DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
2. Claims 1, 9, and 15 have been currently amended.
Double Patenting
3. 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.
4. Claims 1-4, 6-8, and 12 of the present application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, or 6 of U.S. Patent No. 12,164,110 B2 (patent 110) in view of Jia et al. (US Patent Application Publication No. 2020/0233214 A1) and Zheng Qin (US Patent Application Publication No. 2022/0082836 A1).
5. Claims 9, 11 and 13-14 are rejected under claims 1 and 5 of patent 110. While the claims are not identical, the present claims are similar and some claims are broader.
6. The following table shows correspondence between claims of present application and claims of patent 110.
Claims of present application
1
2
3
4
6
7
8
Claims of patent 110
1 in view of Jia and Qin
4 in view of Jia and Qin
1 in view of Jia and Qin
5 in view of Jia and Qin
5 in view of Jia and Qin
1 in view of Jia and Qin
6 in view of Jia and Qin
9
11
12
13
14
1 and 5
1 and 5
1 and 5 in view of Jia and Qin
1 and 5
1 and 5
7. The following table shows correspondence between claim 1 of present application and claim 1 of patent 110.
Claim 1 of present application
Claim 1 of patent 110
1. An apparatus, comprising:
1. An apparatus, comprising:
a first prism;
an optical waveguide coupler configured to receive light;
a first prism optically coupled to the optical waveguide coupler, the first prism having a first side and a second side, the first side of the first prism facing the optical waveguide coupler;
a second prism coupled to the first prism, wherein the first prism faces a first side of the second prism;
a second prism optically coupled to the first prism, the second prism having a first side, a second side, and a third side, the first side of the second prism facing the second side of the first prism;
a spatial light modulator (SLM) facing a second side of the second prism;
a spatial light modulator (SLM) optically coupled to the second prism, the SLM facing the third side of the second prism, wherein an interface between the second side of the first prism and the first side of the second prism is configured to transmit the light towards the SLM;
and reflective focusing optics facing a third side of the second prism and configured to reflect light received from the third side of the second prism.
and focus
and focusing optics optically coupled to the second prism, wherein the focusing optics face the third side of the second prism.
Jia at FIG. 9 discloses optical path folding mirror 858 corresponding to focusing optics that are optically coupled to the second prism 904’s third side.
Qin discloses convex prism 4605 which reflects and focuses light.
Claim Rejections - 35 USC § 103
8. 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.
9. 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.
10. Claims 1, 3-4, 7, 9, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al. (US Patent Application Publication No. 2020/0233214 A1) in view of Zheng Qin (US Patent Application Publication No. 2022/0082836 A1).
11. Regarding Claim 1 (Currently amended), Jia discloses An apparatus, comprising: (Abstract reciting “Augmented reality glasses include near eye displays the include sources of imagewise amplitude modulated light optical coupled to spatial phase modulators or active zone plate modulators and optically coupled to eye coupling optics. …”)
a first prism; (see FIG. 9 prism 902 corresponds to first prism) a second prism coupled to the first prism, wherein the first prism faces a first side of the second prism; (see FIG. 9 wherein second prism 904 and first prism 902 face each other.) a spatial light modulator (SLM) facing a second side of the second prism; (see FIG. 9; paragraph [0049] reciting “… The LCoS phase modulator 908 phase modulates and reflects the light back through the second surface 920 of the second prism. …” The LCoS phase modulator corresponds to a spatial light modulator and faces a second side of the second prism 904.)
and reflective focusing optics facing a third side of the second prism and configured to reflect light received from the third side of the second prism. (see FIG. 9 wherein optical path folding mirror 858 corresponding to focusing optics that are optically coupled to the second prism 904’s third side and reflects light received from third side of the second prism 904.)
While not explicitly disclosed nor suggested by Jia, Qin discloses and focus (see FIG. 46b; paragraph [0028] reciting “By moving the front and back positions of plano-convex lens 4605, reflecting refractive component 4603 and plano-concave lens 4607, the focus position of the central sub-image near the retina of human eyes can be adjusted to realize the display effect of different focal planes.”)
It would have been obvious to a person of ordinary skills in the art before the effective filing date of the claimed invention to modify Jia with Qin so that the optical path folding mirror 858 can be modified with the teachings of convex lens 4605 of Qin. By converting the folding mirror 858 into convex lens 4605, the light reflected onto 858 can be reflected and focused. This is a beneficial modification since that light that’s reflected is reflected towards the eye and focusing it allows the light to be better focused for the eye to sense.
