states that “no new matter has been added as the amendments have support of the specification as originally filed.” For the reasons explained in the 35 USC §112(a) rejections above, with respect to claims 5-6, 8-9 and 18-19 the examiner respectfully disagrees. Although the words of the amended claims appear in the specification, the portions of the specification that might provide support are themselves in error.
Under the heading “Claim Rejections under 35 U.S.C. §112” on pages 14 and 15 of 20 of the applicant’s remarks the applicant argues that the previous rejections under 35 U.S.C. §112(b) have been overcome by the amendments to claims 1, 7 and 11. The examiner agrees, these rejections have been withdrawn, and any remaining vagueness is considered to be a matter of breadth not indefiniteness.
With respect to the arguments under the heading “Claim Rejections under 35 U.S.C. §102/§103” on pages 15 to 19 of 20, the following initial comments are made to clarify the questions of patentability.
As a preliminary matter, it is noted that the applicant’s arguments are predicated on an incorrect understanding of (1) the scope of the claims (2) the physics of multilayer interferential films (3) the principles of inherency laid out in MPEP §2112.
To begin with, as explained in MPEP §2112(I) and (II):
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999)…
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)
Thus, each of the applicant’s arguments where they allege that it is improper hindsight to use the equations from the instant application to evaluate the properties of the prior art, reflect an inaccurate understanding of the law.
The question of whether the prior art anticipates the claim does not hinge upon whether the inventors or manufacturers of the prior art were aware of a given property, or whether the previous inventors felt such a property was worthy of mentioning. Rather the question is, does the prior art device meet the claim.
The applicant has characterized the formulas within the specification and claims as being just mathematical concepts. That is incorrect. All the equations within the instant specification are the result of the physics of optics and optical interference. For example, equation (1) λ1=2x(n1xd1+n2xd2)/na has been explicitly recognized as the property of alternating refractive index layers see Hebrink, paragraphs [0035]-[0036]: “The optical layers can each be a quarter-wavelength thick or the optical layers can have different optical thicknesses, as long as the sum of the optical thicknesses for the layer pair is half of a wavelength (or a multiple thereof)… The equation λ/2=n1d1+n2d2 can be used to tune the optical layers to reflect light of wavelength λ at a normal angle of incidence.”
With respect to equation (4), equation (4) is simply a restatement of equation (1) but for oblique incidence. The distance traveled within a layer, the thickness of the layer, and the surface of the layer make a right triangle, where the distance traveled at oblique incidence is the hypotenuse. The appropriate angles θ1 and θ2 are determined by Snell’s law. Thus, like equation (1), equation (4) is just an expression of the known physics of alternating refractive index layers.
With respect to equation (5), there are no structural differences between a beam splitter where equation (5) is calculated after the beam splitter has been designed or manufactured relative to a beam splitter where equation (5) was calculated by a designer or manufacturer before the beam splitter was produced.
With respect to equation (6), likewise there are no structural differences between a beam splitter where equation (6) is calculated after the beam splitter has been designed or manufactured relative to a beam splitter where equation (6) was calculated by a designer or manufacturer before the beam splitter was produced. To put it another way, the layers of the prior art are already arranged according to equations (1) or (4). Whether the wavelength calculated from equation (6) is transmitted or not, is not a question about prior art, but rather a question of the physical validity of equation (6).
In other words, to argue that equations 5 or 6 are not true of the prior art is to bring into question the validity of these expressions. To put it another way, if the alternating layers of the instant application that meet equations 5 and 6 achieve a high transmittance of the center wavelength of the infrared light so defined, then so will the alternating layers of the prior art.
Regarding applicant’s specific arguments, these will be addressed hereafter.
In the first 4 paragraphs under the heading “Claim Rejections under 35 U.S.C. §102/§103” on page 15 of 20 of the applicant’s remarks the applicant argues that to evaluate the prior art using the equations of the instant application is improper hindsight reconstruction. This argument is not persuasive for at least the reasons explained above. The question of anticipation hinges solely on whether the prior art structures anticipate the claim, not whether the previous inventors explicitly discussed any of these attributes.
