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 .
Status Of Claims
Claims 1-20, received 11/25/2024, are pending for examination.
If applicant is aware of any relevant prior art, or other co-pending application not already of record, he/she is reminded of his/her duty under 37 CFR 1.56 to disclose the same.
Information Disclosure Statement
The information disclosure statement filed 11/25/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the crossed-through information referred to therein has not been considered.
Claim Rejections - 35 USC § 112
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.
Claim 7 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 7 recites that the first and second diffraction gratings comprise a symmetric orientation about the third diffraction grating (i.e. this appears to describe that the first and second diffraction gratings themselves are symmetrically positioned about the third diffraction grating), whereas the specification appears to describe that it is the diffractive features of the first and second diffraction gratings that are symmetric to the diffractive features of the third diffraction grating (see at least specification paras. [0043], [0048], [0050], [0053]-[0054]).
Claims 1-20 rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without at least three diffraction gratings wherein the orientation of the diffraction gratings with respect to the x and/or y-axis of a beam writing machine are optimized such that the beam writing machine forms a desired straight line diffractive feature as a zigzag path/stepped pattern, and mirroring the diffraction grating vectors of two diffraction gratings with respect to a third diffraction grating vector of a third grating and/or orienting the grating vector of at least one diffractive grating perpendicular to a preferred write direction of a beam writing machine, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). The specification sets forth that the problems overcome by the invention are reducing the time needed to manufacture the diffractive feature(s) specifically wherein there are at least three diffraction gratings, and to eliminate or cancel the effect of periodic errors in the straight line diffractive step pattern (see specification paragraphs [0004], [0030], [0046], [0053]-[0054]). These improvements are achieved by creating at least three diffraction gratings wherein the orientation of the diffraction gratings with respect to the x and/or y-axis of a beam writing machine are optimized such that the beam writing machine forms a desired straight line diffractive feature as a zigzag path/stepped pattern, and mirroring the diffraction grating vectors of two diffraction gratings with respect to a third diffraction grating vector of a third grating and/or orienting the grating vector of at least one diffractive grating perpendicular to a preferred write direction of a beam writing machine (see specification paragraphs [0030], [0039], [0043], [0046], [0048], [0050], [0053]-[0054], [0056], [0058]-[0059]). However, independent claims 1, 13 and 15 do not include the essential features necessary to achieve the stated improvements of the invention since they only include 2 diffraction gratings, no beam writing machine is defined, the orientation of the diffraction gratings and/or grating vectors with respect to the x and/or y-axis of the beam writing machine are not included.
Claims 2-12, 14, 16-20 are rejected for inheriting the same deficiencies of the claims from which they depend.
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 6, 7, 8, 9, 10, 11, 14 and 18 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 6 recites the limitations “the third plurality of diffractive features” and “the beam writing system write direction”. There is insufficient antecedent basis for these limitations in the claim.
Claim 7 recites the limitation “the third diffraction grating”. There is insufficient antecedent basis for this limitation in the claim.
Claims 8, 9 and 18 recite the limitation “the third plurality of diffractive features”. There is insufficient antecedent basis for this limitation in the claim.
Claims 10 and 11 recite the limitation “third diffraction gratings”. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation “The virtual image near-eye display system according to claim 12”. There is insufficient antecedent basis for this limitation in the claim. For the purpose of this examination it is interpreted that claim 14 is intended to depend from claim 13.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1, 2, 5, 7, 8, 12, 13, 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schultz et al., WO 2018/213009 A1, of record (hereafter Schultz).
Regarding claim 1, Schultz discloses a substrate (see at least 22 and/or 30), comprising:
a surface (see at least the portion of 22 and/or 30 which supports grating 80 and/or 82);
a first plurality of diffractive features arranged along the surface (see at least IDO); and
a second plurality of diffractive features arranged along the surface (see at least ODO);
wherein at least one of the first and second pluralities of diffractive features comprise a sub-wavelength stepped pattern (see at least 80, 82).
