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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/04/2025 and 02/24/2026 have/has been placed in record and considered by the examiner.
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.
Claims 19 and 35 are 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 19 and 35 recite "a negative lens" but the disclosure fails to provide any explicit or inherent support for these limitations. The specification, fail to provide a standard for ascertaining the requisite degree for one of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed on 01/20/2026 with respect to claims 19 and 21-35 have been considered but claim 30 is moot in view of the new ground(s) of rejection.
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 obviousness-type 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 USPQ2d2010 (Fed. Cir. 1993); In re Long!, 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); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). “Thus, the generic invention is ‘anticipated’ by the species of the patented invention” and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 19 and 21-35 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18, respectively, of US Patent 12,242,061 B2. Limitations of the present invention and corresponding US Patent 12,242,061 B2 are listed in the following table for claim 19.
Claim 19 of Present Invention
Claim 1 of Patent 12,242,061 B2
An optical system configured to form an enlarged image of a display surface of an image display element, the optical system comprising, in order from a side of an exit pupil to a side of the display surface, a first half-transmissive reflective surface and a second half-transmissive reflective surface, wherein the optical system includes a negative lens, and a surface of the negative lens at the side of the exit pupil is the second half-transmissive reflective surface,
wherein the optical system has:
An optical system configured to form an enlarged image of a display surface of an image display element, the optical system comprising, in order from a side of an exit pupil to a side of the display surface, a first half-transmissive reflective surface and a second half-transmissive reflective surface, wherein the optical system has:
a first optical path on which light from the display surface transmits through the second half-transmissive reflective surface, is reflected by the first half- transmissive reflective surface, is reflected by the second half-transmissive reflective surface, transmits through the first half-transmissive reflective surface, and is guided to the exit pupil,
a first optical path on which light from the display surface transmits through the second half-transmissive reflective surface, is reflected by the first half-transmissive reflective surface, is reflected by the second half-transmissive reflective surface, transmits through the first half-transmissive reflective surface, and is guided to the exit pupil,
and a second optical path on which light from the side of the exit pupil transmits through the first half-transmissive reflective surface, transmits through the second half-transmissive reflective surface, and is guided to an image sensor, wherein the side of the display surface of the negative lens includes a refractive area disposed outside an optically effective area of the first optical path and inside an optically effective area of the second optical path.
and a second optical path on which light from the side of the exit pupil transmits through the first half-transmissive reflective surface, transmits through the second half-transmissive reflective surface, and is guided to an image sensor, wherein the following inequality is satisfied:
0.5<Cx/Ltp<1.5 where Ltp is a distance on an optical axis of the first optical path from a surface closest to the exit pupil to the second half-transmissive reflective surface, and Cx is a distance on the optical axis of the first optical path from a surface closest to the exit pupil to a center of the image sensor.
Dependent and Independent Claims 19 and 21-35 of the present invention can mapped to Claims 1-18 of US Patent 12,242,061 B2.
Although the conflicting claims are not identical, they are not patentably distinct from each other because:
The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2d 1869, “a later genus claim limitation is anticipated by and therefore not patentably distinct from, an earlier species claim’, In re Goodman, 29 USPQ2d 2010, “Thus, the generic invention is ‘anticipated’ by the species of the patented invention” and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims’).
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.
Claims 19, 21-22, 28-29, and 34-35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bierhuizen et al. (US 2018/0239146 hereinafter Bierhuizen).