In the last two paragraphs of page 15 of 20 and the first two paragraphs of page 16 of 20, the applicant argues that because Sakamoto only discusses the transmittance of infrared light up to 1,500 nm, that this explicitly limits the performance ratio in Sakamoto to a maximum of approximately 3.75 times, which is a direct negative teaching against the present invention's claim requirement that the wavelength of the infrared light is 10 times or more than the wavelength of the visible light. This argument is not persuasive for at least the reasons explained above. Further, interpreting Sakamoto’s silence regarding the optical properties of the beam splitter for wavelengths longer than 1,500 nm as a teaching away from the beam splitter transmitting light of longer wavelengths is to construct a teaching that isn’t present out of thin air. Lastly, either the physics of equations (5) and (6) is correct, and Sakamoto anticipates claim 1, or the instant application has much more serious issues.
In the third to sixth paragraphs of page 16 of 20 of the applicant’s remarks the applicant argues “As shown in Figure 5 of Sakamoto, the multilayer filter contains layers designed with six different physical thicknesses distributed across different optical paths. In contrast, the multiple refractive index layer of the present invention is structured around alternating layers with exactly two alternating physical thicknesses (d1 and d2) that satisfy the specific geometric relationship of Equation (1). Sakamoto completely fails to teach or suggest a structure with two alternating thicknesses satisfying the claimed Equation (1).” This argument is not persuasive for at least the following reasons.
Firstly, as is readily apparent from claim 11 and the fourth and fifth embodiments of the instant application, the beam splitter of the present invention can also be comprised of more than one set of alternating refractive index layers. This is a similarity between Sakamoto and the instant application, not a difference.
Secondly, equations (1), (7) and (8) reflect the physics of interference that is occurring in any subset of alternating layers. Just like the instant application, Sakamoto has chosen to broaden the spectrum of highly reflected visible light by using more than set of alternating layers each with their own central design wavelength.
Thirdly, there is nothing in claims 1, 7 or 11 that precludes the presence of additional pairs of alternating layers. Thus, the above argument cannot be persuasive because it is not commensurate with the claims.
With respect to the argument under the heading #B Rejection of Claims 1 and 7 over US 2011/0255155 Al ("Hebrink"), these arguments are largely moot, because the rejections with Hebrink as the primary reference have been withdrawn in light of the amendments to the claims to further specify that the reflected light is visible light and the transmitted light is infrared light. In light of this amendment, the previous rejection that relied upon ultraviolet and infrared light is no longer applicable.
However, a few comments are worth noting.
Under the heading “1. Material Difference (Inorganic vs. Organic):” on page 17 of 20 of the applicant’s remarks the applicant argues “The present invention utilizes a multilayer structure comprising inorganic materials (as shown in Paragraph [0083], ZnS as the first refractive index layer and MgF2 as the second refractive index layer). In contrast, Hebrink is strictly directed to an organic polymer multilayer optical film (Hebrink Claim 1). Because organic polymers have entirely different mechanical, thermal, and dispersion properties compared to inorganic materials, the mathematical calculations and physical properties of Hebrink cannot be inherently or naturally imported to the inorganic beam splitter of the present invention.”
This argument is not persuasive for at least the following reasons. Firstly, Counsel's assertion that organic versus inorganic materials would result in different wavelengths of reflected or transmitted light is merely an argument unaccompanied by evidentiary support, and, thus, is insufficient to rebut Examiner's finding of obviousness. Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). MPEP §§ 2145, 716.01(c). Secondly, Counsel’s assertion is not correct. Notice that none of the mechanical, thermal, and dispersion properties appear in any of the equations of the instant application. The reason that they do not appear is because none of these properties change the physics of interference.
Under the heading “2. Structural Contact Difference:” on page 17 of 20 of the applicant’s remarks the applicant argues “In the present invention, the base layer (120) is in direct physical contact with the multiple refractive index layer (110) (see Figure 1). In Hebrink, the glass substrate does not have direct contact with the core optical stack (140) because it is structurally separated by intervening boundary layers (120) and skin layers (130) (see Figure 1A of Hebrink).” In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., direct contact between the base layer and the multiple refractive index layer) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Under the heading “3. Difference in Formulas:” in the first paragraph of page 18 of 20 of the applicant’s remarks the applicant argues “Hebrink discloses the classic equation λ2= n1d1 + n2d2 in Paragraph [0036] for normal incidence. However, this is distinct from Equation (1) of the present invention, which includes the generalized divisor na representing any natural number:
λ1= 2 x (n1d1 + n2d2) / na”. Firstly, it is important to note that the applicant has not correctly reproduced the formula from Hebrink which actually says: λ/2= n1d1 + n2d2. Secondly, that the prior art meets the specific case where na =1, is sufficient to meet the claim. The question of anticipation is whether or not the actual physical layers of the prior art meet all the limitations, not whether the designer of the prior art contemplated other additional configurations. Lastly, that interference layers could come in thicknesses that are odd multiples of λ/4, not just λ/4 is well-known, see e.g. Ishikawa US 2002/0070931 A1 (paragraph [0111]): “The optical size of the gap portion 12 changes in a binary manner or continuously between "an odd multiple of .lambda./4" and "an even multiple of .lambda./4 (including 0)". Accordingly, the amount of reflection, transmission, or absorption of incident light changes in a binary manner or continuously.” That the current expression has already been generalized from the simple expression of λ/4= n1d1 = n2d2 to the more general case of λ/2= n1d1 + n2d2, accounts for why in the current instance all integer multiples are allowed, rather than just odd multiples.
