NON-FINAL OFFICE ACTION
Acknowledgements
1. This non-final Office Action addresses broadening reissue U.S. Application No. 18/991,319 (“instant application”). Examiners find the actual filing date of the instant application is December 20, 2024.
2. The instant application is a broadening reissue application of U.S. Patent No. 11,650,426, (“‘426 Patent”) issued May 16, 2023. The ‘426 Patent was filed on Apr. 21, 2020 as U.S. Application No. 16/854,667 (“667 Application”), titled “HOLOGRAPHIC OPTICAL ELEMENTS FOR EYE-TRACKING ILLUMINATION”.
3. Examiners do not find any certificates of correction, ongoing/previous proceedings before the Office, or current ongoing litigation involving the ‘426 Patent.
4. The ‘426 Patent issued with claims 1-20 (“Patented Claims”). In the preliminary amendment filed December 20, 2024 ("DECEMBER 2024 CLAIM AMENDMENTS"), claims 21-31 are added.
5. Claims 1-31 are pending and examined and are grouped as follows:
claims 1-13;
claims 14-20; and
claims 21-31.
Priority Claims
6. Examiners find the instant application is claiming domestic priority under 35 U.S.C. § 120 or 35 U.S.C. § 119(e) to Provisional App. No. 62/845,770 (“’770 Application”) filed on May 9, 2019.
7. Examiners find the instant application does not claim foreign priority.
8. Because the instant application claims domestic priority to the ‘770 Application and Examiners find the same figures 1-20 of the instant application in the ‘770 Application, the presumed effective U.S. filing date of the instant application is the filing date of the ‘770 Application, which is May 9, 2019.
Consent of Assignee
9. The consent filed Dec. 20, 2024 is objected to for a minor typographical error. Specifically, there is a typographical error in the name of the person signing for the assignee. See screenshot below.
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Claim Objections
10. The DECEMBER 2024 CLAIM AMENDMENTS are objected to because they do not comply with the marking requirements of 37 CFR 1.173. Specifically, new claims 21-31 should be underlined because matter added by reissue is underlined. CORRECTION IS REQUIRED.
Recapture
11. Claims 21-31 are rejected under 35 U.S.C. §251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. §251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Under MPEP §1412.02(I), the following is the three step test for determining recapture in reissue applications:
determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Recapture Issue (1): “…light sources of the array of light sources are spaced apart from each other and are each characterized by a small form factor, such that the light sources are invisible to the eye of the user…”--
As to step (1), claims 21-31 are broader than the patent claims because the array of light sources are no longer limited to being “spaced apart from each other and are each characterized by a small form factor, such that the light sources are invisible to the eye of the user….”
As to step (2), the broader aspects of the reissue claims surrendered in the Remarks dated Oct. 12, 2022 in the original prosecution (i.e., App. No. 16/854,667). See screenshot below.
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As to step (3), if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue. See MPEP §1412.02(III)(B)(4).
--Original Claim 1--
The limitation pertaining to the “array of light sources” in the original claims was as follows. See screenshot below in claims filed April 21, 2020 in the original prosecution (i.e., App. No. 16/854,667).
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--Patent Claim 14--
Patent claim 14 is representative in the comparison to the original claim in this examination for material narrowing.
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--Reissue Claim 21--
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Here, reissue claim 21 entirely omits “light sources of the array of light sources are spaced apart from each other and are each characterized by a small form factor, such that the light sources are invisible to the eye of the user” and as such, there is no material narrowing so as to avoid recapture.
Recapture Issue (2): “…1st encapsulating layer on the array of light sources…”
As to step (1), claims 21-31 are broader than the patent claims because the “1st encapsulating layer on the array of light sources” has been removed from the claims.
As to step (2), the broader aspects of the reissue claims was surrendered in the amendment to the claims filed June 2, 2022 filed in response to the non-final rejection mailed March 2, 2022 to put the claims in condition for allowance. See screenshot below.
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As to step (3), the “1st encapsulation layer” is wholly eliminated from claims 21-31. Thus, the reissue claim does not materially narrow relative to the original claim and the recapture rule does not bar reissue.
Recapture Issue (3): “…a 2nd encapsulating layer on the array of holographic optical elements…” (claims 12 and 20)
As to step (1), the reissue claims 21-31 are broader than the patent claims 12 and 20 because the “encapsulating layer on the array of holographic optical elements” (i.e., the “2nd encapsulating layer”) has been removed from the claims.
