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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,884,247 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Claim Amendments - Informalities
The claim amendments filed May 28, 2025 (hereinafter the preliminary amendment), are objected to as failing to comply with 37 CFR 1.173(e), which requires that patent claims may not be renumbered. The claim amendments are improper because claims 9-13 have been re-ordered in the preliminary amendment as compared to the patented claims.
In the discussion that follows, the examiner will use the original patent claim numbers 9-13 and the appropriate dependencies as reflected in the original patent.
In all future submissions, Applicant should ensure that the patent claims are numbered and ordered in the same order as they appeared in the issued patent. The examiner additionally notes that, in a reissue application, any amendments to the patented claims should be marked to show changes relative to the patent (not relative to the immediately preceding version of the claims), as required by 37 CFR 1.173(d).
Reissue Declaration
The reissue oath/declaration filed with this application is defective because it fails to specifically identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. The error statement indicates that the original patent is believed “to be partly inoperative or invalid by reason of the patentee claiming less than the patentee had a right to claim in the patent” by failing to claim “an overlooked embodiment or aspect in the application, including the limitation.” This error statement, which is based on broadening of the patented claims, is defective for at least two reasons. First, 35 U.S.C. 251(d) (cited below) prohibits enlarging the scope of the original patent claims more than two years after the grant of the original patent. In this case, the ‘247 patent was granted on January 5, 2021, and the instant reissue application was filed on May 28, 2025, which is more than two years after the grant of the original patent. Accordingly, “claiming less than the patentee had a right to claim in the patent” is not an error that is correctable by filing a reissue application in these circumstances. See MPEP § 1412.03. Second, even if broadening were permitted, the error statement would be defective because the error statement does not list a specific patent claim that is being broadened (e.g., “claim 1”), as required by 37 CFR 1.175(b), and does not point out the particularly claim language wherein lies the error. See MPEP § 1414, subsection II.
Claim Rejections - 35 USC § 251 - Reissue Declaration
35 U.S.C. 251 states:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Claims 1-30 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 251 - Improper Broadening
35 U.S.C. 251(d) states:
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Claims 21-30 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period.
Claim 21 is broader than independent patent claims 1, 14, and 18 because claim 21 omits the following limitations:
With respect to independent patent claim 1, claim 21 omits the limitation of the housing as being “coupled to the transparent member.”
With respect to independent patent claim 14, claim 21 omits the first and second temple portions, a light source disposed in the first temple portion, and a fixing device disposed between the transparent member frame and the first temple portion.
With respect to independent patent claim 18, claim 21 omits the limitation of the housing being “coupled to the transparent member,” a recognition device, and a controller.
A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Claim Rejections - 35 USC § 251 and 112(a) - New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 251 (emphasis added):
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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.
Claims 25 and 26 are rejected under 35 U.S.C. 251 and 35 U.S.C. 112(a) as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows:
Regarding claim 25, the original disclosure did not describe the claimed functions of the processor to “identify a distance between the transparent frame and the at least one of the first and second temple portions using the magnetic sensor and the magnetic body, and identify whether the at least one of the first and second temple portions is folded or unfolded with respect to the transparent member frame based on the identified distance.” In the Remarks filed May 28, 2025, see pg. 10, Applicant points to the original specification at col. 8, lines 15-30, as providing support for these limitations. However, this portion of the specification is silent with respect to a distance identification function. Rather, the specification describes the optical system being turned on due to the proximity of a magnet to a magnet sensor in the unfolded state (col. 8:15-21), or alignment of a light emitting unit with a light receiving unit in the unfolded state (col. 8:22-27), or a physical switch that may be depressed or touched in the unfolded state (col. 8:27-32). None of these embodiments necessarily or inherently includes a processor configured to identify a distance.
Claim 26 is rejected in view of its dependency from claim 25.
Claim Rejections - 35 USC § 112(b)
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.
Claims 111 and 21-30 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 11 recites the limitation “the unfolding state” in line 2. There is insufficient antecedent basis for this limitation in the claims. For the purpose of examination, “the unfolding state” will be interpreted to mean --the unfolded state--.
Regarding claim 21, the limitation “the transparent member” in lines 10-11 and 13-14 renders the claim indefinite because the claim previously recites “at least one transparent member.” In the case of more than one transparent member (within the scope of “at least one”), it is unclear whether “the transparent member” refers to one of, each of, or all of the transparent members.
