DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s preliminary amendment dated 07/08/2026 has been received and entered. By the amendment, claims 23-43 are now pending in the application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/13/2024, 07/29/2025 and 05/05/2026 was filed and considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 23-26, 30-32, 38 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over De Sio et al., US 2016/0262874 A1, in view of Edwards et al., US 2014/0226214 A1.
Regarding claim 23, De Sio et al. disclose an optical device (figs 1-3, 5D) comprising:
. an electro-active lens 100/200/360 [disposed in the housing] including a liquid crystal lens element 104/220/371 configured to switch between a first state in which the liquid crystal lens element provides a first optical power for light in a first polarization state and a second state in which the liquid crystal lens element provides a second optical power different from the first optical power for light in a second polarization state ([0080], [0169])
. a power source 210 electrically coupled to the electro-active lens.
De Sio et al., however, do not disclose lens application of a gun scope. Edwards et al. do disclose a gun scope 10 (scope tube) using an active lens group 24/32 in a housing 14 (see figs. 1-2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the De Sio et al. electro-active lens over a gun scope, as shown by Edwards et al., to provide active display capabilities within a real-world viewer (Edwards et al., [0003]).
Re claim 24, wherein the second polarization state is orthogonal to the first polarization state (fig 5D, [0039]).
Re claims 25-26, wherein the liquid crystal lens element is configured to be actuated between the first state and the second state, e.g., absorption and/or transmitting (figs 4A-4B).
Re claims 30 and 32, the modification to De Sio et al. would further result the gun scope including a switch 30, a reticle 18 and a mounting element 26 (Edwards et al., figs 1-2).
Re claim 31, wherein the electro-active lens does not include a polarizer (De Sio et al., fig. 2A-2B, polymer network liquid crystal required no polarizer, [0086]).
Re claim 33, the modification to De Sio et al. would result the housing comprising a tube 14 and the electro-active lens being disposed at a first end of the tube (e.g., user side) and further comprising at least one lens 16 disposed at a second end of the tube (e.g., object side) and configured to transmit light from the second end of the tube to the first end of the tube (figs 1-2).
Re claim 38, the modification to De Sio et al. would inherently including a processor disposed in the housing and electrically coupled to the electro-active lens (according to a liquid crystal lens driving property).
Re claim 40, since the method of operating the device is merely a list of forming each component and each component must be formed to operate the device, the method of focusing would be inherent to the device.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 23-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-10, 13, 15, 16, 18-21 of U.S. Patent No. 11,526,029. Although the claims at issue are not identical, they are not patentably distinct from each other because both application and patent disclose a same gun scope and a method of operating/focusing of the same that including first/second electro-active lenses as claimed.
Application 18/813,354
US 11,526,029
23, 42-43
1, 15, 19
24
13
25-26
8
27-29
10
30
20
31
9
32, 33
16
34
1
35-37
10
38, 39
20, 21
40, 41
18, 10
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUNG T NGUYEN whose telephone number is (571)272-2297. The examiner can normally be reached 8:00 - 5:00.
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/DUNG T NGUYEN/Primary Examiner, Art Unit 2871
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