Referring to claim 19, Bierhuizen discloses an optical system configured to form an enlarged image of a display surface of an image display element ([0004]; The head-mounted display assembly may include an image projecting device operable to display image content to at least one eye-piece in the head-mounted display assembly. Thus, Examiner interprets that when an image is projected, then the image is enlarged), the optical system comprising, in order from a side of an exit pupil to a side of the display surface ([0079], Fig. 3; The transmitted light, after passing through another optional linear polarizer 312, can be refracted by a lens/group of lenses 210 to form a virtual image to be presented to an eyepiece of an HMD device and the eye of the user.), a first half-transmissive reflective surface (Fig. 3; 208, Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective) and a second half-transmissive reflective surface (Fig. 3; 206, Filter stack I. Thus, the Filter stack I is able to transmit and reflect light, it is called as a half-transmissive reflective) ([0154]; In particular, the coating may allow for half of the light to pass through the combined transflective lens/filter stack 1202 and 1210 and half of the light to be reflected from the lens. In general, the visible light paths 1212a-1212e have wavelengths, optical paths, and efficiencies that are different than the IR light paths 1214.),
wherein the optical system includes a negative lens (see Fig. 8; filter stack I as “a negative lens”), and a surface of the negative lens at the side of the exit pupil is the second half-transmissive reflective surface (see Fig. 8 below that a surface of the negative lens at the side of the exit pupil is the second half-transmissive reflective surface),
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wherein the optical system has:
a first optical path ([0073-0079], Fig. 3; path 300) on which light from the display surface transmits through the second half-transmissive reflective surface (Fig. 3; 206, Filter stack I. Thus, the Filter stack I is able to transmit and reflect light, it is called as a half-transmissive reflective), is reflected by the first half-transmissive reflective surface (Fig. 3; 208, Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective), is reflected by the second half-transmissive reflective surface (Fig. 3; 206, Filter stack I. Thus, the Filter stack I is able to transmit and reflect light, it is called as a half-transmissive reflective), transmits through the first half-transmissive reflective surface (Fig. 3; 208, Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective), and is guided to the exit pupil ([0073] FIG. 3 is a diagram depicting an example polarization path 300 of light transmitted through the optical assembly 200 illustrated in FIG. 2. Here, the filter stacks 206 and 208 are shown disposed between the display panel 204 and the lens 210. A camera 212 is shown below the lens 210 to capture an image of a reflection of the user's eye (not shown at the left of the lens 210) through the lens 210….and [0079]; The transmitted light, after passing through another optional linear polarizer 312, can be refracted by a lens/group of lenses 210 to form a virtual image to be presented to an eyepiece of an HMD device and the eye of the user.), and
a second optical path (Fig. 8; Path 820-822) on which light from the side of the exit pupil transmits through the first half-transmissive reflective surface (Fig. 8; Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective), transmits through the second half-transmissive reflective surface (Fig. 8; Filter stack I. Thus, the Filter stack I is able to transmit and reflect light, it is called as a half-transmissive reflective), and is guided to an image sensor (Fig. 8; 818) ([0127], Fig. 8; The camera 818 can capture movement of the eye 802 (e.g., capture images for eye tracking purposes). The light directed to the eye 802 can be reflected, as shown by path 820. The reflection of the light can be transmitted through lens 810, and filter stack 808 and can be captured by camera 818 as an image. As shown by path 822, the reflection can be provided through lens 810 into prism 814 and bounce off of IR filter 816 and back through prism 814 to be captured by camera 818.), wherein the side of the display surface of the negative lens includes a refractive area (Fig. 8; prism 814) disposed outside an optically effective area of the first optical path (Fig. 8; a refractive prism 814 is outside of the first path) and inside an optically effective area of the second optical path (Fig. 8; refractive prism 814 is inside the second path 820).
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Referring to claim 21, Bierhuizen discloses wherein in the second optical path (Fig. 8; Path 820-822), the light from the side of the exit pupil transmits through the first half-transmissive reflective surface (Fig. 8; Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective…and [0127], Fig. 8; The camera 818 can capture movement of the eye 802 (e.g., capture images for eye tracking purposes). The light directed to the eye 802 can be reflected, as shown by path 820. The reflection of the light can be transmitted through lens 810, and filter stack 808 and can be captured by camera 818 as an image. As shown by path 822, the reflection can be provided through lens 810 into prism 814 and bounce off of IR filter 816 and back through prism 814 to be captured by camera 818), transmits through the second half-transmissive reflective surface (Fig. 8; Filter stack I. Thus, the Filter stack I is able to transmit and reflect light, it is called as a half-transmissive reflective), transmits through the refractive area (Fig. 8; 814), and is guided to the image sensor (As shown by path 822-822, the reflection can be provided through lens 810 into prism 814 and bounce off of IR filter 816 and back through prism 814 to be captured by camera 818.).
Referring to claim 22, Bierhuizen discloses wherein the refractive area is a refractive surface ([0119], Fig. 8; The optical assembly 800 may also include the camera 818. The camera 818 may be placed beneath optical assembly 800 such that the camera can capture an image of a user's eye using prism 814 to bounce light from the eye 802 from the lens 810 and to the camera 818…. and [0120]; The prism 814 may function to block and/or separate particular wavelengths in beams of a light source. For example, a beam (or many beams) of light can be provided from display 804 through optical assembly 800 toward the eye 802. The prism 814 can separate the light, for example, to provide the infrared light reflected from the eye 802. The reflection can allow the camera 818 to capture an image of the eye to track eye and/or head movements associated with the user (e.g., eye 802). The prism 814 may be constructed of any transparent material, including, but not limited to glass, acrylic, liquid filled glass or acrylic, fluorite, silica, quartz, etc.).
