DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Remark
This Office Action is in response to applicant’s amendment filed on September 14, 2026, which has been entered into the file.
By this amendment, the applicant has amended claims 1, 7, and 9.
Claims 1-15 remain pending in this application.
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 1-15 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.
Claims 1, 10 and 13 recite the terms “P(ld)”, “P(lF)” and “P(lC)” that the specification and claims fails to explicitly and adequately disclose what are these expressions and terms. It appears that they are mathematical functions yet without explicitly rules and relationships that objectively define the functional relationship between P(l) and l respectively.
Claims 2-9, 11-12 and 14-15 inherit the rejection from their respective based claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 10 and 13 recite the terms “P(ld)”, “P(lF)” and “P(lC)” that are indefinite and confusing since the specification and claims fail to explicitly define what are these functions. It is therefore impossible to objectively evaluate the values of these terms. This means it is impossible to define the value of the Abbe numbers via the expressions disclosed in claims 1, 10 and 13. The expression “-0.2<1/n0<0.2” and the expression “-0.02<1/n0,gF<0.02” cannot be established since it is impossible to determine the values of “P(ld)”, “P(lF)” and “P(lC)”.
For the same reasons, the expression “1/fDOE = -2m(l/l0)*P(l)U2” recited in claim 5 is also rejected since this expression is indefinite.
The scopes of the claims therefore are unclear and indefinite.
The term “fmenis” recited in claim 6 is confusing and indefinite since it is not objectively defined.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-7, and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over the US patent application publication by Eguchi et al (US 2013/0194487 A1).
Claim 1 has been amended to necessitate the new grounds of rejection.
The claims are under 35 USC 112, first and second paragraphs, rejection. The scopes of the claims are unclear and can only be examined in the broadest interpretation.
Eguchi teaches, with regard to claim 1, an image pickup system that is comprised of a diffractive surface (DOE, Figure 1A) that implicitly has a controlled wavelength dispersion characteristics wherein the Abbe number for the diffractive optical part is defined by the expression of nd = ld/( lF- lC), (equation (b)), please see paragraph [0108]) or 1/nd = ( lF- lC)/ ld. The ld is d-line wavelength, lF is F-line wavelength and lC C-line wavelength of the incident light beams.
Eguchi also teaches that the phase of the diffractive surface is defined by f (H) = (2pm/l)(C2H2+C4H4+…+C2iH2i) (paragraph [0106], equation (a)), with H being the distance from the optical axis to the surface point on the diffractive surface, m being diffraction order. The optical path length, y may be defined as (C2H2+C4H4+…+C2iH2i). This means the equation may be rewritten as (l/2pm)*f (H) = (C2H2+C4H4+…+C2iH2i) = y, or optical path length. And one can deduce that wavelength l is proportional to optical path y. The Abbe number 1/nd = ( lF- lC)/ ld is also equal to ( yF- yC)/ yd.
This reference has met all the limitations of the claims. Eguchi further teaches that the material for the diffractive surface may further be dispersive material that relative partial dispersion for different line of the wavelength may be defined, (please see paragraph [0076] qg = (Ng - NF(/(NF - NC)). This reference however does not teach explicitly that the Abbe number has the expression as claimed ( i.e. 1/nd = ( lFP(lF)- lCP(lC))/ ldP(ld)). However, since the specification and the claims fail to disclose what considered to be the function of “P(ld)”, “P(lF)” and “P(lC)”, this feature cannot be examined further. It is noted that if P(l) is defined by the relationship disclosed in the specification of the instant application, i.e. y(l) = m* (l/l0)P(l)y0, the expression for the Abbe number taught by Eguchi will also be identical to the claimed expression.
Eguchi teaches that the diffractive surface may have an Abbe number of 55.8, (please see paragraph [0149]) which means the reciprocal of 94.9 is 0.01, that is within the range from -0.2 to 0.2.