As to step (2), the broader aspects of the reissue claims surrendered in the Remarks dated June 2, 2022, page 8 in the original prosecution (i.e., App. No. 16/854,667). See screenshot below.
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As to step (3), the “2nd encapsulation layer,” i.e., the “encapsulation layer on the array of holographic optical elements” is wholly eliminated from claims 21-31. Thus, the reissue claim does not materially narrow relative to the original claim and the recapture rule does not bar reissue.
35 USC §251 - Original Patent Requirement
12. Claims 21-31 are rejected under 35 U.S.C. 251 for not being the same invention as that disclosed as being the invention in the original patent. See MPEP 1412.01; United States Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668, 53 USPQ6 (1942); Antares Pharma Inc., v. Medac Pharma Inc. and Medac GMBH. 771 F.3dl354, 112 USPQ2d 1865 (Fed. Cir. 2014); and Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346. 1352, 2019 USPQ2d 221227 (Fed. Cir. 2019).
Under MPEP 1412.01, Examiners review the reissue application to determine whether the original patent requirement is satisfied, by considering the following factors:
A. the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. §112(a) is satisfied;
B. nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
C. the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
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The only disclosed embodiment of the eye illumination system in the ‘462 Patent is found in figure 10, which is reproduced above. This illumination system (#1000) comprises “substrate” (#1010), “light sources” (#1020), “HOEs” (#1042), “1st encapsulation layer” (#1030), and “2nd encapsulation layer” (#1045).
Claims 21-31 have been broadened by, inter alia: (1) removing the spacing requirement of the “array of light sources,” i.e., “array of light sources ,” (2) removing the “1st encapsulation layer,” and (3) removing the “1st encapsulation layer.”
The ‘462 Patent does not clearly and unequivocally disclose an embodiment where the array of light sources are NOT spaced apart from each other nor does it disclose an embodiment without the 1st and 2nd encapsulation layers.
As is discussed extensively MPEP 1412.01, perhaps the leading case on the issue of the original patent requirement is Antares Pharma Inc., V. Medac Pharma Inc, and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). To satisfy the original patent requirement where a new invention is sought by reissue, “…the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention" Antares Pharma, Inc., 771 F.3d at 1363, 112USPQ2d at 1871. Here, Antares's original patent (U.S. Patent 7,776,015) claimed jet injection devices. On reissue, Antares broadened its claims to cover any “injection device.”
The C.A.F.C. commented as follows:
“‘[I]t is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification’ . . . [when] it was nonetheless clear that the invention disclosed in the original patent required the presence [of the element omitted in the reissue claims].” (Emphasis added.)
In other words, all embodiments disclosed by the original Antares patent were directed to jet injection devices; there was no express disclosure of an injection device that was not a jet injection device.
Also, prominently discussed in the M.P.E.P. is Forum US, Inc, v. Flow Valve, LLC. 926 F.3d 1346, 1352, 2019 USPQ2d 221227 (Fed. Cir. 2019). Here, unlike its original claims, Forum’s reissue claims did not include “arbors”. The C.A.F.C. concluded that ‘‘nowhere do the written description or drawings disclose that arbors are an optional feature of the invention”. Thus, like Antares, the original patent requirement was not met because Forum was attempting to claim subject matter for which there was no express disclosure in the original patent specification.
The M.P.E.P. also discusses Ex parte Sandwick. Appeal No. 2018-008369, (PTAB July 23, 2019). Here, the original patent described fabrication methods that all included casting. Nowhere was casting mentioned as optional. Once again, the Applicant was rebuffed by the original patent requirement since there was no disclosure of a fabrication method that did not include casting. This was the holding despite the fact that one skilled in the art would understand that techniques other than casting were readily available.
Antares, Forum, and Sandwick are all commonly characterized by a failure of the original patent specification to expressly describe the broadened versions of embodiments represented by the reissue claims. In Antares, there was no express description of a non-jet injection device. In Forum, there was no express description of an embodiment without arbors. In Sandwick, there was no express description of fabrication without casting. While the written description requirement may have been satisfied in each case, the original patent requirement was not.
In this case, the claims of the present reissue application are like those of Antares, Forum, and Sandwick in that the claims of the present reissue application do not find express support in the original patent disclosure of an embodiment where the “array of light sources” is not spaced apart and where there is no “encapsulating layer on the array of light sources.”
