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 .
Response to Arguments
Claims 1-20 are currently pending.
Applicant’s amendment filed 01 December 2025 overcomes the prior 112(b) rejection(s).
Applicant’s arguments filed 01 December 2025 have been carefully considered but they are not persuasive. The thrust of applicant’s argument is directed towards the 35 U.S.C. 112(a) rejection of claim 1.
(A) Rejection under 35 U.S.C. § 112(a) - Written Description
Applicant on pp. 6-9 of the Remarks contends the written description rejection under 35 U.S.C. § 112(a) and argues the disclosure provides sufficient support to demonstrate possession. Applicant relies on four contentions in support:
(A.1) Applicant on pp. 7-8 relies on ¶[0005] and FIGS. 1, 3-4 showing two pixels and two exiting angles with related descriptions ¶¶[0025], [0031] as adequate written description of how pixel position determines output angle.
(Response to A.1) Contention A.1 is unpersuasive for the following reasons:
Applicant’s cited paragraphs provide only statements of the intended result rather than a disclosure of the operative structure which produces it. The passages recite the desired functional outcomes (“output at a unique angle,” “have different beam angles”) but does not provide any operative structural features nor specifics pertaining to the physical/optical configuration of the DGS and CPA which would produce the claimed angle-specific beam output. For example, the disclosure is silent towards the specific grating periodicity of the DGS employed, the pixel pitch of the CPA, the pixel-to-grating separation, the specific geometry matching between CPA and DGS, the specific grating selection criteria, nor any meaningful direction which would yield in the claimed invention providing for the specifically defined beam output angles.
Likewise, FIGS. 1 and 3-4 of the Drawings are merely conceptual sketches, and do not provide any geometrical particulars (e.g., pitch, separation, distances, grating vector variation, layer spacing, phase functions) to inform a person of ordinary skill how the DGS is to be fashioned with the CPA to achieve the claimed function. Conceptual drawings do not, without more, convey possession of the claimed DGS, positioned to diffract one or more light beams each emitted at a specific angle based on pixel position.
Moreover, applicant’s cited passages also do not cure the particular limitation “wherein the at least one diffraction grating is an aperiodic diffraction grating.” Claim 1 is not directed to any lens or any periodic grating; it expressly requires aperiodicity. While the Specification uses the term “aperiodic diffraction gratings” (e.g., ¶[0026]), it does not define the aperiodicity (e.g., what grating parameter is varied, over what range, according to what function, and to accomplish what specific beam-steering mapping). Thus, the cited paragraphs do not reasonably convey possession of the claimed “aperiodic” structure as part of the functional steering requirement.
Finally, a careful reading of the prior action dated 07/19/2025 (“NFOA”) would have addressed Contention A1, see p. 5 of NFOA: “The specification states the ‘CPs may be arranged in 1D or 2D arrays’ (¶ 4) and declares ‘each CP has a unique position relative to the DGS’ which dictates the output angle (¶ 5), yet omits the pixel pitch, pixel-to-grating separation, array layout, geometry matching between CPA and DGS, and specific positioning to yield particular beam angles. Figures 1-4 are purely conceptual sketches that depict two pixels and two output rays but is absent any geometric particulars to inform a person of ordinary skill how the DGS is to be fashioned with the CPA to achieve the claimed function. Stating that ‘[t]hose skilled in the art can design the gratings in the DGS to work optimally for all CPs in the CPA’ (¶ 28) merely shifts the burden of invention to the reader and does not evidence possession of the claimed invention.”
(A.2) Applicant on pp. 8-9 contends that a person of ordinary skill would understand how to design and position a DGS in a LIDAR system, and that detailed DGS parameters can be omitted since diffraction gratings are well-known. Specifically, applicant declares:
a) “Specific design parameters for gratings in a DGS would be understood by one of ordinary skill in the art”;
b) “Specific aspects of a DGS configuration would arguably not be required… because the use of a diffraction grating is generally well known… whose parameters and arrangements could be specifically determined by well-known diffraction equations”;
c) “…a person of ordinary skill in the art would know how to choose a fixed position and orientation of a DGS within the LIDAR system of claim 1”;
d) “…a person of ordinary skill in the art would understand how to select by matter of geometry the specific aspects of DGS position and configuration.”
