Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments, see Pages 7-8, Rejection under 35 U.S.C. § 102, filed 03/12/2026, with respect to the rejection of claims 1-6, 8-11 and 13-19 under 35 U.S.C. § 102 have been fully considered and are persuasive. Therefore, the rejection of said claims in Office Action of 12/15/2025 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of a different interpretation of the previously applied reference US-2019/0353522-A1.
Applicant’s arguments, see Page 8, Rejection under 35 U.S.C. § 103, filed 03/12/2026, with respect to dependent claims 7, 12 and 20 have been fully considered but are moot because a new ground(s) of rejection of the independent claims is made in view of a different interpretation of the previously applied reference US-2019/0353522-A1. The rejection of said claims in Office Action of 12/15/2025 is maintained.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claim(s) 1-6, 8-11 and 13-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scholtz et al. (US 2019/0353522 A1).
Regarding independent Claim 1, Scholtz discloses an optical device (Figure 1A: element 100 is an apparatus; [0063]), comprising:
an aperture (Figure 1A: element 104 is an input optic; [0015] “The first input optic may be … an input aperture”);
a diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”) positioned to diffuse light (implicit for a diffuser to diffuse light) received by the aperture (Figure 1A: element 104 is an aperture which receives electromagnetic energy 106; [0064] “The apparatus 100 also includes one or more input optics 104 positioned and oriented to cause input electromagnetic energy (represented by a set of three lines 106) incident on the input optic(s) to pass”) to create diffused light (implicit for a diffuser to create diffused light);
a reflective optical element ([0021] “a reflection grating”);
a prism ([0020] “a prismatic element”);
an optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”); and
an optical sensor (Figure 1A: element 116 is a detector; [0068] “detector(s) 116 may advantageously take the form of one or more optical detectors, sensors or transducers that are responsive to optical wavelengths or frequencies of electromagnetic energy, e.g., light in the visible, infrared and/or ultraviolet portions of the electromagnetic spectrum”), but does not specifically teach:
wherein the reflective optical element is positioned to receive the diffused light from the diffusive optical element and reflect the diffused light to the prism, and
wherein the prism is positioned to receive the diffused light from the reflective optical element and direct the diffused light to the optical filter.
However, Scholtz, in a different embodiment – see Figure 7A – teaches that the reflective optical element (Figure 7A: element 702 is an optical element; [0106] “optical element 702 may include a reflector”) is positioned (Figure 7A; [0106] “in some implementations two or more optical elements of the same or different type may be positioned adjacent either of the top major face 108 and the bottom major face 112”) to receive the diffused light (Figure 7A: reflector element 702 is interpreted to receive light when “positioned adjacent either of the top major face 108 and the bottom major face 112”) from the diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”) and reflect the diffused light (implicit for a reflector to reflect light) to the prism ([0020] “a spectrally selective element disposed within or on the substrate. The spectrally selective element may include at least one of: … a prismatic element”), and
the prism is positioned ([0020] “a spectrally selective element disposed within or on the substrate. The spectrally selective element may include at least one of: … a prismatic element”) to receive the diffused light (“a prismatic element” is interpreted to receive light when “disposed within or on the substrate”) from the reflective optical element (Figure 7A: element 702 is an optical element; [0106] “optical element 702 may include a reflector”) and direct the diffused light to the optical filter (Figure 7A; [0075] “electromagnetic energy may be shaped and translated along a folded optical path … to the output optic 110”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the optical device of Scholtz with the embodiment of Figure 7A, wherein the reflective optical element is positioned to receive the diffused light from the diffusive optical element and reflect the diffused light to the prism, and wherein the prism is positioned to receive the diffused light from the reflective optical element and direct the diffused light to the optical filter, “to provide the desired optical features for electromagnetic energy to enter the substrate, propagate within the substrate and/or exit the substrate.” (Scholtz, para 106)
Regarding Claim 2, modified Scholtz discloses the optical device of claim 1, wherein the reflective optical element ([0021] “a reflection grating”) is configured to reflect (implicit for a reflection grating to reflect light) one or more particular ranges of wavelengths of the diffused light ([0057] “to create separation in the wavelength distribution of electromagnetic energy incident upon the feature”, wherein “separation in the wavelength distribution of electromagnetic energy” is interpreted as ranges of wavelengths of light) to the prism ([0020] “a prismatic element”).
Regarding Claim 3, modified Scholtz discloses the optical device of claim 2, wherein the reflective optical element ([0021] “a reflection grating”) is configured to absorb wavelengths of the diffused light that are not within the one or more particular ranges (it has been held that a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (1987)).
