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 .
Response to Pre-amendment
2. The present office action is made in response to the Pre-amendment filed on 09/23/2024. It is noted that in the Pre-amendment, applicant has made changes to the abstract, the specification and the claims. There is not any change to be made to the drawings.
A) Regarding to the abstract, applicant has submitted a separated sheet contained an amended abstract;
B) Regarding the specification, applicant has made changes to page 1 of the specification; and
C) Regarding to the claims, applicant has amended claim 1-19. There was not any claim being added/canceled into/from the application. The pending claims are claims 1-19.
Election/Restrictions
3. In response to the Election/Restriction mailed to applicant on 06/18/2026, applicant has made an election without traverse of Invention III in the reply filed on 08/17/2026.
4. As a result of applicant’s election, claims 1 and 7-18 are examined in the present office action and claims 2-6 and 19 have been withdrawn from further consideration as being directed to non-elected Inventions.
Applicant should note that the non-elected claims 2-6 and 19 will be rejoined if the linking claim 1 is later found as an allowable claim.
Priority
5. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
6. The drawings contain six sheets of figures 1-6 were received on 09/23/2024. These drawings are objected to for the following reasons.
7. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following references that are not mentioned in the description.
First, the reference of “301” as shown in fig. 3;
Second, the reference of “412” as shown in fig. 4;
Third, the references “501” and “511” as shown in fig. 5; and
Fourth, the references of “601”, “610”, “615” and “620” as shown in fig. 6.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
8. The lengthy specification which was amended by the pre-amendment of 09/23/2204 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.
9. The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The specification is objected to as failing to provide proper antecedent basis for the feature thereof “the input-coupling element is designed for coupling divergent image rays into the optical unit” as recited in claim 9 (examiner’s emphasis).
Claim Interpretation
10. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
11. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
12. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“one-piece optical unit” as recited in claim 1; and
“a free-form surface” as recited in claim10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
13. Claims 1 and 7-18 are objected to because of the following informalities. Appropriate correction is required.
a) In claim 1: the feature thereof “wherein the holographic diffuser and the reflection element are part of a one-piece optical unit” (line 4) has a grammatical error. Should “part” be changed to –parts--?
b) In claim 7: the claims are objected to because they include reference character(s) which is/are not enclosed within parentheses. Should “a digital micromirror device, DMD” (line 3) be changed to --a digital micromirror device (DMD)--?
c) The remaining claims are dependent upon the objected base claim and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 112
14. 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.
15. Claims 10, 12-14 and 16-18 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
a) Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim recites that the input-coupling element comprises a free-form surface of the optical unit; however, the disclosure does not provide any description teaching regarding the so-called “free-form surface” of the optical unit. In other word, what kind of “free-form of the optical unit” does applicant imply here” and how is the “free-form of the optical unit” made?
b) Claim 12 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim recites that the projector is designed for correcting chromatic aberrations induced by the input-coupling element; however, the disclosure faits to the teach how the projector is designed for correcting chromatic aberrations induced by the input-coupling element. What kind of chromatic aberrations are induced by the input-coupling element? and how the projector is designed for correcting such chromatic aberrations induced by the input-coupling element?
c) Claim 13 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim recites that the input-coupling element comprises an input-coupling grating and/or holographic input-coupling element. Because the term “and/or” is understood as --and--, thus the disclosure fails to support for an input-coupling element comprises both an input-coupling grating and a holographic input-coupling element. How is such an input-coupling element having both structures is made?
d) Claim 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim recites that the input-coupling element is designed for correcting monochromatic aberrations of the projector and/or the reflection element; however, the disclosure fails to the teach how the input-coupling element is designed for correcting monochromatic aberrations of the projector and/or the reflection element. What kind of monochromatic aberrations are produced/generated by the projector and/or the reflection element? and how the input-coupling element is designed for correcting monochromatic aberrations of the projector and/or the reflection element projector is designed for correcting such monochromatic aberrations?
e) Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim recites that the deflection element comprises a total internal reflection prism and/or a mirror. Because the term “and/or” is understood as --and--, thus the disclosure fails to support for a deflection element comprises a total internal reflection prism and/or a mirror. How is such a deflection element having both structures is made?
f) Claim 17 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim recites that the optical unit has a first absorber element which is designed for absorbing zero-order image rays received from the input-coupling element; however, the disclosure fails to the teach how the so-called “first absorber element” is designed for absorbing zero-order image rays received from the input-coupling element. What kind of zero-order image rays are produced/generated by the input-coupling element? and how the “first absorber element” is designed for absorbing zero-order image rays received from the input-coupling element?
g) Claim 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement for the similar reason as set forth in element h) above.