Referring to claim 28, Bierhuizen discloses wherein the first half- transmissive reflective surface (Fig. 3; 208, Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective) is a plane ([0101]; In some implementations, the filter stack 606 may be adapted to be oriented in the first direction at an angle from about zero to about 12.5 degrees from the normal direction to the plane along the surface of the display panel 604. The filter stack 608 may be adapted to be tilted in the second direction at an angle from about zero to about 12.5 degrees from the normal direction to the plane of the display panel.).
Referring to claim 29, Bierhuizen discloses wherein the first half-transmissive reflective surface (Fig. 3; 208, Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective) is a surface provided on a polarization-selective reflection type polarizing element ([0060]; In one example, the filter 215 may be coated on a side of a polarizer within the stack 208 facing the lens 210.).
Referring to claim 34, Bierhuizen discloses further comprising:
an eyepiece optical system that is a coaxial optical system using the first optical path ([0067]; In one example, the optical assembly 200 can be a head-mounted display assembly configured to be installed in an HMD device. The assembly 200 may include an image projecting device (e.g., display panel 204) operable to display image content to at least one eye-piece in the HMD device.); and an imaging optical system using the second optical path ([0127]; The reflection of the light can be transmitted through lens 810, and filter stack 808 and can be captured by camera 818 as an image. As shown by path 822, the reflection can be provided through lens 810 into prism 814 and bounce off of IR filter 816 and back through prism 814 to be captured by camera 818.).
Referring to claim 35, Bierhuizen discloses an observation apparatus comprising:
an image display element (Fig. 3; 404);
an image sensor (Fig. 8; 818); and
an optical system configured to form an enlarged image of a display surface of the image display element ([0004]; The head-mounted display assembly may include an image projecting device operable to display image content to at least one eye-piece in the head-mounted display assembly. Thus, Examiner interprets that when an image is projected, the image is enlarged), the optical system comprising, in order from a side of an exit pupil to a side of the display surface ([0079], Fig. 3; The transmitted light, after passing through another optional linear polarizer 312, can be refracted by a lens/group of lenses 210 to form a virtual image to be presented to an eyepiece of an HMD device and the eye of the user.), a first half-transmissive reflective surface (Fig. 3; 206, Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective) and a second half-transmissive reflective surface (Fig. 3; 208, Filter stack I. Thus, the Filter stack I is able to transmit and reflect light, it is called as a half-transmissive reflective),
wherein the optical system includes a negative lens (see Fig. 8; a filter stack I as “a negative lens”), and a surface of the negative lens at the side of the exit pupil is the second half-transmissive reflective surface (see Fig. 8 below that a surface of the negative lens at the side of the exit pupil is the second half-transmissive reflective surface),
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wherein that the optical system has:
a first optical path ([0073-0079], Fig. 3; path 300) on which light from the display surface transmits through the second half-transmissive reflective surface (Fig. 3; 206, Filter stack I. Thus, the Filter stack I is able to transmit and reflect light, it is called as a half-transmissive reflective), is reflected by the first half-transmissive reflective surface (Fig. 3; 208, Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective), is reflected by the second half-transmissive reflective surface (Fig. 3; 206, Filter stack I. Thus, the Filter stack I is able to transmit and reflect light, it is called as a half-transmissive reflective), transmits through the first half-transmissive reflective surface (Fig. 3; 208, Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective), and is guided to the exit pupil ([0073] FIG. 3 is a diagram depicting an example polarization path 300 of light transmitted through the optical assembly 200 illustrated in FIG. 2. Here, the filter stacks 206 and 208 are shown disposed between the display panel 204 and the lens 210. A camera 212 is shown below the lens 210 to capture an image of a reflection of the user's eye (not shown at the left of the lens 210) through the lens 210….and [0079]; The transmitted light, after passing through another optional linear polarizer 312, can be refracted by a lens/group of lenses 210 to form a virtual image to be presented to an eyepiece of an HMD device and the eye of the user.), and
a second optical path (Fig. 8; Path 820-822) on which light from the side of the exit pupil transmits through the first half-transmissive reflective surface (Fig. 8; Filter stack II. Thus, the Filter stack II is able to transmit and reflect light, it is called as a half-transmissive reflective), transmits through the second half-transmissive reflective surface (Fig. 8; Filter stack I. Thus, the Filter stack I is able to transmit and reflect light, it is called as a half-transmissive reflective ), and is guided to an image sensor ([0127], Fig. 8; The camera 818 can capture movement of the eye 802 (e.g., capture images for eye tracking purposes). The light directed to the eye 802 can be reflected, as shown by path 820. The reflection of the light can be transmitted through lens 810, and filter stack 808 and can be captured by camera 818 as an image. As shown by path 822, the reflection can be provided through lens 810 into prism 814 and bounce off of IR filter 816 and back through prism 814 to be captured by camera 818.), wherein the side of the display surface of
the negative lens includes a refractive area (Fig. 8; prism 814) disposed outside an optically effective area of the first optical path (Fig. 8; a refractive prism 814 is outside of the first path) and inside an optically effective area of the second optical path (Fig. 8; refractive prism 814 is inside the second path 820).
