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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9 and 19-20, in the reply filed on 03/18/2026 is acknowledged.
Claims 10-18 and 21-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/18/2026.
Claim Objections
Claims 4-5 are objected to because of the following informalities: Claim 4 appears to contain extra text and should read “wherein the liquid crystal layer is at least one of less than of the substrates” or similar, for positive reference to the previously introduced first and second substrates. Appropriate correction is required.
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.
Claim(s) 1-2, 4, and 7-8 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Burgess, US 20120105773 A1.
Regarding claim 1, Burgess discloses a light valve (light valve assembly 21, Fig. 4) comprising:
A liquid crystal layer (layer between 23 and 23a comprised of liquid crystal 24 and spacers 25, Fig. 4, [0029]-[0030]) having a first and a second side (left and right sides of layer as shown in Fig. 4),
A first substrate (layers to left of liquid crystal layer comprised of PR layer 23 and ITO coating, Fig. 4, [0029]-[0030]) positioned in contact with the first side of the liquid crystal layer (Fig. 4), with the first substrate having a first semiconductor layer (photoresistor layer 23, Fig. 4, [0029]; the photoconductive/photoresistor layer comprising a semiconductor such as BSO, [0014], [0029]-[0030]); and
A second substrate (layers to right of liquid crystal layer comprised of PR layer 23a and ITO coating, Fig. 4, [0029]-[0030]) positioned in contact with the second side of the liquid crystal layer (Fig. 4), with the second substrate having a second semiconductor transparent electrode layer (ITO coating on glass electrode 22, Fig. 4, [0030]) and a second semiconductor layer (photoresistor layer 23a, Fig. 4, [0029]; the photoconductive/photoresistor layer comprising a semiconductor such as BSO, [0014], [0029]-[0030]); and
A plurality of laser transparent aperture support structures (spacer balls 25 being glass beads defining the aperture/gap between PR layers, Fig. 4, [0029]-[0030]) positioned within the liquid crystal layer to contact both the first and the second substrate (the balls/beads contact both PR layers and liquid crystal is filled into the gap, [0030], Fig. 4).
Regarding claim 2, Burgess discloses the light valve of claim 1, wherein the first substrate further comprises a first semiconductor transparent electrode layer (ITO coating on glass electrode 22, Fig. 4, [0030]) positioned in contact with the first semiconductor layer (Fig. 4, [0030]) to form a transmissive light valve (the light valve being selectively transmissive, [0007]).
Regarding claim 4, Burgess discloses the light valve of claim 1, wherein the gap into which the liquid crystal is filled is 15 microns as defined by the spacer beads between the PR layers ([0030]). Accordingly, the thickness of the liquid crystal layer is around 15 microns, which is entirely within the range of less than 100 microns thick.
Regarding claim 7, Burgess discloses the light valve of claim 1, wherein the plurality of laser transparent aperture support structures comprise spacer balls positioned within the liquid crystal layer and sized to maintain a uniform gap between the first and second substrates (spacer balls 25 that are 15 micron glass beads defining the gap into which the liquid crystal is filled, [0030], Fig. 4).
Regarding claim 8, Burgess discloses the light valve of claim 1, wherein the first and second substrates and the liquid crystal layer are attached to form a monolithic block (Fig. 4, [0030]).
Claim(s) 6 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Burgess, US 20120105773 A1, as applied to claim 1 above, with evidentiary support from Kim et al., Electrical, optical, and structural characteristics of ITO thin films, and Lawrence Livermore National Laboratory (“LLNL”), Ultrawide Bandgap Materials in the Spotlight.
Regarding claim 6, Burgess discloses the light valve of claim 1, wherein each of the substrates comprises at least one of a wide bandgap and ultrawide bandgap semiconductor material (each substrate comprises ITO and BSO, [0029]-[0030], each of which is a wide bandgap material as evidenced by Kim: ITO is a wide band gap semiconductor, Introduction, first paragraph; and LLNL: BSO is a wide bandgap material, p. 8, left column first paragraph).
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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burgess, US 20120105773 A1, as applied to claim 1 above, in view of Leard et al., US 20220128848 A1, provided in Applicant’s IDS.
Regarding claim 3, Burgess discloses the light valve of claim 1. Burgess does not disclose the first substrate further comprises a reflective layer positioned in contact with the first semiconductor layer to form a reflective light valve.
In the analogous art, Leard discloses a composite light valve comprising first and second substrates sandwiching a liquid crystal layer in a transmissive configuration (Fig. 1J, [0057]). Leard teaches that inclusion of a reflective coating in contact with a first semiconductor layer (photoconductor layer 140J) can produce an alternative reflective configuration ([0057]). Leard teaches a reflective layer can be used to avoid degradation of a liquid crystal layer in the presence of certain wavelengths ([0055]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the light valve of Burgess such that the first substrate further comprises a reflective layer positioned in contact with the first semiconductor layer to form a reflective light valve in order to produce an alternative configuration which could reduce degradation of the liquid crystal layer, as taught by Leard.
