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 .
Claim Objections
Claim 1 objected to because of the following informalities: ‘closed to the eyes’, this limitation should be ‘close to the eyes’. Appropriate correction is required. Claims 2-8 are objected to inasmuch as they depend from claim 1.
Claim Rejections - 35 USC § 112
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 1-8 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.
Claim 1 recites the limitation "’the near-to-eye refractive component" in line 9. There is insufficient antecedent basis for this limitation in the claim. The closest corresponding element to the near-to-eye refractive component appears to be the near-eye refractive component. For the purpose of examination the near-to-eye refractive component will be considered the same thing as the near-eye refractive component.
Claim 1 recites the limitation "’the near-to-eye diopter" in line 14. There is insufficient antecedent basis for this limitation in the claim. The closest corresponding element to the near-to-eye-diopter is the ‘near-to-eye refractive component, which is being interpreted as the same element as the near-eye refractive component. For the purpose of examination the ‘near-to-eye diopter’ will be interpreted as the same element as the near-eye refractive component.
Claim 1 recites the limitation "’the secondary reflection surface " in line 19. There is insufficient antecedent basis for this limitation in the claim. The secondary reflection surface appears to refer to the combiner surface of the total reflection prism which outcouples the totally internally reflected light of the prism to the outside (see for example surface 104 or 204 in the figures), and for the purpose of examination this limitation will be interpreted as having an indefinite article.
Claim 1 is further reject inasmuch as the claim recites that the ‘near-to-eye’ diopter can be a refractive/reflective diopter, however in lines 9-10 of claim 1, the near-to-eye refractive component has to be between the total reflection prism and the eyes of the user. In the specification the refractive/reflective diopter is not placed between the prism and eye but rather the prism is between the eye and the refractive reflective diopter (see figure 2d, element 205d, paragraph 0052 of the USPGPub). For the purpose of examination this alternative will not be interpreted as part of the claim, leaving only the ‘polarized bifocal lens’ and the ‘polarized double reflective diopter’.
Claims 2-8 are rejected inasmuch as they depend from claim 1.
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 and 5-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,164,107 B2 in view of Ofir (US 2019/0278086 A1).
Regarding claim 1, Claim 5 of US 12,164,107 teaches a total reflection prism for totally reflecting and conducting light emitted by an image source for one or more times (column 13 lines 63-65),
A near-eye refractive component (column 14 lines 1-2) for enlarging the image after one or more reflections of the light, and
A gap layer exists between he total reflection prism and near-to eye refractive component (column 14 lines 3-5),
Wherein the gap layer contains a substance with a refractive index lower than that of the total reflection prism, so that light can be totally reflected and transmitted on the inner surface of the total reflection prism (column 14 lines 5-9),
Wherein the near-to-eye diopter adopts a polarized bifocal lens or a polarized double reflective diopter to achieve different focal lengths for light with different polarizations (column 14 lines 4-550), the focal length for internal display light is positive short focus (implicit inasmuch as the display image wouldn’t be visible otherwise), the focal length for external ambient light is nearly infinite (without diopter, claim 5),
Wherein the near-to-eye refractive component allows external light to pass through without diopter, and the secondary reflection surface is semi-reflective, so that a human eye can see external environment through the near-to-eye refractive component and the total reflection prism while seeing the display image clearly, thus realizing the semi transparent display effect of augmented reality (claim 5).
Claim 5 of US 12,164,107 does not teach that the near-to-eye refractive component is between the eyes and the total reflection prism, close to the eyes.
Ofir teaches the near-to-eye refractive component is located between the eyes and the total reflection prism close to the eyes (82A, figure 5).
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to modify the display of claim 5 of US 12,164,107 to place the diopter between the total reflection prism and the eye as taught in Ofir in order to make the display system image clearer for the viewer.
Claim 5 corresponds to limitations found in claim 1 of US 12,164,107.
Claim 6 corresponds to limitations found in claim 1 of US 12,164,107.
Allowable Subject Matter
Claims 2-4 and 7-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claims 2-4 and 7-8, prior art(Takagi et al., US 2019/0079234 A1) does not teach the polarized bifocal lens, or the polarized double reflective diopter to achieve different focal lengths for light with different polarizations from claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN D HOWARD whose telephone number is (571)270-5358. The examiner can normally be reached M-F 8-5:00.
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/RYAN D HOWARD/ Primary Examiner, Art Unit 2882 6/04/2026
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