Regarding Claim 4, modified Scholtz discloses the optical device of claim 1, wherein a folded optical path ([0075] “a folded optical path”) formed by the diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”), the reflective optical element ([0021] “a reflection grating”), the prism ([0020] “a prismatic element”), and the optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”) is configured to distribute the diffused light across an input surface of the optical filter (Figure 1A; [0075] “the electromagnetic energy may be shaped and translated along a folded optical path … to the output optic 110”).
Regarding Claim 5, modified Scholtz discloses the optical device of claim 1, wherein a folded optical path ([0075] “a folded optical path”) formed by the diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”), the reflective optical element ([0021] “a reflection grating”), the prism ([0020] “a prismatic element”), and the optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”) is configured to cause the diffused light to cover 95% or more (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)) of an input surface of the optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”).
Regarding Claim 6, modified Scholtz discloses the optical device of claim 1, wherein a length (Figure 1A; [0065] “a length L of the substrate 102”) of a folded optical path ([0075] “a folded optical path”; Figure 1A: element 102 is a substrate; [0063]) formed by the diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”), the reflective optical element ([0021] “a reflection grating”), the prism ([0020] “a prismatic element”), and the optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”) is greater than a distance between the aperture and an input surface of the optical filter (Figure 1A: length L of substrate 102 is greater than vertical distance T between input optic aperture 104 and output optic filter 110).
Regarding Claim 8, modified Scholtz discloses the optical device of claim 1, wherein the reflective optical element ([0021] “a reflection grating”) and the prism ([0020] “a prismatic element”) are configured to cause light beams of the diffused light to fall incident (Figure 1A; [0075] “Photons that are incident on the output optic 110”) on an input surface of the optical filter (Figure 1A; [0075] “the electromagnetic energy may be shaped and translated along a folded optical path … to the output optic 110”) at angles that satisfy an incidence angle threshold ([0075] “to limit the range of propagation angles of the electromagnetic energy”).
Regarding Claim 9, modified Scholtz discloses the optical device of claim 1, wherein the optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”) comprises a channel that is configured to receive an individual light beam (implicit for an optical filter to receive light), of the diffused light, and pass the individual light beam (Figure 1A: output optic filter element 110 passes electromagnetic energy 114 to detector 116) to a corresponding sensor element of the optical sensor (Figure 1A: element 116 is a detector; [0068] “detector(s) 116 may advantageously take the form of one or more optical detectors, sensors or transducers that are responsive to optical wavelengths or frequencies of electromagnetic energy, e.g., light in the visible, infrared and/or ultraviolet portions of the electromagnetic spectrum”).
Regarding Claim 10, modified Scholtz discloses the optical device of claim 1, wherein the optical sensor (Figure 1A: element 116 is a detector; [0068] “detector(s) 116 may advantageously take the form of one or more optical detectors, sensors or transducers that are responsive to optical wavelengths or frequencies of electromagnetic energy, e.g., light in the visible, infrared and/or ultraviolet portions of the electromagnetic spectrum”) is configured to capture spectral information associated with the diffused light ([0070] “can be detected or sensed by a detector or sensor, and converted into information (e.g., raw information in analog or digital form) that is representative of wavelength distribution in the incident light”).
Regarding Claim 11, modified Scholtz discloses the optical device of claim 1, wherein the prism ([0020] “a prismatic element”) is configured to internally reflect the diffused light one or more times (it has been held that a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (1987)).
Regarding independent Claim 13, Scholtz discloses an optical device (Figure 1A: element 100 is an apparatus; [0063]), comprising:
a diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”);
a reflective optical element ([0021] “a reflection grating”);
a prism ([0020] “a prismatic element”); and
an optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”), but does not specifically teach:
wherein the reflective optical element is positioned to reflect diffused light, received from the diffusive optical element, to the prism, and
wherein the prism is positioned to direct the diffused light, received from the reflective optical element, to the optical filter.
However, Scholtz, in a different embodiment – see Figure 7A – teaches that the reflective optical element (Figure 7A: element 702 is an optical element; [0106] “optical element 702 may include a reflector”) is positioned (Figure 7A; [0106] “in some implementations two or more optical elements of the same or different type may be positioned adjacent either of the top major face 108 and the bottom major face 112”) to reflect diffused light (implicit for a reflector to reflect light), received from the diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”), to the prism ([0020] “a spectrally selective element disposed within or on the substrate. The spectrally selective element may include at least one of: … a prismatic element”), and
the prism is positioned ([0020] “a spectrally selective element disposed within or on the substrate. The spectrally selective element may include at least one of: … a prismatic element”) to direct the diffused light (implicit for a prism to direct light via refraction and/or internal reflection), received from the reflective optical element (Figure 7A: element 702 is an optical element; [0106] “optical element 702 may include a reflector”), to the optical filter (Figure 7A; [0075] “electromagnetic energy may be shaped and translated along a folded optical path … to the output optic 110”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the optical device of Scholtz with the embodiment of Figure 7A, wherein the reflective optical element is positioned to reflect diffused light, received from the diffusive optical element, to the prism, and wherein the prism is positioned to direct the diffused light, received from the reflective optical element, to the optical filter, “to provide the desired optical features for electromagnetic energy to enter the substrate, propagate within the substrate and/or exit the substrate.” (Scholtz, para 106)
Regarding Claim 14, modified Scholtz discloses the optical device of claim 13, wherein the prism ([0020] “a prismatic element”) is configured to internally reflect the diffused light a plurality of times (it has been held that a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (1987)).
