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 .
Objections to the Specification
The Abstract of the invention is objected to for failing to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure. See 37 CFR § 1.72. As explained in MPEP § 608.01(b), the abstract should be in narrative form and generally limited to a single paragraph preferably within the range of 50 to 150 words in length.
In the present case, the 17-word abstract is insufficient to convey the nature and gist of the invention because the limited length does not contain any mention of the manner in which the invention purports to improve focus, i.e., through a rotatably adjustable cover which defines a plurality of apertures having different-sized areas which allow light to the lens of the night vision instrument.
Appropriate correction is required.
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 6, 10 and 11 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 pre-AIA the applicant regards as the invention.
Claim 6 recites the phrase: “wherein the second area is different than the first area”. However, independent Claim 1, from which Claim 6 depends, already recites “the first area being smaller than the second area”. Thus, the meaning of this phrase is unclear because it does not appear to further limit the subject matter of Claim 1. Claim 7 inherits the deficiencies of Claim 6.
Claim 10 recites the phrase: “wherein the first area has a maximum diameter of about 13/64” or less”. This phrase is unclear because it appears to recite a maximum value of the “first area” in two different ways: (1) by using the word “maximum”, and (2) using the term “or less”. It appears that this phrase was intended to recite either: (A) wherein the first area has a maximum diameter of about 13/64”, or (B) wherein the first area has a diameter of about 13/64” or less. For examination, this phrase will be treated as: “wherein the first area has a diameter of about 13/64” or less”. Claim 11 is deficient for similar reasons, and will be treated similarly for purposes of examination.
Appropriate correction is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 recites: “wherein the second area has an area less than or greater than the first area”. However, Claim 1, from which Claim 12 depends, already recites “the first area being smaller than the second area”. Therefore, Claim 12 does not appear to include all of the limitations of the claim upon which it depends.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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 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 1-4, 6-12, 15-18 and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fuller et al., U.S. Pat. Appl. Pub. No. 2022/0252767 A1 (cited in the IDS of December 8, 2025).
Regarding Claim 1, Fuller discloses: A device for improving the focus of an object viewed using a night vision instrument, the night vision instrument comprising an instrument lens, a lens frame comprising a distal end, and night vision components (the Office notes that the presently claimed invention is the ), the device comprising (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
a housing configured to couple to the distal end of the lens frame (housing 20 is configured to couple to a lens frame 160 at a distal end of a night vision device 150; Abstract and paragraphs [0031], [0047] and FIGS. 1-3, 6, 12, 13A-F, 14A-F of Fuller); and
a cover coupled to the housing (faceplate 50 is coupled to housing 20; paragraph [0033] and FIGS. 1-3, 6, 7, 10, 12 of Fuller);
wherein, when the housing is coupled to the lens frame, the cover is rotatably adjustable to define a plurality of apertures allowing light to the lens (when housing 20 is coupled to lens frame 160, faceplate 50 is rotatably adjustable to define a plurality of individual refocusing apertures [IFAs] 81, 82, 83 which allow light to the lens of lens frame 160; Abstract and paragraphs [0024], [0040] and FIGS. 6, 7, 13A-F, 14A-F of Fuller);
the apertures being variable between having at least a first area and a second area, the first area being smaller than the second area (individual refocusing apertures [IFAs] 81, 82, 83 of aperture-selection component [ASC] 80 are variable between at least a first aperture [IFA] 81, second aperture [IFA] 82, and third aperture [IFA] 83, wherein each of these apertures [IFA] is progressively larger in area; paragraphs [0024], [0035], [0040]-[0042] and FIGS. 6, 7 of Fuller); and
wherein when the device is coupled to the night vision instrument, the visual clarity of the object viewed through the instrument and device is superior to the visual clarity of the object when viewed using the instrument without the device, when the object is within 3 feet of the device and the aperture has the first area or the second area (the Office notes that this claim limitation appears to be a goal or desired outcome of the invention, which cannot serve as the basis of invention because it is presumed that a prior art device having the same physical structure and chemical composition will exhibit the same optical properties, however, in any case, Fuller does disclose this limitation in that Fuller discloses that aperture reduction [which is effected by the individual refocusing apertures IFAs 81, 82, 83], within the context of night vision applications, increases depth of focus which is critical for near-focus applications such as reading maps, opening doors, or setting charges; see paragraphs [0003], [0023] of Fuller).