Regarding claim 2, Schultz discloses the limitations of claim 1, and wherein the stepped pattern diffractive features are operable to diffract incident light as if the stepped pattern diffractive features were linear diffractive features (see at least the portion of 82 which diffracts central ray R1 along grating vector k1).
Regarding claim 5, Schultz discloses the limitations of claim 1, and wherein the sub-wavelength stepped pattern comprises a first straight line portion (see at least figures 6A-6B, the portions of 82 which are parallel to the x-axis) and a second straight line portion oriented perpendicular to said first straight line portion (see at least figures 6A-6B, the portions of 82 which are parallel to the z-axis), wherein said first straight line portion and said second straight line portion are arranged alternately (see at least figures 6A-6B, elements 82).
Regarding claim 7, as best understood, Schultz discloses the limitations of claim 1, and wherein the third diffraction grating is located optically between the first and second diffraction gratings, the first and second diffraction gratings comprise a symmetric orientation about the third diffraction grating (see at least figure 10, the unlabeled turning diffraction gratings between the ODO and IDO gratings, and/or figure 2, grating TG).
Regarding claim 8, as best understood, Schultz discloses the limitations of claim 1, and wherein one of the first and second plurality of diffractive features is disposed at an angle between zero and ninety degrees from the third plurality of diffractive features (see at least figure 7B, wherein one row may be a first plurality of diffractive features (e.g. Z3, Z6, Z9, Z12), and wherein another row may be a second plurality of diffractive features (e.g. Z1, Z4, Z7, Z10), and wherein another row may be a third plurality of diffractive features between 0 and 90 degrees from the first and second plurality of diffractive features (e.g. Z2, Z5, Z8, Z11).
Regarding claim 12, Schultz discloses the limitations of claim 1, and wherein the first plurality of diffractive features are operable to diffract light of a first wavelength range of light and the sub-wavelength stepped pattern comprises a plurality of x-direction components and y-direction components, wherein the distance between each adjacent x-direction component is less than a wavelength of light selected from the first wavelength range (see at least element 40 which projects light of at least a first wavelength and which is diffracted by IDO grating which has grating features 82 in two directions, which may be defined as x and y directions, and wherein the grating features 82 must have dimensions less than a wavelength of the projected light for diffraction to occur).
Regarding claim 13, Schultz discloses a virtual image near-eye display system, comprising:
a light source operable to emit a first wavelength range of light (see at least element 40);
a waveguide operable to receive the first wavelength range of light, including a first plurality of diffractive features and a second plurality of diffractive features (see at least element 30, IDO, ODO);
wherein at least one of the first and second plurality of diffractive features comprises diffractive features having a stepped pattern comprising a plurality of x-direction components and y-direction components, wherein the distance between each adjacent x-direction component is less than a wavelength of the first wavelength range of light (see at least grating features 82 in two directions, which may be defined as x and y directions, and wherein the grating features 82 must have dimensions less than a wavelength of the projected light for diffraction to occur).
Regarding claim 14, as best understood, Schultz discloses the limitations of claim 13, and wherein the first and second plurality of diffractive features are disposed in bilateral symmetric orientation about a third plurality of diffractive features (see at least figure 10, the unlabeled turning diffraction gratings between the ODO and IDO gratings, and/or figure 2, grating TG).
Claim Rejections - 35 USC § 103
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.
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.
Claims 1, 2, 3, 5, 7, 8, 12, 13, 14, 15, 16, 17, 18, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tervo, U.S. Patent Application Publication Number 2017/0322426 A1, of record (hereafter Tervo) in view of Saeedi et al., U.S. Patent Application Publication Number 2013/0100362 A1 (hereafter Saeedi).
Regarding claim 1, Tervo discloses a substrate (see at least 310 and/or 410 and/or 500 and/or 600), comprising:
a surface (see at least the portion of 310 and/or 410 and/or 500 and/or 600 which supports gratings DOE 1, DOE 2, DOE 3, and/or 415, 420, 425);
a first plurality of diffractive features arranged along the surface (see at least DOE 1 and/or 415); and
a second plurality of diffractive features arranged along the surface (see at least DOE 3 and/or 425).