This reference teaches that the diffractive surface is within an image pickup device, but does not teach explicitly to be a display optical system. But this limitation is only in the preamble and is therefore considered to be an intended use. 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 satisfying the claimed structural limitations. Ex parte Madham, 2 USPQ2d 1647 (1987).
Claim 1 has been amended to include the phrase “the display optical system directs an image of a display surface toward an observation side”.
Eguchi teaches that the diffractive surface of the optical system has an image plane (IP, Figure 1A) that may be an image sensor such as CCD camera, (please see paragraph [0030]). The CCD camera may implicitly comprise a display surface, (the same way as the instant application such as IP for digital camera Figures 1, 3, 5, 7, 9, 11, 13 of the instant application). The diffractive surface therefore is capable of directing an image from the display surface of the CCD camera or image sensor toward an observation side that is opposite to the image plane (IP) side. The direction of the image light is also true for the optical reversibility known in the art.
With regard to claims 2-3, Eguchi teaches that the optical system further comprises a refractive meniscus lens (second lens of first lens unit L1, please see paragraph [0028]).
With regard to claims 4 and 5, Eguchi teaches that the system comprises a lens having the diffractive surface (D, Figure 1A). Eguchi teaches that the focal length fDOE equals to 1/fD, wherein fD equals (l/l0)*(-2*C2), (please see equation (d)), wherein C2 is the coefficient for the second order term of the optical path length. Eguchi teaches that the coefficient C2 may assume negative value, (please see paragraph [0150]). This means the focal length of the diffractive surface is positive. Although this reference does not teach explicitly that the focal length also includes the factor P(l), but since this factor is rejected under 35 USC 112, first and second paragraphs, for the reasons set forth above, this feature therefore cannot be further examined. This reference does not teach explicitly about the ratio of the focal length of the diffractive surface and the focal length of the optical system has the cited values. However, since the function P(l) is not definitely defined, the values of the focal length therefore cannot be evaluated by the cited equation. It is within general level skilled in the art to design the focal length of the diffractive surface and the focal length of the system to meet the claimed ratio range for the benefit of allowing the optical system to have the desired optical properties.
With regard to claim 6, the focal length of the meniscus lens may assume the value of 421 nm and the focal length for the system is 585 nm, (please see paragraph [0149]), which make the ratio of the focal length of the meniscus lens to the focal length of the system is 0.72 which is within the range from -4 to 4.
With regard to claim 7, Eguchi teaches that the optical system from the observation side comprises a lens having a positive refractive power, (i.e. the first lens of the lens unit L1), a meniscus lens (i.e. the second lens of the lens unit L1) as a refractive lens that does not have the diffractive surface, (please see Figure 1A).
With regard to claim 9, Eguchi teaches that the optical system comprises a lens having the diffractive surface (D, please see Figure 1A) and a refractive lens that does not have the diffractive surface, (such as lens element in L3 lens unit). According to paragraph [0149] the distance between the lens surface that closet to the display surface and the distance farthest from the display surface including the lens with diffractive surface is about 330 nm (overall lens length) and the focal length of the optical system is 585 nm. This means the ratio of distance to the focal length is about 0.56. Although this does not fall within the clamed range such modification would have been obvious to one skilled in the art for it involves obvious matters of design choice to one skilled in the art to optimize the operation of the system.
With regard to claim 10, this claim is rejected under 35 USC 112, first and second paragraphs for the reasons stated above. It therefore can only be examined in the broadest interpretation. Eguchi teaches the Abbe number for the diffractive surface to be nd = ld/( lF- lC), (equation (b)), please see paragraph [0108]) or 1/nd = ( lF- lC)/ ld. For a wavelength region below F-line in a case where primary dispersion of the diffractive surface is g-line with lg be the wavelength of the incident light, the Abbe number should have the form no,gF = ld/( lg- lF), (equation (b)), please see paragraph [0108]) or 1/no,gF = ( lg- lF)/ ld. This reference however does not teach explicitly that the Abbe number has the expression as claimed ( i.e. 1/no,gF = ( lgP(lg)- lFP(lF))/ ldP(ld)). However, since the specification and the claims fail to disclose what considered to be the function of “P(ld)”, “P(lF)” and “P(lg)”, this feature cannot be examined further. It is noted that if P(l) is defined by the relationship disclosed in the specification of the instant application, i.e. y(l) = m* (l/l0)P(l)y0, the expression for the Abbe number taught by Eguchi will also be identical to the claimed expression. Although this reference does not teach explicitly about the value of the Abbe number is within the claimed range, such feature is either implicitly met or obvious modification by one skilled in the art to make the optical system has desired dispersion characteristics.