(Response to A.2) Contention A.2 is unpersuasive for the following reasons:
The examiner does not dispute that generic diffraction gratings are generally known. However, the claims are not directed to generic gratings, rather they require a particular functional relationship, namely that the DGS (with at least one aperiodic grating) is positioned so that emitted beam angle is “based in part” on the CP positions that generated the beam(s) (claim 1). Possession of a generic grating does not equate to possession of the particular DGS configuration that implements the claimed optical function. Asserting that “design parameters for gratings in a DGS would be understood by one of ordinary skill in the art” improperly shifts the burden of invention to the reader and does not evidence possession of the claimed invention.
A POSITA’s background knowledge can help interpret what is actually disclosed, but cannot be used to supply missing structural disclosure necessary to support the scope of the claims. Here, claim 1 covers a broad genus: a CPA in combination with a DGS including “at least one” aperiodic grating, arranged such that each beam’s output angle is based (at least in part) on the emitting CP’s position. The Specification, however, presents (as noted in NFOA, pp. 4-5) an expansive set of alternatives for grating type, stacking arrangement (series/parallel), phase implementations, materials, and separation media (¶¶[0026]-[0028]). The disclosure does not describe any specific DGS nor CPA array parameters, nor the CPA-DGS integration in a manner that ties CP position to a determinable output angle through the DGS, beyond reiterating the intended result. Applicant’s reliance on “well-known equations” does not substitute for the absence of such disclosure.
(A.3) Applicant on pp. 8-9 relies on the declaration by Andrew Steil Michaels filed 12/01/2025 (“Declaration”) for the propositions that (i) the DGS “serves a similar purpose as a lens,” (ii) a POSITA would know how to position/orient the DGS like a lens, and (iii) only a limited number of DGS arrangements could satisfy system specifications (FOV, focal plane length), allegedly obviating the need for disclosure.
(Response to A.3) Contention A.3 is unpersuasive for the following reasons:
Firstly, an analogy to a “lens” does not provide written description support for the claimed subject matter, which requires a DGS including an aperiodic diffraction grating configured to output beams at angles based on CP position. A lens analogy does not disclose the necessary diffractive structure, nor does it specify the optical mapping required by the claim (e.g., phase function, layer configuration, and spatial relationship to the CPA). The Declaration’s assertions are therefore not evidence that the application as filed conveyed possession of the claimed diffractive configuration; rather, it underscore that the application leaves the critical design choices to the reader.
Secondly, the assertion that only a limited number of arrangements would satisfy certain system specifications does not cure the deficiency for at least two reasons. First, claim 1 is not limited by the asserted constraining specifications (e.g., particular FOV, focal length), and thus the claim scope is not restricted to any purported narrow design space. Second, even if a design space were narrow, written description still requires the application to disclose at least one definite, operative embodiment or identifying structural characteristics demonstrating possession of the claimed configuration, rather than relying on reasoning that a POSITA could deduce an arrangement from goals and constraints.
(A.4) Applicant argues on p. 9 that FIGS. 3-6 and ¶¶[0026]-[0028] provide specific embodiments (e.g., blazed gratings with non-uniform periodicities; numerically designed multistep gratings; microprism arrays/blazed optical element), allegedly sufficient for written description.
(Response to A.4) The argument is not persuasive because these portions still fail to disclose definite, operative embodiments that are commensurate with the breadth of the claims, particularly the requirement that the DGS/CPA arrangement produces a beam output at a specific angle based on CP position, and that one of the gratings is aperiodic.
FIG. 3 and ¶[0031] describes that blazed gratings may have a periodicity that “evolves monotonically” to “mimic” a lens. This description remains qualitative and does not disclose the grating profile(s), the layer count, layer separations, registration, or the CPA-to-DGS spacing that would establish the claimed mapping between pixel position and output angle. Similarly, FIG. 4 and ¶[0033] describes “numerically designed multi-step gratin[gs]” with “non-trivial distribution of thicknesses” designed by optimization, but does not disclose any representative thickness distribution(s) or design constraints sufficient to identify the invention beyond the aspiration that numerical methods can be used. Accordingly, these disclosures do not show that applicant possessed the claimed genus of DGS configurations that achieve the required position-dependent beam steering.