Tervo does not specifically disclose that at least one of the first and second pluralities of diffractive features comprise a sub-wavelength stepped pattern.
However, Saeedi is also related to display systems including diffraction gratings (see at least the title and abstract of Saeedi), wherein a diffraction grating on the surface of a substrate may include diffractive features comprising a sub-wavelength stepped pattern (see at least figure 10, elements 1010, 1005, para. [0034]).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the substrate apparatus of Tervo to include the teachings of Saeedi so that at least one of the first and second pluralities of diffractive features comprise a sub-wavelength stepped pattern, for the purpose of easing grating manufacturing and/or increasing optical efficiency versus a discrete single step rectangular profile (see at least para. [0034] of Saeedi).
Regarding claim 2, Tervo in view of Saeedi discloses the limitations of claim 1, and wherein the stepped pattern diffractive features are operable to diffract incident light as if the stepped pattern diffractive features were linear diffractive features (see at least element 1005 of Saeedi which approximates the shape of a smooth surface such as 705, as well as the combination set forth above).
Regarding claim 3, Tervo in view of Saeedi discloses the limitations of claim 1, and wherein Saeedi further teaches that the surface comprises a first material and the substrate comprises a second material (see at least paras. [0023], [0030], [0034] of Saeedi).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the substrate apparatus of Tervo in view of Saeedi to include the further teachings of Saeedi so that the surface comprises a first material and the substrate comprises a second material, for the purpose of using a known diffraction grating structure to achieve desired diffraction characteristics for a particular application.
Regarding claim 5, Tervo in view of Saeedi discloses the limitations of claim 1, and wherein the sub-wavelength stepped pattern comprises a first straight line portion and a second straight line portion oriented perpendicular to said first straight line portion, wherein said first straight line portion and said second straight line portion are arranged alternately (see at least element 1005 of Saeedi, as well as the combination set forth above).
Regarding claim 7, as best understood, Tervo in view of Saeedi discloses the limitations of claim 1, and wherein a third diffraction grating is located optically between the first and second diffraction gratings (see at least DOE 2 of Tervo), the first and second diffraction gratings comprise a symmetric orientation about the third diffraction grating (see at least DOE 2 of Tervo, and wherein D1 + D2 + D3 = 0).
Regarding claim 8, as best understood, Tervo in view of Saeedi discloses the limitations of claim 1, and wherein one of the first and second plurality of diffractive features is disposed at an angle between zero and ninety degrees from a third plurality of diffractive features (see at least DOE 1, DOE 2 and DOE 3 of Tervo, wherein the grating directions and grating vectors of the different diffractive features are angled between zero and ninety degrees from each other).
Regarding claim 12, Tervo in view of Saeedi discloses the limitations of claim 1, and wherein the first plurality of diffractive features are operable to diffract light of a first wavelength range of light and the sub-wavelength stepped pattern comprises a plurality of x-direction components and y-direction components, wherein the distance between each adjacent x-direction component is less than a wavelength of light selected from the first wavelength range (see at least elements DOE 1, DOE 2 and DOE 3 of Tervo in combination with elements 1005 of Saeedi, which has grating features in two directions, which may be defined as x and y directions, and wherein the grating features must have dimensions less than a wavelength of the projected light for diffraction to occur).
Regarding claim 13, Tervo discloses a virtual image near-eye display system, comprising:
a light source operable to emit a first wavelength range of light (see at least elements 101, 204, 405, paras. [0026], [0028], [0037]);
a waveguide operable to receive the first wavelength range of light, including a first plurality of diffractive features and a second plurality of diffractive features (see at least 310 and/or 410 and/or 500 and/or 600, and at least two of DOE 1, DOE 2, DOE 3, and/or 415, 420, 425);
wherein at least one of the first and second plurality of diffractive features comprises diffractive features having a plurality of x-direction components and y-direction components, wherein the distance between each adjacent x-direction component is less than a wavelength of the first wavelength range of light (see at least elements DOE 1, DOE 2 and DOE 3, paras. [0041]-[0042] of Tervo, which have grating features in two directions, which may be defined as x and y directions, and wherein the grating features must have dimensions less than a wavelength of the projected light for diffraction to occur).