16. 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.
17. Claims 7-17 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a) Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the image rays” (lines 5) lacks a proper antecedent basis. Applicant should note that while its base claim 1 recites “image rays” (claim 1 on line 6); however, the recited “image rays” is the one reflected from the reflection mirror, not from/generated by the digital micromirror device, see claim 1 on lines 6-7.
b) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 102
18. 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.
19. 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.
20. Claims 1, 7-9, 11-12, 14-15 and 16, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sokolov et al (US Publication No. 2007/0153242, submitted by applicant).
Sokolov et al discloses a transparent projection display.
a) Regarding present claim 1, the projection display as described in paragraphs [0036]-[0044] and shown in figs. 4 and 6 comprises the following features:
a1) a holographic diffuser (45) extending substantially in a two-dimensional diffuser plane, see paragraphs [0036] and [0043];
a2) an enlarging reflection element (44b), see paragraph [0042];
a3) the holographic diffuser (45) and the reflection element (44b) are parts of a one-piece optical unit (44); and
a4) image rays reflected by the reflection element (44b) are guided by means of total internal reflection in the optical unit (44) to the holographic diffuser (45).
b) Regarding present claims 7-9, the display comprises a projector (42) which comprises a digital micromirror device (42c) , see paragraph [0040] and an input-coupling element (44a) wherein the input-coupling element (44a) is designed for coupling the divergent image rays generated by the digital micromirror device (42c) of the projector (42) into the reflection element (44b) of the optical unit (44).
c) Regarding present claim 11, the input-coupling element (44a) comprises an aspherical surface of the optical unit, see paragraph [0041].
d) Regarding present claims 12 and 14, the projection display comprises the holographic diffuser (45) extending substantially in a two-dimensional diffuser plane, the enlarging reflection element (44b) wherein the holographic diffuser (45) and the reflection element (44b) are parts of a one-piece optical unit (44) and image rays reflected by the reflection element (44b) are guided by means of total internal reflection in the optical unit (44) to the holographic diffuser (45) as provided by Sokolov et al meets the functions as recited in present claims 12 and 14 due to the same optical elements being used and their arrangement.
e) Regarding present claims 15-16, the use of a mirror for guiding image rays from the projector (42) to the optical unit (44) via the input-coupling element (444a) is provided by Sokolov et al as can be seen in paragraph [0040], fig. 5B and claims 1-2 and 6-8.
Claim Rejections - 35 USC § 103
21. 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.
22. Claims 10 and 13, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Sokolov et al in view of
The projection display as described in paragraphs [0036]-[0044] and shown in figs. 4 and 6 provided by Sokolov et al meets all features recited in each of claims 10 and 13 except the feature that the input-coupling element comprises a free-form of the optical unit as recited in claim 13 or comprises an input-coupling grating and/or a holographic input-coupling element as recited in claim 13.
However, the use of a free-form input-coupling element or a grating/holographic input-coupling element for the optical unit as claimed is merely that of a preferred embodiment and no criticality has been disclosed. The support for that conclusion is found in the present specification and in claim 11 which claims that the input-coupling element is an aspheric surface of the optical unit which feature is disclosed in the display provided by Sokolov et al. Further, an optical device having an input-coupling element which is an aspheric surface or a free-form surface or a diffractive surface is known to one skilled in the art as can be seen in the optical device provided by Nobis et al, see paragraphs [0098], [0102], [0104], … which discloses an optical input-coupling element having a spherical surface, an aspheric surface, a free-form surface, a diffractive surface or a holographic surface is used for coupling image rays. Thus, absent any showing of criticality, it would have been obvious to one skilled in the art before the effective filing date of the invention to modify the display provided by Sokolov et al by using an input-coupling element of the optical unit in the form of a spherical surface, an aspheric surface, a free-form surface, a diffractive surface or a holographic surface is used for coupling image rays as suggested by Nobis et al to meet a particular application/design.
Conclusion
23. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
24. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571)272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
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, 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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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