The third and fourth paragraphs of page 18 of 20 reiterate the previous arguments with respect to Hebrink, which are either moot and/or have been addressed above.
In the first two paragraphs under the heading “#C. Rejection of Claim 11 over the combination of Sakamoto, Hebrink, and Kikuchi (US 2021/0030263 Al)” on page 18 of 20 of the applicant’s remarks the applicant characterizes the rejection of claim 11 and noting that they are traversing this rejection. No specific argument is made in these first two paragraphs.
In the third paragraph under the heading “#C. Rejection of Claim 11” on page 18 of 20 of the applicant’s remarks the applicant first argues “As established above, both Sakamoto and Hebrink fail to teach a multiple refractive index layer that achieves a wavelength ratio of 10 times or more.” The arguments underlying this conclusion have been addressed above.
Next in this paragraph, the applicant alleges that “They also fail to teach alternating layers with physical thicknesses that satisfy the structural relations of Equations (13) and (14).” This argument is not supported by any explanation of why the applicant believes this to be true. Given that both Sakamoto and Hebrink teach layers that meet equation (1), and Hebrink explains how equation (1) should be modified for oblique incidence, this statement by the applicant is not correct. Moreover, as pointed out above, the question is not whether any previous authors have recognized what the central wavelength of reflection will be as a function of the angle of oblique incidence. Rather the question is whether the prior art structures perform as claimed.
In the fourth and fifth paragraphs under the heading “#C. Rejection of Claim 11” on page 18 of 20 of the applicant’s remarks the applicant argues that Kikuchi does not cure the deficiencies of Sakamoto and Hebrink with respect to equations (13) and (14). As explained above, there are no such deficiencies, and thus Kikuchi is not needed to cure them.
In the last two lines of page 18 and the first three lines of page 19 of 20 of the applicant’s remarks the applicant concludes that “since none of the cited references disclose or suggest the structure of alternating refractive index layers satisfying the exact formulas of Equations (13) and (14) at an oblique angle a person of ordinary skill in the art would have no motivation or guide to arrive at the structure of Claim 11.” The arguments underlying this conclusion have been addressed above.
Under heading “#D” on page 19 of 20 of the applicant’s remarks the applicant argues that dependent claims 2, 5-6, 9-10 and 18-23 are allowable for at least the same reasons as claims 1, 7 and 11. The arguments with regards to the independent claims have been addressed above.
Under the heading “No Disclaimers or Disavowals” on page 19 of 20 of the applicant’s remarks the applicant does not make any new arguments with respect to the patentability of the claims.
The request for an interview with the examiner in the first paragraph of page 20 of 20 of the applicant’s remarks is denied. The nature and number of the outstanding issues of patentability are such that it does not appear that an interview would result in expediting allowance of the application at this time. See MPEP §713.01 (IV) “An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant and thereby advance the prosecution of the application. … Where a complete reply to a first action includes a request for an interview, the examiner, after consideration of the reply, should grant such an interview request if it appears that the interview would result in expediting the allowance of the application.”
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 CARA E RAKOWSKI whose telephone number is (571)272-4206. The examiner can normally be reached 9AM-4PM ET M-F.
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 L 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CARA E RAKOWSKI/ Primary Examiner, Art Unit 2872
1 See MPEP §2112(I) “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).” and (II) There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)
2 See MPEP §2112(I) “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).” and (II) There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)
3 See MPEP §2112(I) “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).” and (II) There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)
4 See MPEP § 2131.02(III). A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
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