Tervo does not specifically disclose that at least one of the first and second pluralities of diffractive features comprise a stepped pattern.
However, Saeedi is also related to display systems including diffraction gratings (see at least the title and abstract of Saeedi), wherein a diffraction grating on the surface of a substrate may include diffractive features comprising a sub-wavelength stepped pattern (see at least figure 10, elements 1010, 1005, para. [0034]).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the substrate apparatus of Tervo to include the teachings of Saeedi so that at least one of the first and second pluralities of diffractive features comprise a stepped pattern, for the purpose of easing grating manufacturing and/or increasing optical efficiency versus a discrete single step rectangular profile (see at least para. [0034] of Saeedi).
Regarding claim 14, as best understood, Tervo in view of Saeedi discloses the limitations of claim 13, and wherein the first and second plurality of diffractive features are disposed in bilateral symmetric orientation about a third plurality of diffractive features (see at least DOE 1, DOE 2 and DOE 3 of Tervo, and wherein D1 + D2 + D3 = 0).
Regarding claim 15, Tervo discloses an image light guide, comprising:
a surface (see at least the portion of 310 and/or 410 and/or 500 and/or 600 which supports gratings DOE 1, DOE 2, DOE 3, and/or 415, 420, 425);
a first plurality of diffractive features (see at least DOE 1 and/or 415); and
a second plurality of diffractive features (see at least DOE 3 and/or 425);
wherein at least one of the first and second pluralities of diffractive features comprise a sub-wavelength pattern configured to diffract incident light as if the pattern diffractive features were linear diffractive features (see at least elements DOE 1, DOE 2 and DOE 3, paras. [0041]-[0042] of Tervo, which have grating features in two directions, which may be defined as x and y directions, and wherein the grating features must have dimensions less than a wavelength of the projected light for diffraction to occur).
Tervo does not specifically disclose that at least one of the first and second pluralities of diffractive features comprise a sub-wavelength stepped pattern.
However, Saeedi is also related to display systems including diffraction gratings (see at least the title and abstract of Saeedi), wherein a diffraction grating on the surface of a substrate may include diffractive features comprising a sub-wavelength stepped pattern (see at least figure 10, elements 1010, 1005, para. [0034]), wherein the diffraction gratings may be configured to (i.e. are capable of) be operable to diffract incident light as if the stepped pattern diffractive features were linear diffractive features (see at least element 1005 of Saeedi which approximates the shape of a smooth surface such as 705).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the substrate apparatus of Tervo to include the teachings of Saeedi so that at least one of the first and second pluralities of diffractive features comprise a sub-wavelength stepped pattern configured to diffract incident light as if the stepped pattern diffractive features were linear diffractive features, for the purpose of easing grating manufacturing and/or increasing optical efficiency versus a discrete single step rectangular profile (see at least para. [0034] of Saeedi).
Tervo does not specifically disclose that the first and second plurality of diffractive features are arranged in a coating.
However, Saeedi further teaches a substrate material wherein the diffractive features may include a further metallic reflective coating (see at least paras. [0023], [0030], [0034] of Saeedi).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the substrate apparatus of Tervo in view of Saeedi to include the further teachings of Saeedi so that the first and second plurality of diffractive features are arranged in a coating, for the purpose of using a known diffraction grating structure to achieve desired diffraction characteristics for a particular application.
Regarding claim 16, Tervo in view of Saeedi discloses the limitations of claim 15, and further comprising a substrate having the surface, wherein the substrate comprises a first material (see at least the portion of 310 and/or 410 and/or 500 and/or 600 which supports gratings DOE 1, DOE 2, DOE 3, and/or 415, 420, 425, paras. [0036], [0046] of Tervo).
Tervo does not specifically disclose that the coating comprises a second material, wherein the second material is different than the first material.