The cited passages further exemplify the “open catalogue” concern noted in NFOA, pp. 4-5. For example, ¶[0027] lists multiple grating forms, phase formats, materials, and fabrication techniques, and ¶[0026] describes multiple stack arrangements (series and/or parallel, central vs peripheral regions, varying number of gratings). This breadth of alternatives is not accompanied by disclosure of structural features that tie those alternatives to the claimed functional requirement (position-dependent single-angle beam output). Written description for broad claims is not satisfied by presenting an undifferentiated menu of possibilities without identifying which structures the inventors actually invented and possessed.
(Written Description Conclusion) Applicant’s arguments do not overcome the finding that the disclosure, as filed, lacks adequate written description for the claimed DGS/CPA configuration that achieves the required CP-position-dependent output angles. Accordingly, the rejection under 35 U.S.C. § 112(a) for lack of written description is maintained.
(B) Rejection under 35 U.S.C. § 112(a) - Enablement
Applicant on pp. 9-19 of the Remarks contends the enablement rejection under 35 U.S.C. § 112(a). Applicant addresses each Wands factor in support:
(B.1) Breadth of the Claims. Applicant on pp. 10-12 of the Remarks argues the scope of enablement is commensurate with the scope of the claims, and argues that figures and descriptions (e.g., FIGS. 1 and 3-4; pixels 101/102, 301/302, 401/402) provide “relevant insight” showing that activating different pixels results in different output angles.
(Response to B.1) Contention B.1 is unpersuasive for the following reasons:
The scope of claim 1 is considerable, and the disclosure is not commensurate with that breadth. Claim 1 broadly encompasses any DGS having “at least one” aperiodic diffraction grating and any CPA layout, with no limitations on: grating phase profile, grating periodicity distribution, number of layers, layer spacing, material parameters, optical wavelength, pixel pitch/aperture, alignment/tolerances, beam quality limitations, yet claim 1 requires that each beam be emitted at a “specific angle” based in part on pixel positions.
The specification provides general and aspirational descriptions that the DGS “directs” and in some embodiments “collimates” light and that different CP positions yield different output angles. See, e.g., “Depending on the position of the pixel in the CPA, the collimated beam leaving the DGS propagates at a different output angle” (Spec. ¶[0005]); “the one or more diffraction gratings are positioned to direct (e.g., via diffraction) coherent light emitted from the CPA … as one or more light beams” and “each … is emitted at a specific angle … based in part on positions of the CPs” (Spec. ¶[0021]). However, the specification does not provide the design methodology or sufficient structural parameters to enable the full range of DGS implementations covered by claim 1.
Applicant’s reliance on schematic figures (FIGS. 1, 3, 4) is not sufficient to enable the broad claim scope. The figures describe conceptual beams (e.g., beams 103/104 converted to beams 107/108; beams 303/304 converted to beams 306/307). See Spec. ¶[0025] (FIG. 1 discussion), ¶[0031] (FIG. 3), ¶[0033] (FIG. 4). However, the figures do not disclose any grating phase function, numerical grating parameters, stack spacing distances, alignment tolerances, pixel pitch/aperture, wavelength-dependent design constraints, or example performance metrics demonstrating that a POSITA can achieve the claimed position-to-angle mapping across the claim’s full scope.
Applicant further cites MPEP guidance that claims should be considered “as a whole” and argues the NFOA improperly considered the DGS “in isolation.” This argument is unpersuasive because even considering claim 1 as a whole, the functional requirement remains that the DGS is “positioned to diffract” light such that output beam angle depends on CP position. The specification does not provide enabling teaching for achieving this claimed functional relationship across the broad genus of aperiodic DGS structures encompassed by claim 1.
Applicant’s additional argument that dependent claims 2-4 provide narrowing detail (blazed, multistep, etc.) does not remedy the enablement deficiency for the full scope of independent claim 1. Naming grating types without providing concrete parameters or a design methodology does not enable the broad functional genus of claim 1. See Spec. ¶[0027] (listing possible grating types); ¶¶[0031]-[0034] (high-level descriptions). Enablement must be established for claim 1 as written.
(B.2) Nature of the Invention. Applicant on pp. 12-13 of the Remarks asserts that the “nature of the invention” is a “lens-free FPA system” for LiDAR and that beam steering is enabled because “each CP has a unique position relative to the DGS,” such that selective activation scans the beam. Applicant cites Spec. ¶¶[0004]-[0005], [0021].