12. Regarding Claim 3 (Original), Jia further discloses The apparatus of claim 1, further comprising an optical waveguide coupled to the second prism. (see FIG. 9 wherein
protective optical window 860 is coupled to second prism 904.)
13. Regarding Claim 4 (Original), Jia further discloses The apparatus of claim 1, further comprising a beam splitter between the first prism and the second prism. (see FIG. 10 wherein beam splitter 828 is placed between the first prism and second prism.)
It would have been obvious to a person of ordinary skills in the art before the effective filing date of the present application to modify FIG. 9 of Jia with FIG. 10 of Jia so that the beam splitter between the 2 prisms so that control can be asserted over how much light to modulate through first prism to second prism. This is a beneficial modification since it allows
14. Regarding Claim 7 (Original), Jia further discloses The apparatus of claim 1, further comprising an optical waveguide coupler optically coupled to the first prism. (see FIG. 9 and FIG. 8 wherein RGB dichroic combiner cube 808 corresponds to an optical waveguide coupler that’s coupled to light sources (laser diodes 802, 810, and 816.)
It would have been obvious to a person of ordinary skills in the art before the effective filing date of the present application to modify FIG. 9 of Jia with light emitting engine of FIG. 8 of Jia. It is obviously beneficial that the embodiment of FIG. 9 is modified so that optical light path 850 comes from the negative lens 838 and light engine 834 of FIG. 8. This allows light to be projected into the display panel 862 for eye 866 to view.
15. Regarding Claim 9 (Currently amended), Jia discloses An apparatus, comprising: (Abstract reciting “Augmented reality glasses include near eye displays the include sources of imagewise amplitude modulated light optical coupled to spatial phase modulators or active zone plate modulators and optically coupled to eye coupling optics. …”)
a first prism; (see FIG. 9 prism 902 corresponds to first prism) a second prism facing the first prism, the second prism having a first side and a second side; (see FIG. 9 wherein second prism 904 and first prism 902 face each other.) a beam splitter between the first prism and the second prism; (see FIG. 10 wherein beam splitter 828 is placed between the first prism and second prism.)
a spatial light modulator (SLM) facing the first side of the second prism; (see FIG. 9; paragraph [0049] reciting “… The LCoS phase modulator 908 phase modulates and reflects the light back through the second surface 920 of the second prism. …” The LCoS phase modulator corresponds to a spatial light modulator and faces a second side of the second prism 904.)
and focusing optics facing the second side of the second prism and configured to reflect light received from the second side of the second prism. (see FIG. 9 wherein optical path folding mirror 858 corresponding to focusing optics that are optically coupled to the second prism 904’s third side and reflects light received from second side of the second prism 904.)
While not explicitly disclosed nor suggested by Jia, Qin discloses and focus (see FIG. 46b; paragraph [0028] reciting “By moving the front and back positions of plano-convex lens 4605, reflecting refractive component 4603 and plano-concave lens 4607, the focus position of the central sub-image near the retina of human eyes can be adjusted to realize the display effect of different focal planes.”)
It would have been obvious to a person of ordinary skills in the art before the effective filing date of the claimed invention to modify Jia with Qin so that the optical path folding mirror 858 can be modified with the teachings of convex lens 4605 of Qin. By converting the folding mirror 858 into convex lens 4605, the light reflected onto 858 can be reflected and focused. This is a beneficial modification since that light that’s reflected is reflected towards the eye and focusing it allows the light to be better focused for the eye to sense.
16. Regarding Claim 12 (Original), Jia further discloses The apparatus of claim 9, wherein the focusing optics are reflective focusing optics. (see FIG. 9 wherein optical path folding mirror 858, which are reflective, correspond to focusing optics.)
17. Regarding Claim 13 (Original), Jia further discloses The apparatus of claim 9, further comprising an optical waveguide optically coupled to the SLM. (Cube 808 is optically coupled to prism 902 which is optically coupled to LCoS phase modulator 908. It would have been obvious to modify FIG. 9 with FIG. 8 since FIG. 8 is where the light source is generated.)
18. Regarding Claim 14 (Original), Jia further discloses The apparatus of claim 9, further comprising an optical waveguide coupler facing the first prism. (Cube 808 is optically coupled to prism 902 by passing light through the prism 902’s first side..)
19. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Jia in view of Qin and further in view of Zhang et al. (US Patent Application Publication No. 2022/0236633 A1).