However, Saeedi further teaches that the surface comprises a first material and the substrate comprises a second material (see at least paras. [0023], [0030], [0034] of Saeedi).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the substrate apparatus of Tervo in view of Saeedi to include the further teachings of Saeedi so that the surface comprises a first material and the substrate comprises a second material, for the purpose of using a known diffraction grating structure to achieve desired diffraction characteristics for a particular application.
Regarding claim 17, Tervo in view of Saeedi discloses the limitations of claim 15, and further comprising a third plurality of diffractive features, wherein the third plurality of diffractive features is located between the first and second plurality of diffractive features, and wherein the first and second plurality of diffractive features comprise a symmetric orientation about the third plurality of diffractive features (see at least DOE 2 of Tervo, and wherein D1 + D2 + D3 = 0).
Regarding claim 18, as best understood, Tervo in view of Saeedi discloses the limitations of claim 15, and wherein one of the first and second plurality of diffractive features is disposed at an angle between zero and ninety degrees from a third plurality of diffractive features (see at least DOE 1, DOE 2 and DOE 3 of Tervo, wherein the grating directions and grating vectors of the different diffractive features are angled between zero and ninety degrees from each other).
Regarding claim 20, Tervo in view of Saeedi discloses the limitations of claim 15, and wherein the first plurality of diffractive features are operable to diffract light of a first wavelength range of light and the sub-wavelength stepped pattern comprises a plurality of x-direction components and y-direction components, wherein the distance between each adjacent x-direction component is less than a wavelength of light selected from the first wavelength range (see at least elements DOE 1, DOE 2 and DOE 3 of Tervo in combination with elements 1005 of Saeedi, which has grating features in two directions, which may be defined as x and y directions, and wherein the grating features must have dimensions less than a wavelength of the projected light for diffraction to occur).
Claims 4, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Tervo, U.S. Patent Application Publication Number 2017/0322426 A1, of record (hereafter Tervo) in view of Saeedi et al., U.S. Patent Application Publication Number 2013/0100362 A1 (hereafter Saeedi) as applied to claims 1 and 3 above, and further in view of Kostamo, U.S. Patent Application Publication Number 2017/0235219 A1 (hereafter Kostamo).
Regarding claim 4, Tervo in view of Saeedi further discloses that the second material may be quartz (see at least paragraph [0023] of Saeedi).
Tervo in view of Saeedi does not specifically disclose that the first material comprises a chrome layer.
However, Kostamo is similarly related to substrate diffractive features in a display system wherein Kostamo teaches a substrate made of a second material having first, second and third diffractive features formed in a coating of a first material, wherein a first material comprises a chrome layer (see at least figures 16 and 17B, elements 70, 72, 70’ and 72’, paras. [0159], [0161], [0173], [0175], [0185]-[0186], [0194]-[0201] of Kostamo) and a second material comprises quartz (see at least paras. [0042], [0215], [0229], [0244] of Kostamo).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the apparatus of Tervo in view of Saeedi to include the teachings of Kostamo so that the first material comprises a chrome layer, for the purpose of using a known material and structure which are suitable for use in the diffractive arts to achieve desired diffraction properties. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Regarding claim 10, Tervo in view of Saeedi does not specifically disclose that at least one of the first, second, and third diffraction gratings comprises a pitch of less than 1000 nm.
However, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the pitch of at least one of the first, second, and third diffraction gratings, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to modify the pitch of at least one of the first, second, and third diffraction gratings, for the purpose of sizing at least one of the first, second, and third diffraction gratings such that they are designed to diffract at least one desired incident wavelength of light for an intended application. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Additionally, Kostamo teaches that a pitch of at least one of the first, second, and third diffraction gratings comprises a pitch of less than 1000 nm (see at least paras. [0072]-[0082], [0086] of Kostamo).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the apparatus of Tervo in view of Saeedi to include the teachings of Kostamo so that at least one of the first, second, and third diffraction gratings comprises a pitch of less than 1000 nm, for the purpose of sizing at least one of the first, second, and third diffraction gratings such that they are designed to diffract at least one desired incident wavelength of light for an intended application (Kostamo, para. [0072]).