(Response to B.2) Contention B.2 is unpersuasive for the following reasons:
While the specification describes the intended operation, e.g., “each CP has a unique position relative to the DGS,” and “this effect enables the LiDAR beam to be steered” (Spec. ¶[0005]); and that “each of the one or more light beams is emitted at a specific angle … based in part on positions of the CPs” (Spec. ¶[0021]), these passages simply restate the claimed result. They do not provide an enabling teaching of how to implement a DGS comprising an aperiodic diffraction grating that produces the claimed pixel-position-dependent specific output angles across the claim’s broad scope.
Further, the nature of the claimed invention involves complex optical engineering. The specification itself shows complexity by describing multiple alternative DGS arrangements (series and/or parallel gratings; central/peripheral regions) (Spec. ¶[0026]) and by indicating the gratings may have “continuously modulated phase or a discrete set of phase levels” and can be formed as various relief types (Spec. ¶[0027]). The disclosure does not provide sufficient direction to move from these broad alternatives to a working implementation across the scope of claim 1 without undue experimentation.
(B.3) State of the Prior Art. Applicant on pp. 13-15 of the Remarks asserts that diffraction gratings are “generally well-known,” that “what is well-known is best omitted,” and cites examples of prior art (e.g., Tan; Tervo) allegedly containing sparse disclosure for diffractive elements. Applicant argues that because “well-known diffraction equations” exist, a POSITA can select grating direction/period and thus practice claim 1.
(Response to B.3) Contention B.3 is unpersuasive for the following reasons:
Enablement is assessed based on whether the specification teaches a POSITA to make and use the claimed invention without undue experimentation across the full claim scope. The fact that gratings are generally known does not relieve applicant of the obligation to enable the claimed functional relationship recited in claim 1, particularly for the broad genus of “aperiodic diffraction grating” DGS implementations that must produce pixel-position-dependent specific beam angles.
Applicant’s reliance on “well-known diffraction equations” does not cure the deficiency because claim 1 is not limited to selecting a grating period for a simple periodic grating. Claim 1 covers an aperiodic DGS “positioned” to achieve a specific mapping between pixel position and output angle, potentially across an array of CPs, and the specification further contemplates collimation and reciprocal behavior (return light directed to particular CPs). See Spec. ¶[0021] (angle depends on CP position; return directed to CPs); ¶[0028] (reciprocal system, return focused back onto emitting CP). The application does not provide the concrete parameters, examples, or design methodology to achieve these outcomes across the claim scope. Accordingly, the state of the prior art does not render the present disclosure enabling.
(B.4) Level of Ordinary Skill. Applicant on p. 15 of the Remarks agrees that POSITA skill is high and argues that, therefore, less disclosure is required.
(Response to B.4) While the level of skill is considered, it does not substitute for the requirement that the specification enable the claimed invention. High skill does not excuse the absence of enabling disclosure for the novel functional aspects of the claim. Here, the specification does not provide sufficient teaching to enable the claimed DGS/CPA arrangement to achieve pixel-position-dependent specific output angles across the claim’s full breadth without undue experimentation.
(B.5) Predictability in the Art. Applicant on p. 15 of the Remarks asserts the art is predictable because diffraction gratings are known and equations are available, and therefore fewer details are required in the specification. Applicant also argues the technology is not “unpredictable or undeveloped.”
(Response to B.5) This argument is unpersuasive. The question is not whether diffraction gratings exist or can be used generally, but whether the art is predictable for implementing the broad, functionally defined aperiodic DGS/CPA mapping required by claim 1 across its full scope. The specification suggests non-routine design by describing gratings with “continuously modulated phase” or discrete phase levels (Spec. ¶[0027]), complex arrangements of gratings in series/parallel (Spec. ¶[0026]), and “numerically designed” multistep gratings with “non-trivial distribution” designed using “numerical optimization methods” (Spec. ¶[0033]). Such disclosures indicate that achieving the claimed performance is not a simple nor purely predictable application of “well-known equations” but involves complex design choices and optimization.
(B.6) Amount of Direction Provided by the Inventor. Applicant on p. 15 of the Remarks asserts the specification provides substantial direction by describing various grating types, materials, fabrication methods, and DGS arrangements (e.g., Spec. ¶¶[0026]-[0028]; FIGS. 3-6).