Regarding claim 5, Burgess discloses the light valve of claim 1. Burgess discloses each of the substrates comprises an ITO coating ([0016]-[0017], [0030]) and a PR layer ([0030]). Burgess discloses the PR layers are 0.3 mm thick ([0030]). Burgess is silent as to a thickness of the ITO coating and thus does not specifically disclose each of the substrates is less than 1 mm thick.
In the analogous art, Leard discloses liquid crystal light valves ([0002], [0027], [0034]) and teaches that transparent conductive oxide layers, such as an ITO layer, are typically less than 50 nm ([0042]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the ITO layer in Burgess was less than 50 nm as a typical dimension for such layers with a reasonable expectation of success in configuring the light valve, as taught by Leard. Note that where the only difference between the prior art and the claims is a recitation of relative dimensions, and a device having the claimed relative dimensions would not perform differently than the prior art device, then the claimed device is not patentably distinct. MPEP 2144.04(IV)(A). In implementing the modification, each of the substrates would then have been around 0.3 mm + <50 nm thick, which is entirely within the claimed range of less than 1 mm thick.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burgess, US 20120105773 A1, as applied to claim 1 above, in view of Furushima et al., US 5644373 A, alone or alternatively further in view of Piliavin et al., US 4256382 A.
Regarding claim 9, Burgess discloses the light valve of claim 1. Burgess is silent as to the first and second substrates and the liquid crystal layer being CTE matched to be within 10% of each other.
In the analogous art, Furushima discloses a liquid crystal device (Abstract) such as a light valve (col. 1, lines 11-14) and teaches configuring the substrates enclosing the liquid crystal to have thermal expansion coefficients to be within 10% of each other (col. 2, lines 32-36). Furushima teaches that matching the thermal expansion coefficients to be similar reduces the influence of a heat history during the assembly process and allows for restrictions on processing temperature to be relaxed (col. 8, lines 50-55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify at least the first and second substrates being CTE matched to be within 10% of each other in order to reduce the influence of a heat history between the parts and allow for restrictions on processing temperatures to be relaxed, as taught by Furushima.
Furushima does not specifically teach the first and second substrates being also matched with the liquid crystal layer to the same extent; however, in following the teachings to thermally match different layers of the light valve stack it would have been obvious to one of ordinary skill in the art to apply the same logic to the liquid crystal layer between the substrates to achieve the same beneficial effect of a similar thermal behavior, as taught by Furushima, such that the liquid crystal layer was also CTE matched to be within 10% of the substrates. One of ordinary skill in the art seeking to minimize differences in thermal behavior between layers of the light valve stack would also have considered an influence of the liquid crystal layer present between the substrates.
Alternatively, in the analogous art, Piliavin discloses liquid crystal devices having uniform thermal expansion coefficients (Abstract) and teaches matching the thermal expansion of the liquid crystal layer to have substantially the same thermal expansion as the materials to which it is connected in order to prevent warp or deterioration over time (col. 1, line 55 – col. 2, line 13).
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further specify the liquid crystal layer also being CTE matched to the first and second substrates within 10% of each other in order to provide the materials having substantially similar thermal expansion behavior to prevent warp or deterioration over time, as taught by Piliavin.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leard et al., US 20220128848 A1, provided in Applicant’s IDS, in view of Burgess, US 20120105773 A1.
Regarding claim 19, Leard discloses an additive manufacturing system (additive manufacturing system 300, Fig. 3, [0075]) comprising:
A laser system (laser source and amplifier(s) 312, Fig. 3, [0075]); a powder bed (bed 346 containing powder material 344, Fig. 3, [0075]); and a light valve (laser patterning unit 316 comprising a light valve, Fig. 3, [0075], [0077]) positioned to pattern light received from the laser system and direct the patterned light to the powder bed (Fig. 3). Leard does not detail structure of the light valve in the referenced embodiment and thus does not disclose the recited structure in this embodiment.
Leard further discloses a light valve (composite light valve, Fig. 1J, [0057]) comprising:
A liquid crystal layer (EO layer 130J, Fig. 1J, [0057]; the EO material being a liquid crystal material, [0034]-[0036]) having a first and a second side (left and right sides of layer 130J as shown in Fig. 1J),
A first substrate (layers to left of EO layer 130J, Fig. 1J) positioned in contact with the first side of the liquid crystal layer (Fig. 1J), with the first substrate having a first semiconductor layer (photoconductor layer 140J, Fig. 1J, [0057]; the photoconductor being a semiconductor such as bismuth silicate oxide (BSO), [0038]-[0039]); and
A second substrate (layers to right of EO layer 130J, Fig. 1J) positioned in contact with the second side of the liquid crystal layer (Fig. 1J), with the second substrate having a second semiconductor transparent electrode layer (TCO layer 112J, Fig. 1J; TCO being a transparent conductive oxide, [0037], [0042]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the specific structure of the disclosed light valve in the patterning system including a generic light valve in order to utilize a known structure suitable for the light patterning application as disclosed by Leard.
Leard does not disclose the light valve includes a second semiconductor layer and a plurality of laser transparent aperture support structures positioned within the liquid crystal layer to contact both the first and the second substrate.