Regarding Claim 15, modified Scholtz discloses the optical device of claim 13, wherein the reflective optical element ([0021] “a reflection grating”) is configured to reflect (implicit for a reflection grating to reflect light) one or more particular ranges of wavelengths of the diffused light ([0057] “to create separation in the wavelength distribution of electromagnetic energy incident upon the feature”, wherein “separation in the wavelength distribution of electromagnetic energy” is interpreted as ranges of wavelengths of light) to the prism ([0020] “a prismatic element”).
Regarding Claim 16, modified Scholtz discloses the optical device of claim 15, wherein the reflective optical element ([0021] “a reflection grating”) is configured to be partially absorbing for wavelengths of the diffused light that are not within the one or more particular ranges (it has been held that a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (1987)).
Regarding Claim 17, modified Scholtz discloses the optical device of claim 13, wherein a folded optical path ([0075] “a folded optical path”) formed by the diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”), the reflective optical element ([0021] “a reflection grating”), the prism ([0020] “a prismatic element”), and the optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”) is configured to cause the diffused light to cover 95% or more (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)) of an input surface of the optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”).
Regarding independent Claim 18, Scholtz discloses an optical device (Figure 1A: element 100 is an apparatus; [0063]), comprising:
an aperture (Figure 1A: element 104 is an input optic; [0015] “The first input optic may be … an input aperture”);
a diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”) disposed over the aperture ([0021] “an optical element disposed at least proximate the first major face … of the substrate”; Figure 1A: input optic element 104 is disposed on the aperture, which itself is disposed on the first major face element 108 of substrate element 102);
a reflective optical element ([0021] “a reflection grating”);
a prism ([0020] “a prismatic element”); and
an optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”), but does not specifically teach:
wherein the reflective optical element is positioned to reflect diffused light, received from the diffusive optical element, to the prism, and
wherein the prism is positioned to direct the diffused light, received from the reflective optical element, to the optical filter.
However, Scholtz, in a different embodiment – see Figure 7A – teaches that the reflective optical element (Figure 7A: element 702 is an optical element; [0106] “optical element 702 may include a reflector”) is positioned (Figure 7A; [0106] “in some implementations two or more optical elements of the same or different type may be positioned adjacent either of the top major face 108 and the bottom major face 112”) to reflect diffused light (implicit for a reflector to reflect light), received from the diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”), to the prism ([0020] “a spectrally selective element disposed within or on the substrate. The spectrally selective element may include at least one of: … a prismatic element”), and
the prism is positioned ([0020] “a spectrally selective element disposed within or on the substrate. The spectrally selective element may include at least one of: … a prismatic element”) to direct the diffused light (implicit for a prism to direct light via refraction and/or internal reflection), received from the reflective optical element (Figure 7A: element 702 is an optical element; [0106] “optical element 702 may include a reflector”), to the optical filter (Figure 7A; [0075] “electromagnetic energy may be shaped and translated along a folded optical path … to the output optic 110”).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the optical device of Scholtz with the embodiment of Figure 7A, wherein the reflective optical element is positioned to reflect diffused light, received from the diffusive optical element, to the prism, and wherein the prism is positioned to direct the diffused light, received from the reflective optical element, to the optical filter, “to provide the desired optical features for electromagnetic energy to enter the substrate, propagate within the substrate and/or exit the substrate.” (Scholtz, para 106)
Regarding Claim 19, modified Scholtz discloses the optical device of claim 18, wherein the aperture (Figure 1A: element 104 is an input optic; [0015] “The first input optic may be … an input aperture”) includes an aperture stop ([0013] “The first input optic may include an input aperture bordered by a reflective material. The first input optic may include an input aperture bordered by an absorptive material”) to control a range of incidence angles of light ([0053] “electromagnetic energy may be admitted at an angle to a major face of a substrate through an aperture formed via a patterned gap in a reflective or absorptive material (e.g., film or coating)”) that enters the optical device via the aperture (Figure 1A; [0064] “one or more input optics 104 positioned and oriented to cause input electromagnetic energy (represented by a set of three lines 106) incident on the input optic(s) to pass into the substrate 102”).