(Response to B.6) This argument is unpersuasive because the cited support simply provides a listing of gratings and fabrication methods, without providing the necessary design parameters nor a working methodology to enable a POSITA to make and use the full scope of claim 1 without undue experimentation. The disclosure provides menus of grating “forms” (surface relief/sinusoidal/blazed/step), general fabrication techniques (nanoimprint, DUV), broad architectural permutations (series/parallel, central vs peripheral regions). The application lacks the kinds of direction that would allow a POSITA to practice the full scope without undue experimentation, such as: grating phase distributions, layer-to-layer spacing requirements, constraints linking CPA pitch and DGS geometry to the intended pixel-to-angle mapping, tolerances, or examples demonstrating that the claimed function is achieved over a field of view and across multiple CPs.
(B.7) Existence of Working Examples. Applicant on pp. 15-16 of the Remarks argues that the absence of working examples are not strictly required, and absence of examples alone cannot support lack of enablement.
(Response to B.7) While examples are not strictly required, their absence is relevant when the claims are broad and the specification provides limited concrete guidance. Here, the claim is broad covering many possible aperiodic stack designs in combination with any arrayed pixel configuration. The specification does not provide any working example (prototype, simulation data, or experimental results) demonstrating the claimed pixel-position-dependent output angles using an aperiodic DGS. The lack of even one concrete working embodiment leaves the POSITA without a validated anchor to generalize across the claim’s scope, supporting undue experimentation under Wands.
(B.8) Quantity of Experimentation Needed. Applicant on pp. 16-18 of the Remarks asserts undue experimentation is not required because beam steering is primarily achieved through selective activation of CPs, and the “specific design of the diffraction grating won’t significantly change the beam steering operation.” Applicant further asserts any experimentation would be reasonable and typical in the art.
(Response to B.8) This argument is unpersuasive because the claimed beam steering operation is not achieved by selective activation pixel alone. Claim 1 requires that the DGS be “positioned to diffract” coherent light such that “each” emitted beam is at a “specific angle” based in part on CP position. That mapping is not achieved merely by turning on different pixels; it depends critically on the DGS optical design. If the DGS is not properly designed/configured, activating different CPs does not necessarily produce the claimed specific output-angle mapping, nor does it ensure collimation or suppression of undesired diffraction orders. The specification recognizes that the DGS design is central to performance by stating that gratings are to be designed to “maximize power coupled” into collimated beams (Spec. ¶[0028]) and by describing reciprocal behavior where return light is focused back onto the emitting CP (Spec. ¶[0028]). However, the specification provides no concrete design approach to achieve these objectives across the broad range of possible DGS implementations covered by claim 1.
Furthermore, the disclosure provides no bounds that would render experimentation routine. The specification contemplates numerous alternative architectures and design choices, for example, single grating vs multiple gratings, series and/or parallel arrangements, central vs peripheral regions with different behavior, various phase modulation schemes, various grating types, various materials, various media between layers (Spec. ¶¶[0026]-[0027]). Without concrete working examples nor design constraints, a POSITA would be required to engage in substantial iterative design and fabrication to determine which configurations achieve the claimed pixel-dependent output angles across the entire CP array and desired angles. Such iterative work, across the claim’s broad scope, constitutes undue experimentation under Wands.
Applicant’s argument that the amount of experimentation is reasonable is unpersuasive. The core deficiency is not that some tuning is needed; it is that the application does not teach how to progress from the broad genus to working embodiments without undue experimentation, at the claimed point of novelty, i.e., passive aperiodic DGS enabling pixel-dependent beam steering.
Applicant’s declaration statements characterizing DGS selection as a matter of “geometry” and asserting “only a certain number of DGS arrangements could satisfy” specifications are conclusory and do not supply the missing enabling disclosure in the specification. Enablement must be supported by the application’s teaching as filed; attorney argument and conclusory inventor testimony do not substitute for absent disclosure of how to practice the claimed functional relationship across claim scope.
(Enablement Conclusion) As a whole, considering the factors articulated in Wands, the evidence supports the conclusion that the disclosure is non-enabling for claim 1. Therefore, the rejection under 35 U.S.C. § 112(a) for lack of enablement is maintained.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). In particular, the specification, as originally submitted, fails to provide sufficient written description support for all claims. See rejection under 35 U.S.C. § 112(a).
Regarding ¶ 13, “gratins” should read --gratings--.