With regard to claim 11, Eguchi teaches that the optical system comprises a lens having the diffractive surface (D, Figure 1A) and a refractive lens that does not have the diffractive surface, wherein the lens having the diffractive surface and the refractive lens are arranged next to each other, (please see the doublet DOE in L1 lens unit).
With regard to claim 12, Eguchi teaches that the optical system comprises a lens having the diffractive surface (D, Figure 1A) and a refractive lens that does not have the diffractive surface. It is within general level knowledge in the art that the diopter adjustment may be performed by moving the lens having the diffractive surface and the refractive lens.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi as applied to claim 1 above, and further in view of the US patent application publication by Yoshida et al (US 2011/0090565 A1).
The optical system taught by Eguchi as described in claim 1 above has met all the limitations of the claim.
With regard to claim 8, this reference does not teach explicitly that the diffractive surface has a planar shape. Yoshida et al in the same field of endeavor teaches a lens system that has a diffractive surface (GD, Figure 1) and meniscus lens (L3), wherein the diffractive surface has a planar shape. It would then have been obvious to one skilled in the art to alternatively make the diffractive surface has a planar shape since it is known that the actual optical power may be provided by the diffractive structure.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over the US patent application publication by Eguchi et al (US 2013/0194487 A1) in view of US patent application publication by Guillot et al (US 2021/0080750 A1).
The claims are under 35 USC 112, first and second paragraphs, rejection. The scopes of the claims are unclear and can only be examined in the broadest interpretation.
Eguchi teaches, with regard to claim 13, an image pickup system that is comprised of a diffractive surface (DOE, Figure 1A) that implicitly has a controlled wavelength dispersion characteristics wherein the Abbe number for the diffractive optical part is defined by the expression of nd = ld/( lF- lC), (equation (b)), please see paragraph [0108]) or 1/nd = ( lF- lC)/ ld. The ld is d-line wavelength, lF is F-line wavelength and lC C-line wavelength of the incident light beams.
Eguchi also teaches that the phase of the diffractive surface is defined by f (H) = (2pm/l)(C2H2+C4H4+…+C2iH2i) (paragraph [0106], equation (a)), with H being the distance from the optical axis to the surface point on the diffractive surface, m being diffraction order. The optical path length, y may be defined as (C2H2+C4H4+…+C2iH2i). This means the equation may be rewritten as (l/2pm)*f (H) = (C2H2+C4H4+…+C2iH2i) = y, or optical path length. And one can deduce that wavelength l is proportional to optical path y. The Abbe number 1/nd = ( lF- lC)/ ld is also equal to ( yF- yC)/ yd.
This reference has met all the limitations of the claims. Eguchi further teaches that the material for the diffractive surface may further be dispersive material that relative partial dispersion for different line of the wavelength may be defined, (please see paragraph [0076] qg = (Ng - NF(/(NF - NC)). This reference however does not teach explicitly that the Abbe number has the expression as claimed ( i.e. 1/nd = ( lFP(lF)- lCP(lC))/ ldP(ld)). However, since the specification and the claims fail to disclose what considered to be the function of “P(ld)”, “P(lF)” and “P(lC)”, this feature cannot be examined further. It is noted that if P(l) is defined by the relationship disclosed in the specification of the instant application, i.e. y(l) = m* (l/l0)P(l)y0, the expression for the Abbe number taught by Eguchi will also be identical to the claimed expression.