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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.
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Bierhuizen et al. (US 2018/0239146 hereinafter Bierhuizen) in view of Togino Takayoshi (DE 69734638 hereinafter Takayoshi).
Referring to claim 23, Bierhuizen as applied above does not specifically disclose wherein the refractive surface is rotationally symmetrical with respect to an optical axis of the first optical path.
In an analogous art, Takayoshi discloses wherein the refractive surface is rotationally symmetrical with respect to an optical axis of the first optical path (Takayoshi-see attachment highlighted section; at a rotationally symmetrical optical system comprising a refraction lens, which from a surface is formed, which is rotationally symmetric about an optical axis, An optical path is formed along a straight line.).
Therefore, it would have been obvious to one of ordinary skill in the art to apply the technique of Takayoshi to the system of Bierhuizen in order to provide a compact optical system and to provide a clear picture with minimal distortion.
Referring to claim 24, Bierhuizen as applied above does not specifically disclose wherein the refractive surface is a plane.
In an analogous art, Takayoshi discloses wherein the refractive surface is a plane (Takayoshi-see attachment highlighted section; Fig. 5 shows that the refractive optical system 10 is a plane.).
Therefore, it would have been obvious to one of ordinary skill in the art to apply the technique of Takayoshi to the system of Bierhuizen in order to provide a compact optical system and to provide a clear picture with minimal distortion.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Bierhuizen et al. (US 2018/0239146 hereinafter Bierhuizen) in view of Tashiro (US 2013/0342749 hereinafter Tashiro).
Referring to claim 30, Bierhuizen as applied above does not specifically disclose further comprising a circular polarization conversion element disposed closer to the display surface than the second half-transmissive reflective surface.
In an analogous art, Tashiro discloses further comprising a circular polarization conversion element disposed closer to the display surface than the second half-transmissive reflective surface ([0037], Fig. 1; SS denotes an aperture diaphragm (aperture stop). G denotes an optical block provided in the design on the assumption of an optical filter and a face plate of an image sensor. IP denotes an image plane corresponding to an image pickup plane of a solid state image sensor (photoelectric conversion element), such as a CCD sensor and a CMOS sensor. Thus, conversion element is closer to G unit than L3 unit).
Therefore, it would have been obvious to one of ordinary skill in the art to apply the technique of Tashiro to the system of Bierhuizen in order to provide a lens that is compact in size.
Claim Objections
Claims 25-27 and 31-33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Referring to claim 25, the following is a statement of reasons for the indication of allowable subject matter: the prior art fail to suggest limitations “further comprising an optical element that is rotationally asymmetric and disposed closer to the image sensor than the refractive surface in the second optical path”.
Referring to claims 26-27 are objected upon dependent claim 25.
Referring to claim 31, the following is a statement of reasons for the indication of allowable subject matter: the prior art fail to suggest limitations “wherein the circular polarization conversion element includes a linear polarization plate and a quarter waveplate”.
Referring to claim 32 is objected upon dependent claim 31.
Referring to claim 33, the following is a statement of reasons for the indication of allowable subject matter: the prior art fail to suggest limitations “wherein the following inequality is satisfied:
0.5 < Cx/Ltp < 1.5 where Ltp is a distance on an optical axis of the first optical path from a surface closest to the exit pupil to the second half-transmissive reflective surface, and Cx is a distance on the optical axis of the first optical path from a surface closest to the exit pupil to a center of the image sensor”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT D AU whose telephone number is (571)272-5948. The examiner can normally be reached M-F. General 8am-5pm.
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/SCOTT D AU/Examiner, Art Unit 2624
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