Regarding ¶ 33, “gratins” should read --gratings--.
Appropriate correction is required.
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 1-20 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 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 1 covers a focal plane array system comprising: (1) a coherent pixel array (CPA) of coherent pixels (CPs); and, (2) a diffraction grating stack (DGS) that includes at least one aperiodic diffraction grating positioned to diffract coherent light from the CPA into one or more beams, where each beam is emitted at a specific angle as determined by the position of the CPs that generated the coherent light. The specification as originally filed fails to describe the DGS and CPA in sufficient detail so that one of ordinary skill in the art can reasonably conclude the applicant had possession of the claimed invention.
Firstly, the specification simply declares the intended result of the DGS steering each output beam to a unique angle defined by the pixel location, however, fails to provide sufficient disclosure regarding how the claimed function is accomplished. For instance, the specification ¶¶ 4-8 and 21 simply states the desired result – namely, that each coherent pixel has “a unique position relative to the DGS” and therefore produces “a light beam at a unique angle” – but provides no meaningful direction on how the result is achieved.
Secondly, the specification’s discussion of the DGS amounts to an open catalogue of design options rather than a disclosure of specific, representative embodiments. Specifically, the specification lists a broad catalogue of possible grating types (¶ 27, “surface relief gratings, sinusoidal gratings, blazed gratings, step gratings, or some combination thereof”), stack arrangements (¶ 26, “arranged in series and/or in parallel”), phase formats (¶ 27, “continuously modulated phase or a discrete set of phase levels”), and materials (¶ 27, “lower index material,” “glass,” “higher index material,” “silicon,” “other semiconductor”; “the gratings may be separated a medium” such as “air,” “higher index material,” “a polymer,” or “glass”) however fails to offer any details nor meaningful direction for how the elements are selected and integrated to realize a DGS which emits a single-angle beam based on the position of the CPA pixel source. For example, the disclosure fails to provide any guidance towards the number of grating layers employed, particular stacking order and orientation, numeric grating periodicity, duty cycle, thickness profile, material index, etc. Rather, the specification embraces every conceivable permutation, failing to identify which specific combinations deliver the pixel-dependent single-angle beam steering that the claim requires.
Thirdly, equally lacking is any meaningful description of the spatial relationship between the CPA and DGS. The specification states the “CPs may be arranged in 1D or 2D arrays” (¶ 4) and declares “each CP has a unique position relative to the DGS” which dictates the output angle (¶ 5), yet omits the pixel pitch, pixel-to-grating separation, array layout, geometry matching between CPA and DGS, and specific positioning to yield particular beam angles. Figures 1-4 are purely conceptual sketches that depict two pixels and two output rays but is absent any geometric particulars to inform a person of ordinary skill how the DGS is to be fashioned with the CPA to achieve the claimed function. Stating that “[t]hose skilled in the art can design the gratings in the DGS to work optimally for all CPs in the CPA” (¶ 28) merely shifts the burden of invention to the reader and does not evidence possession of the claimed invention.
In sum, the disclosure provides only aspirational statements and an exhaustive list of possibilities, without describing at least one definite, operative embodiment that links the CPA to a specifically configured DGS for realizing the pixel-dependent angular beam steering that the claim requires. Therefore, the written description is inadequate for a person of ordinary skill in the art to conclude the applicant had possession of the claimed invention.
Claim 2 lacks written description support because there is no disclosure on the specifics of how a “blazed grating” would support realizing the function of producing a single-angle, collimated beam that is angle-dependent on the position of the coherent pixel light source.
Claim 4 lacks written description support because there is no disclosure on the specifics of how any combination of “a surface relief grating, a sinusoidal grating, a blazed grating, and a step grating” would support realizing the function of producing a single-angle, collimated beam that is angle-dependent on the position of the coherent pixel light source.
Claim 7 lacks written description support because there is no disclosure on the specifics of how a CPA that is a “2D array” would support realizing the function of producing a single-angle, collimated beam that is angle-dependent on the position of the coherent pixel light source.
Claim 9 lacks written description support because there is no disclosure on the specifics of how an “optical element positioned between the CPA and the DGS” would support realizing the function of producing a single-angle, collimated beam that is angle-dependent on the position of the coherent pixel light source.