In the analogous art, Burgess discloses a light valve as set forth above for claim 1 comprising an additional second semiconductor layer as part of a second substrate in contact with a second side of a liquid crystal layer 24 (photoresistor layer 23a, Fig. 4, [0029]; the photoconductive/photoresistor layer comprising a semiconductor such as BSO, [0014], [0029]-[0030]); and a plurality of laser transparent aperture support structures (spacer balls 25 being glass beads defining the aperture/gap between PR layers, Fig. 4, [0029]-[0030]) positioned within the liquid crystal layer to contact both the first and the second substrate (the balls/beads contact both PR layers and liquid crystal is filled into the gap, [0030], Fig. 4). Burgess discloses the second semiconductor layer improves light valve performance ([0010], [0013]) and the laser transparent aperture support structures form a supported gap between substrates into which the liquid crystal layer can be filled ([0030]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the light valve of Leard to include a second semiconductor layer and a plurality of laser transparent support structures positioned within the liquid crystal layer to contact both the first and the second substrate in order to improve the performance of the light valve and define an appropriately sized gap for the liquid crystal layer between substrates as taught by Burgess.
Regarding claim 20, modified Leard discloses the system of claim 19, and Leard discloses the light valve can form a two-dimensional light pattern (light valve is part of patterning unit 316 to form patterned light, [0075], [0077]).
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 1-2 and 4-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 7 of U.S. Patent No. 12596281 B1, in view of Burgess, US 20120105773 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 1, reference claim 1 discloses a light valve (light valve system) comprising a liquid crystal layer having a first and a second side (liquid crystal layer, being bracketed by the first and second light patterning stacks and thus having at least two sides); a first substrate positioned in contact with the first side of the liquid crystal layer (first light patterning stack forming part of bracket structure), the first substrate having a first semiconductor layer (comprising a first semiconductor transparent electrode layer on a first wide bandgap semiconductor layer); and a second substrate positioned in contact with the second side of the liquid crystal layer (second light patterning stack forming part of bracket structure), the second substrate having a second semiconductor transparent electrode layer (second semiconductor transparent electrode layer) and a second semiconductor layer (second wide bandgap semiconductor layer).
Reference claim 1 does not disclose a plurality of laser transparent aperture support structures positioned within the liquid crystal layer to contact both the first and second substrate; however, such support structures are known in the art for providing a spacer function as taught by Burgess as applied above. Burgess discloses spacer balls 25 configured as glass beads positioned within the liquid crystal layer to contact both the first and second substrate (Fig. 4, [0029]-[0030]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify reference claim 1 to include a plurality of laser transparent aperture support structures positioned within the liquid crystal layer to contact both the first and second substrate in order to provide the function of spacers that establish an appropriately sized gap into which the liquid crystal is filled as taught by Burgess.
Regarding instant claim 2, reference claim 1 discloses the first substrate comprises a first semiconductor transparent electrode layer positioned in contact with the first semiconductor layer (first semiconductor transparent electrode layer on the first wide bandgap semiconductor layer) to form a transmissive light valve (preamble).
Regarding instant claims 4-5, the reference claims are silent as to thickness dimensions. Burgess as applied above discloses the claimed dimensions are known for the specified structures. Furthermore, a recitation of relative dimensions where the device having the claimed relative dimensions would not otherwise perform differently does not amount to a patentable distinction. MPEP 2144.04(IV)(A).
Regarding instant claim 6, reference claims 1-3 recite that the substrates comprise wide bandgap semiconductor materials.
Regarding instant claim 7, reference claim 1 in view of Burgess as set forth above renders obvious the laser transparent aperture support structures being spacer balls positioned within the liquid crystal layer and sized to maintain a uniform gap between the substrates.
Regarding instant claim 8, reference claim 7 discloses the first and second substrates and the liquid crystal layer form a monolithic stack.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12596281 B1, in view of Burgess, US 20120105773 A1, and Furushima et al., US 5644373 A. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 9, instant claim 1 is rendered obvious over reference claim 1 as set forth above. The reference claims do not recite the layers are CTE matched as presently claimed. In the analogous art, Furushima teaches CTE matching layers of a liquid crystal light valve stack to be within 10% of each other (col. 2, lines 32-36) in order to provide similar thermal behavior reducing the effect of heat history and loosening restrictions on processing temperatures (col. 8, lines 50-55) as set forth above. Accordingly, it would have been obvious to one of ordinary skill in the art to further specify the first and second substrates and the liquid crystal layer being CTE matched to be within 10% of each other to achieve the same beneficial effects as taught by Furushima.
The remaining claims are considered patentably distinct and thus are not rejected under double patenting.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 2023101903 A1, Voss et al. disclose optically addressable light valves using wide and ultrawide bandgap semiconductor materials and spacers.
US 20220134644 A1, Leard et al. disclose relevant light valve configurations and thermal expansion matching layers of the light valve.
US 20060209248 A1, Shimada discloses matching thermal expansion coefficients of substrate layers surrounding a liquid crystal layer to prevent thermal stress.
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/J.L.G./Examiner, Art Unit 1754
/SUSAN D LEONG/Supervisory Patent Examiner, Art Unit 1754
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