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 .
This office action is in response to the communication filed on 06/30/2026. Claims 1-20 remain pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/28/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicants’ arguments filed 06/30/2026 have been fully considered but they are not persuasive.
In the remarks, Applicants made one main argument. While the ‘826 patent teaches diffractive optical elements with an underlayer, the ‘826 patent does not disclose, describes, teach, or suggest at least the following limitations recited by each of independent claims 1 and 11:
a diffractive optical element (DOE) to receive light associated with one or more frames of images data and direct the light to a user’s eyes, the DOE comprising a diffractive structure having a waveguide substrate having a first side and a second side opposing the first side, a surface grating positioned on a first side of the waveguide substrate, and one or more optical layer pairs disposed between the waveguide substrate and the surface grating;
each optical layer pair comprising a low index layer and a high index layer disposed directly on an exterior side of the low index layer, wherein the high index layer has a higher refractive index than the low index layer.
Accordingly, Applicant respectfully submits that independent claims 1 and 11, and claims 2-10 and 12-20, which depend therefrom, are patently distinct from claims 1-23 of the ‘826 patent. Therefore, Applicant respectfully requests withdrawal of the non-statutory double patenting of claims 1-20.
This argument is not persuasive. As clearly shown by the comparison table in the rejection dated 04/01/2026, patent 9,915,826 (Tekolste et al) teach all the limitations of claims 1 and 11 by disclosing that a diffractive optical element (DOE) to receive light associated with the one or more frames of image data and direct the light to the user’s eyes, the DOE comprising a diffraction structure having a waveguide substrate, a surface grating, and an underlayer disposed between the waveguide substrate and the surface grating, wherein the waveguide substrate has a waveguide refractive index (i.e., one layer with one refractive index), and the underlayer has an underlayer diffractive index that is different from the waveguide refractive index (i.e., another layer with different refractive index). It would have been obvious to one having ordinary skill in the art before the effective filing date of claimed invention to use the claimed features of the reference patent to arrive at the instant claim, yielding predictable results and no more than one having ordinary skill in the art would expect from such an arrangement, i.e., “one or more optical layer pairs”.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 9,915,826. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are claiming an XR/AR display system comprising of nearly identical features or components. It would have been obvious to one having ordinary skill in the art before the effective filing date of claimed invention to use the claimed features of the reference patent to arrive at the instant claim, yielding predictable results and no more than one having ordinary skill in the art would expect from such an arrangement, as shown below.
Instant Application 18/875,645
Reference Patent 9,915,826
1. An eyepiece for an XR display system, comprising:
a diffractive optical element (DOE) to receive light associated with one or more frames of image data and direct the light to a user’s eyes, the DOE comprising a diffraction structure having a waveguide substrate having a first side and a second side opposing the first side, a surface grating positioned on a first side of the waveguide substrate, and one or more optical layer pairs disposed between the waveguide substrate and the surface grating; and
each optical layer pair comprising a low index layer and a high index layer disposed directly on an exterior side of the low index layer, wherein the high index layer has a higher refractive index than the low index layer.
1. An augmented reality (AR) display system for delivering augmented reality content to a user, comprising:
an image-generating source to provide one or more frames of image data;
a light modulator to transmit light associated with the one or more frames of image data; and
a diffractive optical element (DOE) to receive the light associated with the one or more frames of image data and direct the light to the user’s eyes, the DOE comprising a diffraction structure having a waveguide substrate, a surface grating, and an underlayer disposed between the waveguide substrate and the surface grating, wherein the waveguide substrate has waveguide refractive index, and the underlayer has an underlayer diffractive index that is different from the waveguide refractive index.
Instant Application 18/875,645
Reference Patent 9,915,826
Claim 2
Claim 3
Claim 4
Claim 5
Claim 6
Claim 7
Claim 8
Claim 9
Claim 10
Claim 21
Claim 22
Claim 22
Claim 2
Claim 3
Claim 16
Claim 4
Claim 8
Claim 9
Claims 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 9,915,826. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are claiming a XR/AR display system comprising of nearly identical features or components. It would have been obvious to one having ordinary skill in the art before the effective filing date of claimed invention to use the claimed features of the reference patent to arrive at the instant claim, yielding predictable results and no more than one having ordinary skill in the art would expect from such an arrangement, as shown below.
Instant Application 18/875,645
Reference Patent 9,915,826
11. An extended reality (XR) display system for delivering extended reality content to a user, comprising:
an image-generating source to provide one or more frames of image data;
a light modulator to transmit light associated with the one or more frames of image data; and
a diffractive optical element (DOE) to receive light associated with one or more frames of image data and direct the light to a user’s eyes, the DOE comprising a diffraction structure having a waveguide substrate having a first side and a second side opposing the firs side, a surface grating positioned on a first side of the waveguide substrate, and one or more optical layer pairs disposed between the waveguide substrate and the surface grating; and
each optical layer pair comprising a low index layer and a high index layer disposed directly on an exterior side of the low index layer, wherein the high index layer has a higher refractive index than the low index layer.
1. An augmented reality (AR) display system for delivering augmented reality content to a user, comprising:
an image-generating source to provide one or more frames of image data;
a light modulator to transmit light associated with the one or more frames of image data; and
a diffractive optical element (DOE) to receive the light associated with the one or more frames of image data and direct the light to the user’s eyes, the DOE comprising a diffraction structure having a waveguide substrate, a surface grating, and an underlayer disposed between the waveguide substrate and the surface grating, wherein the waveguide substrate has waveguide refractive index, and the underlayer has an underlayer diffractive index that is different from the waveguide refractive index.
Instant Application 18/875,645
Reference Patent 9,915,826
Claim 12
Claim 13
Claim 14
Claim 15
Claim 16
Claim 17
Claim 18
Claim 19
Claim 20
Claim 21
Claim 22
Claim 22
Claim 2
Claim 3
Claim 16
Claim 4
Claim 8
Claim 9
Conclusion
THIS ACTION IS MADE FINAL. 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 from the examiner should be directed to whose telephone number is 571-272-7565. The examiner can normally be reached on weekdays from 2:0 pm to 10:00 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Boddie can be reached on 571-272-0666. The fax phone numbers for the organization where this application or proceeding is assigned are 571-273-8300 for regular communications and 571-273-7565 for After Final communications.
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/FRED TZENG/ Primary Examiner, Art Unit 2625
FFT
September 10, 2026
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