Eguchi teaches that the diffractive surface may have an Abbe number of 55.8, (please see paragraph [0149]) which means the reciprocal of 94.9 is 0.01, that is within the range from -0.2 to 0.2.
This reference teaches that the diffractive surface is within an image pickup device, but does not teach explicitly to be a display optical system. But this limitation is only in the preamble and is therefore considered to be an intended use. 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 satisfying the claimed structural limitations. Ex parte Madham, 2 USPQ2d 1647 (1987).
This reference also does not teach explicitly that the diffractive surface is a metasurface. Guillot et al in the same field of endeavor teaches that a diffractive surface may comprise metasurface structure, (please see paragraph [0027]). It would then have been obvious to one skilled in the art to apply the teachings of Guillot et al to make the diffractive surface be alternatively comprised of metasurface structure for the benefit of making the optical system to have different design.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi as applied to claim 1 above, and further in view of US patent application publication by Kobayashi (US 2006/0285227 A1).
The optical system taught by Eguchi as described in claim 1 above has met all the limitations of the claim.
With regard to claim 14, Eguchi teaches the optical system may be an image pickup device but does not teach explicitly to include a display element having a display surface. Kobayashi teaches an optical apparatus comprises a diffractive surface and a meniscus lens wherein the optical apparatus may comprise a display element having a display surface in an image pickup apparatus. It would then have been obvious to one skilled in the art to apply the teachings of Kobayashi to include a display element for the benefit of making the apparatus as a display apparatus.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi and Guillot et al as applied to claim 13 above, and further in view of US patent application publication by Kobayashi (US 2006/0285227 A1).
The optical system taught by Eguchi in combination with the teachings of Guillot et al as described in claim 13 above has met all the limitations of the claim.
With regard to claim 15, Eguchi teaches the optical system may be an image pickup device but does not teach explicitly to include a display element having a display surface. Kobayashi teaches an optical apparatus comprises a diffractive surface and a meniscus lens wherein the optical apparatus may comprise a display element having a display surface in an image pickup apparatus. It would then have been obvious to one skilled in the art to apply the teachings of Kobayashi to include a display element for the benefit of making the apparatus as a display apparatus.
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.
Claim 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of copending Application No. 19/190,295 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims in the instant application and claims in the copending application claims an identical Abbe number expression for a diffractive surface in a lens system.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of copending Application No. 18/824,964 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims in the instant application and claims in the copending application claims an identical Abbe number expression for a diffractive surface in a lens system.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed September 14, 2026 have been fully considered but they are not persuasive. Applicant’s amendments to claim have been fully considered and they are rejected for the reasons set forth above.
In response to applicant’s arguments concerning the “optical path difference dispersion”, the specification fails to disclose how exactly to define, determine, measure and express it, since it makes the equation indefinite. By simply calling it an “optical path difference dispersion” does not give a definite description and therefore does not give an adequate written description for it. Since it is not clear how to express the function P of “optical path difference dispersion”, the equation depends on the function P therefore do not have an adequate written description either.
In response to applicant’s arguments concerning the expression of Abbe number, the applicant is respectfully reminded that an Abbe number is a measure of dispersion of a transparent material defined as ratio of its refractivity to its principal dispersion. It is based on dispersions of three wavelengths d-line, F-line and C-line. It is a known nature optical property of optical materials. The definition and the equation expression of the Abbe number is a known property of the art or a law of nature that is NOT an invention by the applicant.
In response to applicant’s arguments concerning cited Eguchi reference, it is noted that this reference teaches an optical system with a diffractive surface that has an Abbe number satisfies -0.2 < 1/n0 < 0.2, which therefore reads on the claims.
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 AUDREY Y CHANG whose telephone number is (571)272-2309. The examiner can normally be reached M-TH 9:00AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone B Allen can be reached at 571-272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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AUDREY Y. CHANG
Primary Examiner
Art Unit 2872
/AUDREY Y CHANG/Primary Examiner, Art Unit 2872
Prosecution Insights