Claim 11 lacks written description support because there is no disclosure on the specifics of how a “blazed grating” would support realizing the function of producing a single-angle, collimated beam that is angle-dependent on the position of the coherent pixel light source.
Claim 12 lacks written description support because there is no disclosure on the specifics of how a “monolithic material that overmolds the CPA” would support realizing the function of producing a single-angle, collimated beam that is angle-dependent on the position of the coherent pixel light source.
Claim 13 lacks written description support because there is no disclosure on the specifics of how a “microprism array” would support realizing the function of producing a single-angle, collimated beam that is angle-dependent on the position of the coherent pixel light source.
Claim 14 lacks written description support because there is no disclosure on the specifics of how a “linear array of microprisms” would support realizing the function of producing a single-angle, collimated beam that is angle-dependent on the position of the coherent pixel light source.
Claim 15 lacks written description support because there is no disclosure on the specifics of how a “circular array of microprisms” would support realizing the function of producing a single-angle, collimated beam that is angle-dependent on the position of the coherent pixel light source.
Claim 17 lacks written description support because there is no disclosure on the specifics of how an “optical element positioned between the CPA and the DGS” would support realizing the function of producing a single-angle, collimated beam that is angle-dependent on the position of the coherent pixel light source.
Claims 2-12 are rejected for insufficient written description by virtue of claim dependency.
Claims 1-20 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 enablement requirement. The claims contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
An enabling specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010). The undue experimental test is a weighing of multiple factors, including but not limited to the following: (1) the breadth of the claims; (2) the amount of direction provided by the inventor; (3) the existence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the level of one of ordinary skill; (7) the level of predictability in the art; and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731, 737.
Regarding claim 1, the disclosure fails to enable the claimed invention.
Factors 1, 2 & 3: the breadth of the claims, the amount of direction provided by the inventor, and the existence of working examples.
The claim covers a diffraction grating stack (DGS) positioned to diffract coherent light from a coherent pixel array (CPA) into one or more beams, where each beam is emitted at a specific angle determined by the position of the coherent pixels that generated the coherent light.
The breadth of the claim is considerable. The claim broadly recites a DGS with no limitation on the grating configuration, number of grating layers, or types of gratings employed other than at least an aperiodic grating. The claim further encompass any CPA array layout and any geometric positioning between the DGS and CPA. This breadth spans numerous implementations, demanding equally commensurate disclosure to support enabling the claimed invention.
Minimal direction is provided in the specification. While the disclosure references aperiodic gratings, blazed gratings, and numerically designed multistep gratings, it offers no concrete design methodology, no grating equations or parameters, no layout specifications, and no step-by-step procedures for realizing the DGS-CPA combination that yields an angularly selective pixel-dependent beam steering as claimed. See rejection analysis under §112(a) for lack of written description.
Absence of working examples. The disclosure does not provide any example of a working device, no experimental or simulated data, nor any algorithmic demonstration of angular selectivity.
Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent. Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007). It is the specification, not the knowledge of one skilled in the art that must supply the novel aspects of an invention in order to constitute adequate enablement. Id. at 1283 (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997)). The claims are broad, encompassing an open-ended set of grating configurations. The disclosure provides neither guidance, nor any working examples, at the point of novelty. Accordingly, factors 1, 2 and 3 weigh towards a finding that undue experimentation is required.
Factors 4 & 5: the nature of the invention and the state of the prior art.
The nature of the invention lies at the intersection of photonics, nanofabrication, diffraction theory, and beam steering – all complex and highly sensitive technical areas. The claimed function – using a passive, diffraction grating stack to provide an angle-specific output beam as determined by source pixel location – represents a nontrivial optical engineering problem. Small deviations in design or fabrication can result in significant beam distortions or unintended angular outputs. The sensitive and complex nature of the invention supports a more detailed disclosure.
At the time of the invention, conventional diffraction gratings exploit interference from periodic slits to diffract incident light in multiple beam directions (i.e., diffraction orders). See Popov1. Pursuit of blazed gratings and holographic gratings to maximize diffraction efficiency in a single diffraction order (i.e., a beam output at a single angle) – but completely suppressing undesired diffraction orders remain challenging. See Oliva2 and Baldry3. Tunable diffractive elements have been investigated for beam-steering, however, requires electrical biasing to steer the angle. See He4 and Tormen5. Passive diffractive elements providing position-dependent angular selectivity to output a beam at a single specific angle, based on recent advancement in metasurfaces and metagratings, remain in early development and faces significant challenges, including modeling accuracy, geometric complexity and parameter space optimization, and fabrication constraints. See Sell6, Yang7 and Radi8.