Regarding Claim 2, Fuller discloses the limitations of Claim 1 and further discloses: wherein the aperture having the first area is circular (individual refocusing aperture IFA 81 is shown circular; paragraph [0027] and FIGS. 6, 7 of Fuller).
Regarding Claim 3, Fuller discloses the limitations of Claim 1 and further discloses: wherein the aperture having the first area is not circular (in paragraph [0027] Fuller discloses “round or circular apertures … or other aperture shapes” for aperture-selection component ASC [80], and thus the apertures may be non-circular).
Regarding Claim 4, Fuller discloses the limitations of Claim 1 and further discloses: wherein the cover is circular (faceplate 50 may have a generally circular shape; FIGS. 1-8, 10-12, 13A-F, 14A-F of Fuller).
Regarding Claim 6, as best understood, Fuller discloses the limitations of Claim 1 and further discloses: wherein the cover comprises an opening having a third area (faceplate 50 may comprise individual refocusing aperture [IFA] 83; Abstract and paragraphs [0024], [0040] and FIGS. 6, 7, 13A-F, 14A-F of Fuller), the cover further comprising at least one hinge coupling the cover to the housing (faceplate 50 comprises hinge 25 which assists in couple faceplate 50 to housing 20; paragraphs [0033], [0034] and FIGS. 1-4, 6, 7, 10 of Fuller), wherein the superior visual clarity is achieved by swinging the cover over the instrument lens frame to allow light to the instrument lens having the first area (hinge 25 enables switching the faceplate 50 from an open state to a closed state, wherein the closed state causes the individual refocusing aperture [IFA] 81 to be positioned over a center [sight line] of the lens of lens frame 160; paragraphs [0026], [0033], [0034], [0040] and FIGS. 1-3, 6, 7, 12, 13A-F, 14A-F of Fuller), and the aperture having the second area is achieved by rotating a portion of the cover (aperture-selection component [ASC] 80 of faceplate 50 is rotatable to allow selection of individual apertures 81, 82, 83, such as switching from aperture 81 to aperture 82; paragraphs [0033], [0035], [0040], [0042] and FIGS. 6, 7, 9 of Fuller), and wherein the second area is different than the first area (as explained above in the 35 USC 112(b) rejection, Claim 1 already recites “the first area being smaller than the second area”, but in any case, note that Fuller discloses that each of the apertures [IFA] 81, 82, 83 may be progressively larger in area; paragraphs [0024], [0035], [0040]-[0042] and FIGS. 6, 7 of Fuller).
Regarding Claim 7, Fuller discloses the limitations of Claim 6 and further discloses: wherein the cover comprises at least two sections, each section comprising a hinge coupling the section to the housing, wherein the superior visual clarity is achieved by swinging the sections over the lens frame to allow light to the instrument lens having the first area or the second area (Fuller discloses a monocular or binocular arrangement for the disclosed night vision device, and thus may comprise two hinges 25 which enables switching faceplate 50 from an open state to a closed state for each lens to reduce aperture size; paragraphs [0048]-[0050] and FIGS. 12, 13A-F, 14A-F of Fuller)
Regarding Claim 8, Fuller discloses the limitations of Claim 1 and further discloses: wherein the housing comprises a ring and the cover comprises a rotatable portion that forms the aperture, wherein the rotatable portion includes a device for fixing each of a plurality of positions of the rotatable portion (aperture-selection component [ASC] 80 of faceplate 50 is rotatable to allow selection of individual apertures 81, 82, 83, and the ASC 80 may include one or more ASC-positioning elements, e.g., magnets, detents, or other methods of positioning methods, that mate with one or more faceplate 50 positioning elements, e.g., magnets, detents, or other methods of positioning, housed within or on the faceplate 50 to position each selected aperture 81, 82, 83; paragraphs [0026], [0033], [0035], [0039], [0040], [0042] and FIGS. 6, 7, 9 of Fuller).
Regarding Claim 9, Fuller discloses the limitations of Claim 1 and further discloses: wherein the cover includes a locking mechanism that prevents rotation of the rotatable portion (the aperture-selection component [ASC] 80 may include one or more ASC-positioning elements, e.g., magnets, detents, or other methods of positioning methods, that mate with one or more faceplate 50 positioning elements, e.g., magnets, detents, or other methods of positioning, housed within or on the faceplate 50 to position each selected aperture 81, 82, 83; paragraphs [0026], [0033], [0035], [0039], [0040], [0042] and FIGS. 6, 7, 9 of Fuller).