Claims 22-30 are rejected in view of their dependency from claim 21.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 6, 132, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Otsuki (JP 2008022362 A, hereinafter Otsuki).
Regarding claim 1, Otsuki discloses a wearable electronic device (“an eyeglass display,” ¶¶ 1, 4-8, Fig. 1) comprising:
a transparent member (spectacle lens 3);
a housing (image forming/projecting device 7) coupled to the transparent member (via frame 4) in a rotatable manner via a hinge portion (rotation pin 8, Figs. 1(b)-(c) and 2(a)-(c); ¶¶ 10-11), such that the housing (7) is foldable in a designated direction with respect to the transparent member (see Fig. 2);
a projector (image forming device 7a) at least partially disposed in the housing (7; see Fig. 1(a)); and
an optical transferring member (projection lens 7b, ¶ 8) configured to guide light emitted from the projector (7a) to the transparent member (3) when the housing is unfolded with respect to the transparent member in an unfolded state. See ¶ 9: “In the use state shown in Fig. 1A, an image formed by the video forming device 7a is projected by the projection lens 7b and enters the video projection lens 3, and is reflected by the mirror 5 and passes through the video projection lens 3. The light is transmitted, reflected by the half mirror 6, and projected onto the eye E.”
Regarding claim 2, Otsuki further discloses that when the housing (7) is folded with respect to the transparent member (3), the optical transferring member (7b) is not physically in contact with the transparent member (3). See Fig. 3(a).
Regarding claim 6, Otsuki further discloses a transparent member frame3 (frame 4 for transparent member 3) which surrounds at least a part of the transparent member (3), and a fixing device (plate spring 10, Fig. 3; ¶ 14) configured to provide a force (i.e., a spring force) for maintaining the unfolded state of the housing. See Fig. 3(c), ¶ 14.
Regarding claim 13, Otsuki further discloses the hinge portion further comprises a plurality of hinge arms (upper frame 4a and lower frame 4b, Fig. 1(b)-(c)), and at least a part of the optical transferring member (7b) is disposed between the plurality of arms (4a, 4b).
Regarding claim 14, Otsuki discloses an eyeglasses type wearable electronic device (“an eyeglass display,” ¶¶ 1, 4-8, Fig. 1) comprising:
at least one transparent member (spectacle lens 3);
a transparent member frame (4) which supports the transparent member (3);
first and second temple portions (9, 10) coupled to the transparent member frame (4) in a rotatable manner (via rotation pin 8, Figs. 1(b)-(c) and 2(a)-(c)) so that the first and second temple portions (9, 10) can be folded or unfolded with respect to the transparent member frame (4);
a light source (image forming/projecting device 7a) disposed in the first temple portion (9);
at least one optical system (including projection lens 7b, mirror 5, and mirror 6) configured to guide a wave path of an optical signal emitted from the light source to a user's eyes (E, Fig. 1(a); ¶ 9); and
a fixing device (plate spring 10, Figs. 3(a)-(c); ¶¶ 13-14) disposed between the transparent member frame (4) and the first temple portion (9) to provide a force (i.e., a spring force) for maintaining an unfolding state of the first temple portion (9) with respect to the transparent member frame (4). See Fig. 3(c), ¶ 14.
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, 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 3, 9-114, 18-19, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuki in view of Chaum (U.S. Patent Pub. 2010/0149073, hereinafter Chaum).
Regarding claim 3, Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 1. Otsuki does not explicitly disclose a processor disposed in the housing and configured to control the projector to emit the light when the housing is unfolded and to cease emission of the light when the housing is unfolded. However, Chaum teaches a similar wearable electronic device (eyeglasses 110 with projector 120, Figs. 1-2) comprising a processor (“a computer processor,” ¶ 1264) configured to control a projector (120) to emit light when a temple (sidearm 11104, Figs. 114A-B) of the device is unfolded with respect to a transparent lens of the glasses (11102) and to cease emission of the light when the temple (11104) is folded with respect to a transparent lens of the glasses. See ¶ 883: “Referring to Fig. 114A … When the frame is being worn, or in some examples when it is lying open, the button 11401 is substantially pushed by the end of the sidearm 11104 and power is supplied for various purposes, such as those described elsewhere here. When the frame is not open, however, such as folded, power is substantially cut off. In some examples, the spring-loaded button 11401 comprises one or more contacts between the two components of the frame.” See also ¶ 884: “Referring to Fig. 114B, an alternate shutoff switch arrangement is shown comprising a so-called ‘reed switch’ 11404 and permanent magnet 11405. … When the frame is open, the magnet is sufficiently close to activate the switch, as is known. When the frame is closed, the magnet is far enough away and/or oriented such that the switch closes.” It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki by disposing a processor in the housing configured to control the projector to emit the light when the housing is unfolded and to cease emission of the light when the housing is folded, as taught by Chaum, so that the projector is automatically turned off when not in use (see Chaum, ¶ 858).