To the extent that the claim covers a passive diffractive stack with position-dependent angular selectivity in the early development phase and facing many challenges, a more detailed disclosure of how to make and use the components of the claimed invention is required. Accordingly, factors 4 & 5 weigh strongly towards a finding of a non-enabling disclosure.
Factors 6 & 7: the level of one of ordinary skill and the level of predictability in the art.
The level of ordinary skill is high in the field of diffraction optics based on the fact that a college degree is required. Thus, less disclosure is required. On the other hand, as discussed in the analysis presented in factor 5, although diffraction gratings have been engineered to steer light under active tuning, a passive implementation which yields a single-angle output beam faces many challenges and lacks a complete solution. In other words, the level of predictability is low. Accordingly, despite the skilled artisan’s expertise, substantial unpredictability remains in implementing the claimed invention without additional disclosure. As a whole, factors 6 and 7 weight towards a finding that undue experimentation is required.
Factor 8: the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The claims are broad. the specification lacks detailed guidance, absence of working examples, and technical complexity, significant experimentation would be necessary to practice the claimed invention.
The claims are broad, encompassing an open-ended set of grating configurations. The specification provides neither meaningful guidance nor working examples on how to make the claimed invention. See factors 1-3 analysis. There are many challenges in the field and there is a lack of a complete solution. See factors 4 & 5 analysis. The disclosure is insufficient in view of the high level of generality provided in the specification. See § 112(a) rejection for lack of written description. The technology, despite the skilled artisan’s expertise, remains unpredictable. See factors 6 & 7 analysis. A skilled person in the art, facing all the challenges and predictability, would require a large amount of experimentation in order to practice the claimed invention lacking any meaningful guidance. Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007) (a disclosure for impact sensors provided only a high-level system overview, without precise details of sensor construction or integration, was held to be nonenabling). Therefore, undue experimentation is required.
In sum, the following factors favor less disclosure: the level of ordinary skill in the art is high; diffraction gratings which are actively biased for beam steering have been demonstrated. The following factors favor more disclosure: passive diffractive elements providing angular selectivity to output a beam at a single specific angle are in early development and face many challenges, the field lacks a complete solution and predictability; the breadth of the claims are broad, there is no meaningful guidance on how to make or use the claimed invention, no disclosure of any working example; the quality of experimentation needed to make the invention is large based on the content of the disclosure. On balance, the Wands factors show lack of enablement.
Claims 2-20 are rejected for lack of enablement by virtue of claim dependency.
Conclusion
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/ZHENGQING QI/Examiner, Art Unit 3645
/YUQING XIAO/Supervisory Patent Examiner, Art Unit 3645
1 Popov, E. “Introduction to Diffraction Gratings: Summary of Applications.” Gratings: Theory and Numeric Applications, AMU (PUP), pp.1.1-1.23, 2012, 978-2-8539-9860-4.
2 Oliva et al., “Highly efficient broadband blazed grating in resonance domain.” Appl. Phys. Lett. 20 May 2013; 102 (20): 203114.
3 Baldry et al., “Volume Phase Holographic Gratings: Polarization Properties and Diffraction Efficiency.” Publications of the Astronomical Society of the Pacific, 116:403–414, May 2004.
4 He et al., “Liquid Crystal Beam Steering Devices: Principles, Recent Advances, and Future Developments.” Crystals 2019, 9(6), 292, June 2019.
5 Tormen et al., “Deformable MEMS grating for wide tunability and high operating speed.” J. Opt. A: Pure Appl. Opt. 8 (2006) S337–S340.
6 Sell et al., “Large-Angle, Multifunctional Metagratings Based on Freeform Multimode Geometries.” Nano Letters 2017 17 (6), 3752-3757.
7 Yang et al., “Freeform Metagratings Based on Complex Light Scattering Dynamics for Extreme, High Efficiency Beam Steering.” arXiv:1709.05019.
8 Radi et al., “Metagratings: Beyond the Limits of Graded Metasurfaces for Wave Front Control.” Phys. Rev. Lett. 119, 067404 – Published 10 August, 2017.