Claim(s) 7 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scholtz et al. (US 2019/0353522 A1) in view of Wang et al. (US 2017/0184453 A1).
Regarding Claim 7, modified Scholtz discloses the optical device of claim 6, but does not specifically teach that the length of the folded optical path is at least twice the distance between the aperture and the input surface of the optical filter.
However, Wang, in the same field of spectrometers, teaches that the length of the folded optical path ([0054] “total length of the geometric light path from the light source to the detector”; Figure 3: element 301 is a light source, [0036]; element 320 is a detector, [0040]) is at least twice the distance between the aperture and the input surface of the optical filter ([0054] “longest dimension of the optical assembly of the photometer may be kept to less than ½ … the total length of the geometric light path from the light source to the detector”, which is conversely understood as “the total length of geometric light path from the light source to the detector” being more than twice the “longest dimension of the optical assembly of the photometer”).
Therefore, it would have been obvious to a person of ordinary skill in the art,
before the effective filing date of the claimed invention, to modify the optical device of
Scholtz with the teachings of Wang, wherein the length of the folded optical path is at least twice the distance between the aperture and the input surface of the optical filter, because “The optical assembly disclosed herein enables high spectral resolution
without the need for long focal length optics. In accordance with the embodiments
disclosed herein, dimensions of a spectrometer can be largely reduced to a size much
smaller than conventional handheld spectrometers such that the disclosed spectrometer
is small enough to be easy to carry and convenient for material identification in field.” (Wang, para 52)
Regarding Claim 20, modified Scholtz discloses the optical device of claim 18, wherein a length (Figure 1A; [0065] “a length L of the substrate 102”) of a folded optical path ([0075] “a folded optical path”; Figure 1A: element 102 is a substrate; [0063]) formed by the diffusive optical element ([0021] “an optical element … comprising at least one of: … a diffuser”), the reflective optical element ([0021] “a reflection grating”), the prism ([0020] “a prismatic element”), and the optical filter (Figure 1A: element 110 is an output optic; [0053] “an output optic (e.g., aperture, diffuser, filter, photonic crystal structure)”) is greater than a distance between the aperture and an input surface of the optical filter (Figure 1A: length L of substrate 102 is greater than vertical distance T between input optic aperture 104 and output optic filter 110), but does not specifically teach that a length of a folded optical path formed by the diffusive optical element, the reflective optical element, the prism, and the optical filter is at least two times greater than a distance between the aperture and an input surface of the optical filter.
However, Wang, in the same field of spectrometers, teaches that a length of a folded optical path ([0054] “total length of the geometric light path from the light source to the detector”; Figure 3: element 301 is a light source, [0036]; element 320 is a detector, [0040]) is at least two times greater than a distance between the aperture and an input surface of the optical filter ([0054] “longest dimension of the optical assembly of the photometer may be kept to less than ½ … the total length of the geometric light path from the light source to the detector”, which is conversely understood as “the total length of geometric light path from the light source to the detector” being more than twice the “longest dimension of the optical assembly of the photometer”).
Therefore, it would have been obvious to a person of ordinary skill in the art,
before the effective filing date of the claimed invention, to modify the optical device of Scholtz with the teachings of Wang, such that a length of a folded optical path formed by the diffusive optical element, the reflective optical element, the prism, and the optical filter is at least two times greater than a distance between the aperture and an input surface of the optical filter, because “The optical assembly disclosed herein enables high spectral resolution without the need for long focal length optics. In accordance with the embodiments disclosed herein, dimensions of a spectrometer can be largely reduced to a size much smaller than conventional handheld spectrometers such that the disclosed spectrometer is small enough to be easy to carry and convenient for material identification in field.” (Wang, para 52)
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Scholtz et al. (US 2019/0353522 A1) in view of Weiss et al. (DE 102018203840 A1).
Regarding Claim 12, modified Scholtz discloses the optical device of claim 1, but does not specifically teach that the diffusive optical element is positioned on an exterior surface of the optical device.
However, Weiss, in the same field of spectrometers, teaches that the diffusive optical element (Figure 1: element 102 is a diffuser element; [0022]) is positioned on an exterior surface (Figure 1: diffuser element 102 is positioned on an exterior surface) of the optical device (Figure 1: element 100 is a spectrometer; [0022]).
Therefore, it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the optical device of Scholtz with the teachings of Weiss, wherein the diffusive optical element is positioned on an exterior surface of the optical device, because “improved light distribution can improve the light efficiency of the spectrometer, … more light can fall on the detector, which means shorter measurement times and better signal quality can be achieved, … measurement artifacts can be avoided and the effort for data processing can be minimized.” (Weiss, para 10)
Conclusion
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/AKBAR H. RIZVI/
Examiner, Art Unit 2877
/TARIFUR R CHOWDHURY/Supervisory Patent Examiner, Art Unit 2877