20. Regarding Claim 2 (Original), while the combination of Jia and Qin does not explicitly disclose, Zhang discloses The apparatus of claim 1, further comprising: a first quarter waveplate optically coupled between the second prism and the SLM; (paragraph [0051] reciting “As further illustrated in FIG. 1B, a quarter-wave plate assembly 300 comprising two quarter-wave plates (i.e. a first quarter-wave plate 320 and a second quarter-wave plate 340) can be arranged in the beam modulation apparatus 1000. The first quarter-wave plate 320 is sandwiched between the PBS prism 100 and the first LCOS panel 220 along the first axis, and the second quarter-wave plate 340 is sandwiched between the PBS prism 100 and the second LCOS panel 240 along the second axis. It is noted that they are optional, and it is possible that none, or only one of the two quarter-wave plates, is arranged in the beam modulation apparatus 1000.” The first quarter wave plate 320 is between prism and LCOS panel, which corresponds to the SLM.)
and a second quarter waveplate optically coupled between the second prism and the reflective focusing optics. (paragraph [0051] reciting “As further illustrated in FIG. 1B, a quarter-wave plate assembly 300 comprising two quarter-wave plates (i.e. a first quarter-wave plate 320 and a second quarter-wave plate 340) can be arranged in the beam modulation apparatus 1000. The first quarter-wave plate 320 is sandwiched between the PBS prism 100 and the first LCOS panel 220 along the first axis, and the second quarter-wave plate 340 is sandwiched between the PBS prism 100 and the second LCOS panel 240 along the second axis. It is noted that they are optional, and it is possible that none, or only one of the two quarter-wave plates, is arranged in the beam modulation apparatus 1000.” Another second quarter-wave plate is place between same prism and another edge.)
It would have been obvious to a person of ordinary skills in the art before the effective filing date of the present application to modify Jia and Qin with Zhang so that a first and second quarter wave plates are sandwiched respective between sides of a second prism in Jia so that the light waves are properly treated by the first and second quarter wave plates. This ensures that the light waves are properly treat and, therefore, is a beneficial modification.
21. Claims 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Jia in view of Qin and further in view of Ambur et al. (US Patent Application Publication No. 2020/0319388 A1).
22. Regarding Claim 5 (Original), while the combination of Jia and Qin does not explicitly disclose, Ambur discloses The apparatus of claim 4, wherein the beam splitter is a polarizing beam splitter. (see FIG. 9; paragraph [0070] reciting “FIG. 9 is a schematic cross-sectional view of a polarizing beam splitter 900 which is in many ways similar to polarizing beam splitter 800 except that the hypotenuses of the first and second prisms 910 and 940 are substantially planar and that the optical stack 920 is substantially planar. …”)
It would have been obvious to a person of ordinary skills in the art before the effective filing date of the present application to modify Jia and Qin with Ambur so that the beam splitter is a polarizing beam splitter. This is an obviously beneficial modification since a polarizing beam splitter provides high efficiency and nearly lossless light transmission through the two prisms.
23. Regarding Claim 10 (Original), while the combination of Jia and Qin does not explicitly disclose, Ambur discloses The apparatus of claim 9, wherein the beam splitter is a polarizing beam splitter. (see FIG. 9; paragraph [0070] reciting “FIG. 9 is a schematic cross-sectional view of a polarizing beam splitter 900 which is in many ways similar to polarizing beam splitter 800 except that the hypotenuses of the first and second prisms 910 and 940 are substantially planar and that the optical stack 920 is substantially planar. …”)
It would have been obvious to a person of ordinary skills in the art before the effective filing date of the present application to modify Jia and Qin with Ambur so that the beam splitter is a polarizing beam splitter. This is an obviously beneficial modification since a polarizing beam splitter provides high efficiency and nearly lossless light transmission through the two prisms.
24. Claims 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Jia in view of Qin and further in view of Mueller et al. (US Patent Application Publication No. 2018/0031475 A1).
25. Regarding Claim 6 (Original), while the combination of Jia and Qin does not explicitly disclose, Mueller discloses The apparatus of claim 4, wherein the beam splitter is a non-polarizing beam splitter. (paragraph [0009] reciting “JP 2009-31406 A shows a non-polarized beam splitter consisting of two prisms and a dielectric layer arranged between the two prisms consisting of several interconnected sublayers. The sublayers have different refractive indices. While at least one sublayer has a higher refractive index than the prisms, at least one other sublayer has a lower refractive index than the prisms. …”)
It would have been obvious to a person of ordinary skills in the art before the effective filing date of the present application to modify Jia and Qin with Mueller so that the light intensity is split 50/50 which prevents polarization related distortions, which is an obvious benefit.