Regarding claim 11, Tervo in view of Saeedi does not specifically disclose that a total diffraction grating area is between 200 mm2 and a total area of the flat surface, and wherein the first, second, and third diffraction gratings define the total diffraction grating area.
However, Kostamo teaches that the first, second, and third diffraction gratings define a total diffraction grating area, wherein the size of features may be appropriately sized to diffract light for a desired application (see at least figure 3B, paras. [0069]-[0075] of Kostamo).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify a total diffraction grating area to be between 200 mm2 and a total area of the flat surface, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to modify a total diffraction grating area to be between 200 mm2 and a total area of the flat surface, for the purpose of sizing at the first, second, and third diffraction gratings such that they are designed to diffract incident light in a desired area for viewing by a user. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
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 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10 and 11 of copending Application No. 18/861650 (corresponding to US 2025/0306373 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are merely broader than or an obvious variation of claims 1, 10 and 11 of copending Application No. 18/861650.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, 18/861650 discloses a substrate (claim 1), comprising:
a surface (claim 1);
a first plurality of diffractive features arranged along the surface (claim 1); and
a second plurality of diffractive features arranged along the surface (claim 1);
wherein at least one of the first and second pluralities of diffractive features comprise a sub-wavelength stepped pattern (claims 10 and 11).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,493,761 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are merely broader than or an obvious variation of claim 1 of U.S. Patent No. 11,493,761 B2.
Regarding claim 1, 11,493,761 B2 discloses a substrate (claim 1), comprising:
a surface (claim 1);
a first plurality of diffractive features arranged along the surface (claim 1); and
a second plurality of diffractive features arranged along the surface (claim 1);
wherein at least one of the first and second pluralities of diffractive features comprise a sub-wavelength stepped pattern (claim 1).
Claims 1, 2, 6, 7, 8, 15, 17, 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 11, 12 of U.S. Patent No. 12,153,217 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are merely broader than or an obvious variation of claims 1, 4, 11, 12 of U.S. Patent No. 12,153,217 B2.
Regarding claim 1, 12,153,217 B2 discloses a substrate (claim 1 or 4), comprising:
a surface (claim 1 or 4);
a first plurality of diffractive features arranged along the surface (claim 1 or 4); and
a second plurality of diffractive features arranged along the surface (claim 1 or 4);
wherein at least one of the first and second pluralities of diffractive features comprise a sub-wavelength stepped pattern (claim 1 or 4).
Regarding claim 2 of the instant application, see claim 1 or 4 of U.S. Patent No. 12,153,217 B2.
Regarding claim 6 of the instant application, see claims 4 and 11 of U.S. Patent No. 12,153,217 B2.
Regarding claim 7 of the instant application, see claims 4, 11 and 12 of U.S. Patent No. 12,153,217 B2.
Regarding claim 8 of the instant application, see claims 4, 11 and 12 of U.S. Patent No. 12,153,217 B2.
Regarding claim 15 of the instant application, see claim 1 or 4 of U.S. Patent No. 12,153,217 B2.
Regarding claim 17 of the instant application, see claims 4, 11 and 12 of U.S. Patent No. 12,153,217 B2.
Regarding claim 18 of the instant application, see claims 4, 11 and 12 of U.S. Patent No. 12,153,217 B2.
Other Related Art
This prior art, made of record, but not relied upon is considered pertinent to applicant's disclosure since the following references have similar structure and/or use similar optical elements to what is claimed and/or disclosed in the instant application:
Heitzmann, US 2014/0285891 A1, discloses a method for forming a metalized stepped diffraction grating (abstract, fig. 17).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEREK S. CHAPEL whose telephone number is (571)272-8042. The examiner can normally be reached M-F 9:30am-6pm.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Derek S. Chapel/Primary Examiner, Art Unit 2872 9/16/2026
Derek S. CHAPEL
Primary Examiner
Art Unit 2872