Regarding claims 9-10, Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 6. Otsuki does not disclose a folding/unfolding recognition device configured to recognize the unfolded state. However, Chaum teaches a similar wearable electronic device (eyeglasses 110 with projector 120, Figs. 1-2) comprising a folding/unfolding recognition device (button 11401, Fig. 114A; or reed switch 11404 and magnet 11405, Fig. 114B) configured to recognize the unfolded state (¶¶ 883-884) (claim 9); wherein the folding/unfolding recognition device comprises a magnetic body (permanent magnet 11405, Fig. 114B) and a magnetic sensor (reed switch 11404) configured to detect the magnetic body (11405) in the unfolded state (¶ 884) (claim 10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki to include a folding/unfolding recognition device comprising a magnetic body5 and a magnetic sensor as taught by Chaum, so that the projector can be automatically turned off when not in use (see Chaum, ¶ 858). While Chaum shows the magnetic body (11405) being disposed in the frame and the magnetic sensor (11404) being disposed in the temple/housing, it would have been obvious to one of ordinary skill in the art, when modifying Otsuki in view of Chaum, to simply reverse the position of the magnetic body and the magnetic sensor (i.e., disposing the magnetic body in the housing and the magnetic sensor in the transparent member frame) to perform the same function, since the court has held that mere reversal of parts would be an obvious modification. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Regarding claim 11, Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 6. Otsuki further teaches that when the housing is in the unfolded state, an optical path of an optical signal emitted from the projector is changed by the optical transferring member so that the optical signal is incident on an optical redirecting structure (mirror or holographic optical element 6, Fig. 1; ¶ 8) provided in the transparent member (3), wherein the optical signal is further reflected by the optical redirecting structure (6) to be incident on a user’s eye (E). Otsuki does not explicitly teach that the optical redirecting structure is a grating structure. However, Chaum teaches that a grating structure in a known alternative to a mirror for redirecting an optical signal from a projector to the eye of a user of the wearable electronic device (“A ‘redirector’ as used herein is a reflective, diffractive and/or refractive structure that changes the angle of light incident upon it. In one example, each redirector is a mirror … In another example, diffractive structures such as gratings are known,” ¶ 539). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki by replacing the mirror or holographic optical element of Otsuki with at least one grating structure, as taught by Chaum, since this involves the simple substitution of one optical redirecting structure for another optical redirecting structure known to be suitable for the same purpose.
Regarding claim 18, Otsuki discloses a wearable electronic device (“an eyeglass display,” ¶¶ 1, 4-8, Fig. 1) comprising:
a transparent member (spectacle lens 3);
a housing (image forming/projecting device 7) coupled to the transparent member (via frame 4) in a rotatable manner via a hinge portion (rotation pin 8, Figs. 1(b)-(c) and 2(a)-(c); ¶¶ 10-11), such that the housing (7) is foldable in a designated direction with respect to the transparent member (see Fig. 2); and
a projector (image forming device 7a) at least partially disposed in the housing (7; see Fig. 1(a)).
Otsuki does not disclose a recognition device configured to recognize an unfolded state and a folded state of the housing. However, Chaum teaches a similar wearable electronic device (eyeglasses 110 with projector 120, Figs. 1-2) comprising a recognition device (button 11401, Fig. 114A; or reed switch 11404 and magnet 11405, Fig. 114B) configured to recognize an unfolded state and a folded state of a housing (sidearm 11104, ¶¶ 883-884), and a controller (“a computer processor,” ¶ 1264) configured to control a projector (120) to emit light when the housing (11104) is in the unfolded state and to cease emission of the light when the housing (11104) is in the folded state (see ¶¶ 883-884, cited above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki to include a recognition device and a controller configured to control the projector to respectively emit and cease emission of light when the housing is in the unfolded and folded state, as taught by Chaum, so that the projector can be automatically turned off when not in use (see Chaum, ¶ 858).