Regarding Claim 10, as best understood, Fuller discloses the limitations of Claim 1 and further discloses: wherein the first area has a maximum diameter of about 13/64" [5.16mm] or less (each individual refocusing aperture IFA [81, 82, 83] may comprise a unique diameter in the range of 2 mm to 18 mm, and thus aperture 81 may have a diameter of 2 mm; paragraph [0036] and FIGS. 6, 7 of Fuller).
Regarding Claim 11, as best understood, Fuller discloses the limitations of Claim 1 and further discloses: wherein the first area has a maximum diameter of about 1/8" [3.18mm] or less (each individual refocusing aperture IFA [81, 82, 83] may comprise a unique diameter in the range of 2 mm to 18 mm, and thus aperture 81 may have a diameter of 2 mm; paragraph [0036] and FIGS. 6, 7 of Fuller).
Regarding Claim 12, as best understood, Fuller discloses the limitations of Claim 1 and further discloses: wherein the second area has an area less than or greater than the first area (as explained above in the 35 USC 112(d) rejection, Claim 1 already recites “the first area being smaller than the second area”, but in any case, note that Fuller discloses that each of the apertures [IFA] 81, 82, 83 may be progressively larger in area; paragraphs [0024], [0035], [0040]-[0042] and FIGS. 6, 7 of Fuller).
Regarding Claim 15, Fuller discloses the limitations of Claim 1 and further discloses: wherein the cover is disposed at the distal end of the lens frame (housing 20 is configured to couple to the distal end of the lens frame 160 of the night vision device 150; Abstract and paragraphs [0031], [0047] and FIGS. 1-3, 6, 12, 13A-F, 14A-F of Fuller).
Regarding Claim 16, Fuller discloses the limitations of Claim 1 and further discloses: wherein the cover is manually adjustable between aperture areas (the aperture-selection component [ASC] 80 may be manually operated, e.g., the disc manually rotated by the user; paragraph [0026] and FIGS. 6, 13A-F, 14A-F of Fuller).
Regarding Claim 17, Fuller discloses the limitations of Claim 16 and further discloses: wherein the manual adjustment is by electronic switch, lever, knob, spring release, hinge, latch, or rotating bezel (manual and/or automated selection of individual apertures based on light sensors and software, and/or the rotation of the ASC by means of electrical servos or other means; paragraphs [0026], [0028] and FIGS. 6, 13A-F, 14A-F of Fuller).
Regarding Claim 18, Fuller discloses the limitations of Claim 1 and further discloses: further comprising a component that automatically adjusts the cover between aperture areas (instead of manual adjustment, there may be provided an automated selection of individual apertures based on light sensors and software, and/or the rotation of the ASC by means of electrical servos or other means; paragraph [0028] and FIGS. 6, 13A-F, 14A-F of Fuller).
Regarding Claim 21, Fuller discloses the limitations of Claim 1 and further discloses: A night vision instrument comprising the device of claim 1 (night vision device 150 may include the night vision refocus device 1 [having the faceplate 50 and housing 20] coupled to the lens frame 160 of the night vision device 150; paragraphs [0047]-[0049] and FIGS. 12, 13A-F, 14A-F of Fuller).
Regarding Claim 22, Fuller discloses the limitations of Claim 21 and further discloses: wherein the lens frame incorporates the housing (lens frame 160 of the night vision device 150 may incorporate housing 20, and Fuller states that although the night vision refocus device 1 may be considered as an accessory style device being adapted to existing optical devices, the night vision refocus device 1 may alternatively be incorporated into the optical device as a permanent feature; paragraphs [0030], [0047] and FIGS. 12, 13A-F, 14A-F of Fuller).
Regarding Claim 23, Fuller discloses the limitations of Claim 21 and further discloses: wherein the housing is permanently affixed to the lens frame (lens frame 160 of the night vision device 150 may incorporate housing 20, and Fuller states that although the night vision refocus device 1 may be considered as an accessory style device being adapted to existing optical devices, the night vision refocus device 1 may alternatively be incorporated into the optical device as a permanent feature; paragraphs [0030], [0047] and FIGS. 12, 13A-F, 14A-F of Fuller).
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claims 5, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Fuller.
Regarding Claim 5, Fuller discloses the limitations of Claim 1, but does not appear to explicitly disclose: wherein the cover is not circular.