Irrespective of whether one skilled in the art would understand that spacing the “array of light sources” apart or the “1st/2nd encapsulating layers” are an optional limitation of the described embodiments, nowhere in the ‘426 Patent do the written description or drawings disclose that the ‘426 is an optional limitation of the invention. In other words, the 35 U.S.C. §251 requires more than a skilled artisan’s ability to infer that the embodiment claimed on reissue was described in the specification of the original patent. There must be an “express disclosure” of the “exact embodiment claimed on reissue.” Antares, 771 F.3d at 1363. Here, the ‘426 Patent specification does not clearly and unequivocally disclose an embodiment without the “1st/2nd encapsulating layer” and where the “array of light sources” is NOT spaced apart. Thus, the original patent requirement is not met because reissue claims 21-31 are directed to an embodiment for which there was no express disclosure in the original patent specification.
Claim Rejections - 35 USC § 251
13. Claims 21-31 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. See §112 Written Description below.
Claim Rejections - 35 USC § 112
14. Claims 21-31 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
Specifically, the scope of the patent claims was changed by removing limitations requiring: (1) the light sources are spaced apart, (2) the 1st encapsulation layer, and (3) the 2nd encapsulation layer.
As to the change in scope regarding the spacing of the light sources, Examiners do not find that is element was described in the ‘426 Patent as an essential or critical feature of the invention. See MPEP §2163.05(I)(A).
In contrast, the 1st and 2nd encapsulation layers are described as an essential or critical feature of the invention at col.31:63 to col.32:11 and figure 19, which are reproduced below.
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Because the encapsulating the light sources and the HOEs for eye illumination in refractive-index matching materials is critical to reduce the undesired Fresnel reflections at interfaces between different materials, the omission of the 1st and 2nd encapsulating layers does not comply with the written description requirement.
Allowable Subject Matter
15. Claims 1-13 are allowed because the prior art does not disclose or make obvious “an array of light sources on the substrate and configured to emit infrared light, wherein light sources of the array of light sources are spaced apart from each other and are each characterized by a small form factor, such that the light sources are invisible to the eye of the user; a 1st encapsulation layer on the array of light sources and, in combination with the substrate, encapsulating the array of light sources; and an array of holographic optical elements on a surface of the 1st encapsulation layer, wherein: holographic optical elements in the array of holographic optical elements are spaced apart from each other, each holographic optical element of the array of holographic optical elements is on a respective light source of the array of light sources, and each holographic optical element of the array of holographic optical elements is configured to transmit the visible light without diffraction and diffract the infrared light emitted by the respective light source of the array of light to a respective direction towards the eye of the user for eye-tracking” in combination with the other limitations of the base claim.
16. Claims 14-20 are allowed because the prior art does not disclose or make obvious “an array of light sources configured to emit infrared light, wherein light sources of the array of light sources are spaced apart from each other and are each characterized by a small form factor, such that the light sources are invisible to an eye of a user of the near-eye display system; a substrate and a 1st encapsulating layer encapsulating the array of light sources, the substrate and the 1st encapsulating layer positioned in a FOV of the eye of the user and being transparent to at least visible light; and an array of holographic optical elements on a surface of the 1st encapsulation layer, wherein: holographic optical elements in the array of holographic optical elements are spaced apart from each other, each holographic optical element of the array of holographic optical elements is on a respective light source of the array of light sources, and each holographic optical element of the array of holographic optical elements is configured to diffract the infrared light emitted by the respective light source of the array of light sources to a respective direction towards the eye of the user of the eye-tracking system” in combination with the other limitations of the base claim.
17. Claims 21-31 are not in condition for allowance because of recapture and OPR. These claims, however, contain allowable subject matter. Specifically, the claimed combination of the “plurality of optical layers” with the “array of light sources that emit infrared light,” “array of holographic optical elements,” where “each holographic optical element of the array of holographic optical elements is configured to transmit the visible light without diffraction and diffract the infrared light emitted by the respective light source of the array of light sources towards the eye of the wearer of wearable device; and wherein execution of the instructions by the processor causes the eye-tracking system to: control, via the circuit, the array of light sources to emit the infrared light; and capture at least one glint image of a portion of the infrared light reflected from the eye of the wearer” in combination with the other limitations of the claims.
Conclusion
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEANDRA M HUGHES whose telephone number is (571)272-6982. The examiner can normally be reached Generally M-Th 8AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached at 571-272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Signed:
/DEANDRA M HUGHES/Reexamination Specialist, Art Unit 3992
Conferees:
/CHRISTINA Y. LEUNG/Primary Examiner, Art Unit 3991
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992