Regarding claim 19, the modified Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 18. Chaum further teaches the recognition device comprises a magnetic body (permanent magnet 11405, Fig. 114B) and a magnetic sensor (reed switch 11404) configured to detect the magnetic body (11405) in the unfolded state (¶ 884). While Chaum shows the magnetic body (11405) being disposed in the frame and the magnetic sensor (11404) being disposed in the temple/housing, it would have been obvious to one of ordinary skill in the art, when modifying Otsuki in view of Chaum, to simply reverse the position of the magnetic body and the magnetic sensor (i.e., disposing the magnetic body in the housing and the magnetic sensor in the transparent member frame) to perform the same function, since the court has held that mere reversal of parts would be an obvious modification. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Regarding claim 21, Otsuki discloses a wearable electronic device (“an eyeglass display,” ¶¶ 1, 4-8, Fig. 1) comprising:
at least one transparent member (spectacle lenses 2, 3);
a transparent member frame (4) supporting the transparent members (2, 3);
a housing (image forming/projecting device 7) coupled to the transparent member frame (4) in a rotatable manner via a hinge portion (rotation pin 8, Figs. 1(b)-(c) and 2(a)-(c); ¶¶ 10-11), such that the housing (7) is foldable in a designated direction with respect to the transparent member frame (see Fig. 2);
a projector (image forming device 7a) disposed in the housing (7; see Fig. 1(a)) to be substantially perpendicular to the transparent members (2, 3); and
an optical transferring member (projection lens 7b, ¶ 8) configured to guide light emitted from the projector (7a) to one of the transparent members (3) when the housing is unfolded with respect to the transparent members in an unfolded state (see ¶ 9).
Otsuki does not disclose a magnetic body, a magnetic sensor, and a processor configured to identify whether the housing is folded or unfolded based on a signal from the magnetic sensor. However, Chaum teaches a similar wearable electronic device (eyeglasses 110 with projector 120, Figs. 1-2) comprising a transparent member frame (11102) including a magnetic body (permanent magnet 11405, Fig. 114B, ¶¶ 884), a housing (temple 11104) including a magnetic sensor (reed switch 11404), and a processor (“a computer processor,” ¶ 1264) configured to identify whether the housing (11104) is folded or unfolded with respect to the transparent frame member (11102) based on a signal from the magnetic sensor (see ¶ 884). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki to include a magnetic body in the transparent member frame, a magnet sensor in the housing, and a processor configured identify whether the housing is folded or unfolded based on a signal from the magnetic sensor, as taught by Chaum, so that the projector can be automatically turned off when not in use (see Chaum, ¶ 858).
Regarding claim 22, the modified Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 21. Otsuki further teaches the transparent member frame (4) includes an opening formed through the transparent member frame (for receiving lenses 2 and 3, Fig. 1(a)).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuki in view of Travers et al. (U.S. Patent Pub. 2021/0103146, hereinafter Travers).
Regarding claims 4 and 5, Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 1. Otsuki does not explicitly teach that the optical transferring member comprises a prism disposed at an end of the housing to face an output lens of the projector. However, Travers teaches a similar wearable electronic device (augmented reality display system 100, Figs. 1-5) comprising a projector (projector 114 of projection display device 70, Figs. 3 and 12-13) disposed in a housing (right temple section 30) and an optical transferring member (prism assembly 110, Figs. 12-13, ¶ 96) configured to guide light emitted from the projector (70) to a transparent member (right see-through section 20, ¶ 50), wherein the optical transferring member (110) comprises a prism (“display connection module 110 may also be a prism assembly,” ¶ 96) (claim 4), wherein the optical transferring member (110) is disposed at an end of the housing (30) to face an output lens of the projector (114, Fig. 13; to “optically connect the projection display system 70 to the waveguide stack module 80” of the right see-through section 20, ¶ 96) (claim 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki by configuring the optical transferring member to include a prism disposed at the end of the housing to face an output lens of the projector, as taught by Travers, in order to ensure that the light is directed to the transparent member at the correct angle.
Claims 7-8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuki in view of Hanover et al. (U.S. Patent No. 9,482,882, hereinafter Hanover).