However, it has been held that changes of shape are generally a matter of choice which a person of ordinary skill in the art would find obvious absent persuasive evidence that the particular shape is significant. MPEP § 2144.04, Section IV, Subsection B, citing In re Dailey, 357 F.2d 669; 149 USPQ 47 (CCPA 1966).
In the present case, Fuller discloses that the overall geometry of the faceplate 50 may be larger than the circular area of an objective lens of an optical device, but the portion of the faceplate that overlaps the circular area of the objective lens may be considered the effective sight line covering portion (see, e.g., paragraph [0035] of Fuller; emphasis added). Thus, Fuller recognizes that a size or shape of faceplate 50 need not match the circular area of the lens, so long as it covers the lens, i.e., overlaps the lens area to reduce the area through which light can enter to one of the apertures 81, 82, 83.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a non-circular cover for the faceplate 50 of Fuller because any shape, so long as it covers an entirety of the lens, would have the same predictable and functional effect of blocking all other incoming light except through the one of the IFA apertures [81, 82, 83], as evidenced by paragraph [0035] and the overall disclosures of Fuller.
Regarding Claims 13 and 14, Fuller discloses the limitations of Claim 1, but does not appear to explicitly disclose a maximum distance of the faceplate 50 from the lens of lens frame 160, such that: wherein the cover is about 10/16" [15.88mm] or less, or 3/16" [4.76mm] or less, from the instrument lens.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05, Section II, Subsection A, citing In re Aller, 220 F.2d 454, 456; 105 USPQ 233, 235 (CCPA 1955).
In the present case, the general conditions of the claim are disclosed in the prior art because Fuller discloses that the faceplate 50 is intended to a cover a lens of the lens frame 160 to reduce its aperture size [i.e., block all light other than light incoming through reduced apertures 81, 82, 83], and is intended to be adjacent to a distal end (see, e.g., paragraphs [0033]-[0035], [0040], [0041] and FIGS. 6, 12, 13A-F, 14A-F of Fuller).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the claimed maximum distance between the faceplate 50 and the lens of lens frame 160 in Fuller in accordance with selecting a workable range of distance that the faceplate 50 can be spaced apart from the lens while still blocking all light except for the aperture, and without unnecessarily extending the length of the night vision device beyond the lens, as evidenced by paragraphs [0033]-[0035], [0040], [0041] and FIGS. 6, 12, 13A-F, 14A-F of Fuller.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fuller in view of Hanna, U.S. Pat. Appl. Pub. No. 2010/0187417 A1 (published application of U.S. Pat. No. 7,969,673 of Hanna et al., cited in the IDS of December 8, 2025).
Regarding Claims 19 and 20, Fuller discloses the limitations of Claims 1 and 18 and further discloses automated selection of apertures based on light sensors and software (see, e.g., paragraph [0028] of Fuller).
Nonetheless, Fuller does not appear to explicitly disclose that the light sensors receive infrared light, e.g., infrared light that may be emitted by the night vision device (or its attachments), and then reflected by an object in front of the lens, such that: further comprising an infrared light source, or wherein the component that automatically adjusts the cover between aperture areas uses ultrasonic sound waves or infrared light to detect the distance of the object from the device.
Hanna is related to Fuller with respect to night vision focusing device.
Hanna teaches: further comprising an infrared light source, and wherein the component that automatically adjusts the cover between aperture areas uses ultrasonic sound waves or infrared light to detect the distance of the object from the device (providing an infrared light source, and further providing automatic adjustment of a cover between aperture areas, wherein the component may use ultrasonic sound waves, infrared light, or other means to detect the distance of the object from the camera and assist in the automatic adjustment of the cover between aperture areas based on the distance of the object from the device; paragraphs [0065], [0066] and FIGS. 1-3 of Hanna).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the infrared emission, detection, and distance-based aperture adjustment of Hanna for the device of Fuller because such technique eliminates the need for manual adjustment, and such infrared light source can improve visual clarity, as taught in paragraphs [0065], [0066] of Hanna.
Examiner Note – Consider Entirety of References
Although various text and figures of the cited references have been specifically cited in this Office Action to show disclosures and teachings which correspond to specific claim language, Applicant is advised to consider the complete disclosure of each reference, including portions which have not been specifically cited by the Examiner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN S DUNNING whose telephone number is 571-272-4879. The examiner can normally be reached Monday thru Friday 10:30AM to 7:00PM Eastern Time Zone. 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, BUMSUK WON can be reached at 571-272-2713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN S DUNNING/Primary Examiner, Art Unit 2872