26. Regarding Claim 11 (Original), while the combination of Jia and Qin does not explicitly disclose, Mueller discloses The apparatus of claim 9, wherein the beam splitter is a non-polarizing beam splitter. (paragraph [0009] reciting “JP 2009-31406 A shows a non-polarized beam splitter consisting of two prisms and a dielectric layer arranged between the two prisms consisting of several interconnected sublayers. The sublayers have different refractive indices. While at least one sublayer has a higher refractive index than the prisms, at least one other sublayer has a lower refractive index than the prisms. …”)
It would have been obvious to a person of ordinary skills in the art before the effective filing date of the present application to modify Jia and Qin with Mueller so that the light intensity is split 50/50 which prevents polarization related distortions, which is an obvious benefit.
27. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jia in view of Qin and further in view of Eisenfeld et al. (US Patent Application Publication No. 2022/0326426 A1).
28. Regarding Claim 8 (Original), Jia further discloses The apparatus of claim 1, wherein the first prism contacts the second prism, (see FIG. 8 wherein the first and second prisms are in contact with each other. FIG. 9 can be modified so that like in FIG. 8, the prisms of FIG. 9 are in contact with each other without gap to achieve the light transmission purposes of FIG. 9.)
While the combination of Jia and Qin does not explicitly disclose, Eisenfeld discloses and wherein a first refractive index of the first prism is greater than a second refractive index of the second prism. (paragraph [0101] reciting “FIG. 14A is a sketch of an alternative implementation of a light pipe. Although the embodiments described thus far have pertained to a light pipe constructed from two main optical structures (e.g., prisms, for example the first optical structure P1 and the second optical structure P2) having indices of refraction that are different from each other, other embodiments are possible in which a single main optical structure (i.e., block, in the current figure the first optical structure P1) is used in conjunction with, for example, an array of microprisms 1360 deployed at the output surface S12 of the block. …” Different refraction indices correspond to different refraction index and with 1 or the other being greater. Therefore, first prism can have a higher refraction index than second prism’s refraction index.)
It would have been obvious to a person of ordinary skills in the art before the effective filing date of the present application to modify Jia and Qin with Eisenfeld so that the first and second prisms in Jia have different refraction indexes with the first prism’s refraction index being higher. This is an obviously beneficial modification since an initially higher refraction index allows for the right amount of light to pass through the first prism which facilitates further light refraction through the second and subsequent prisms.
Allowable Subject Matter
29. Claims 15-20 are allowed.
30. The following is an examiner’s statement of reasons for allowance: Claim 15 recites the limitation and reflective focusing optics configured to receive the modulated light and to reflect the modulated light to produce reflected light, wherein the third surface of the second prism is further configured to transmit the reflected light, the first surface of the second prism is configured to transmit the reflected light, the second surface of the first prism is configured to transmit the reflected light, and the third surface of the first prism is configured to transmit the reflected light which is neither disclosed nor suggested by the cited references, either singly or in combination. The closest arts on record, Jia and Qin, both fail to disclose or suggest this limitation. The first prism in Jia is not equipped to further reflect light reflected back to it form the second prism.
31. Claims 16-20 depend on claim 15.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
32. Applicant’s arguments, see Remarks, filed 7/22/2026, with respect to the rejection(s) of claim(s) 1 and 9 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Qin.
33. On page 6 of the Remarks, Applicants argue that claims 1 and 9 has been amended to add additional detail regarding reflective focusing optics which overcomes the cited references. Qin is now used to teach the limitation and focus light. While folding mirror 858 in Jia discloses the rest of the limitations of claim 1, the folding mirror 858 in Jia fails to explicitly state it is for purposes of focusing light. However, Qin at paragraph [0280] discloses a refractive component 4603 that can both focus and reflect light. It would have been obvious to replace the folding mirror in Jia with 4603 of Qin. This is an obvious modification because Jia at paragraph [0050] encourages such replacement. Jia at paragraph [0050] states “… In some embodiments, other suitable light redirecting components, such as those mentioned previously with respect to FIGS. 4-7, may be used in addition to or in place of folding mirror 858.” Therefore the refractive component 4603 is suitable and can replace folding mirror 858 in Jia to acquire more capabilities beneficial for viewing the reflected light, such as focused reflection of light.
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.
CONTACT
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S CHEN whose telephone number is (571)270-7993. The examiner can normally be reached Mon - Fri 8-11:30 and 1:30-6.
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, Kee Tung can be reached at 5712727794. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK S CHEN/Primary Examiner, Art Unit 2611
Prosecution Insights