Regarding claims 7-8, Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 6. Otsuki does not teach that the fixing device further comprises first and second magnetic bodies. However, Hanover discloses a similar wearable electronic device (eyewear 31, Fig. 2) comprising a fixing device (magnets 344 and 354, Fig. 6; col. 3:3-12, 9:32-42) configured to provide a force for maintaining an unfolded state of the device (“to promote continuous contact engagement between the cooperating ports on the temple and the frame when the smart glasses are worn,” col. 3:3-12), wherein the fixing device further comprises a first magnetic body (354) disposed in a housing (temple 320A, which may also house a display device, see col. 10:28-35) and having a first polarity, and a second magnetic body (344) disposed in a transparent member frame (frame 318, to which the temple 320A is rotatably attached via hinge assembly 360) and having a second polarity opposite the first polarity so as to provide an attractive force between the first and second magnetic bodies (this being an inherent feature of “cooperating magnetic elements” as described at col. 3:6-7) (claim 7); wherein the first magnetic body (354) is disposed to be exposed through an end of the housing (320A) and the second magnetic body (344) is disposed to be exposed through an end of the transparent member frame (318; see Fig. 6) (claim 8). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki by adding first and second magnetic bodies respectively disposed in the housing and in the transparent member frame, as taught by Hanover, in order to promote proper alignment between the temple and the frame.
Regarding claim 16, Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 14. Otsuki is silent with respect to a battery. However, Hanover discloses a similar wearable electronic device (eyewear 31, Fig. 2) comprising a battery (62, Fig. 2) disposed in a second temple portion (46; col. 6:60-7:3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki to include a battery as taught by Hanover in the second temple portion, in order to supply onboard power to the light source (e.g., so that an external power supply is not required, for user convenience).
Claim 126 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuki.
Regarding claim 12, Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 1. Otsuki further discloses a hinge axis provided by the hinge portion (at rotation pin 8). While Otsuki does not explicitly disclose that the hinge axis penetrates at least a part of the optical transferring member, the examiner notes that Otsuki shows the hinge axis (at 8) being at least very close to the optical transferring member (7b). In Fig. 1(c), the hinge axis (at 8) is shown to be on one side of the optical transferring member in the direction of the LCD (7a), while in Fig. 3(a)-(c) the hinge axis (at 8) is shown to be on the other side of the optical transferring member, away from the LCD (7a). For clarity of the record, the examiner notes that the limitation requiring that the hinge axis penetrates the optical transferring member does not require that any structural element of the hinge physically penetrates the optical transferring member. It is evident from Otsuki that the specific location of the hinge axis relative to the optical transferring member, including a location that penetrates the optical transferring member, would not modify the operation of the device. Because the hinge parts (rotation pins 8) are directed outwardly from the projector housing (7) while the optical transferring member (7b) is located inside the projector housing (7), the hinge axis would not obstruct or interfere with the function of the optical transferring member (7b), regardless of its location relative to the optical transferring member. For these reasons, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki by relocating the hinge axis to penetrate at least a part of the optical transferring member, since the court has held that rearranging parts of an invention is an obvious matter of engineering design choice when the rearrangement of parts would not have modified the operation of the device. In re Japikse, 86 USPQ 70. See MPEP 2144.04.VI.C.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuki in view of Lee (U.S. Patent Pub. 2015/0234187, hereinafter Lee) and Chaum.
Regarding claim 15, Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 14. Otsuki further teaches the optical system comprises a lens (7b, Fig. 1) disposed to face the light source (7a) to guide the wave path of the optical signal emitted from the light source (7a); a first redirecting structure (mirror 5) disposed in the transparent member frame (4) to receive and reflect the optical signal emitted from the lens (7b); and a second redirecting structure (mirror or holographic optical element 6) disposed in the transparent member frame (4) to receive the optical signal emitted from the first optical redirecting structure (5) and to reflect the optical signal to the user’s eyes (E). See ¶¶ 8-9.
Otsuki does not teach a prism, and Otsuki does not explicitly disclose that the first and second redirecting structures are grating structures. However, Lee teaches a similar wearable electronic device (100, Figs. 1A-D) comprising a prism (optics 777, Fig. 7, being “a beam splitter prism,” ¶ 53) disposed to face a light source (projector 720) to guide the wave path of an optical signal (light 131) emitted from the light source (720; “display system 150 may include … optics 777 … Optics 777 may be any form or optical system or components that may be operable for coupling light 131 from projector 720 with delivery optics 120 … In the non-limiting example depicted in Fig. 7, optics 777 may comprise a beam splitter prism operative to optically reflect incident light 133 from projector 720 to optics 778 (e.g., a mirror) in delivery system 120,” ¶ 53).
While Otsuki and Lee do not explicitly teach that the redirecting optics (5 and 6 of Otsuki, analogous to 778 and 779 of Lee) are grating structures, Chaum teaches that a grating structure in a known alternative to a mirror for redirecting an optical signal from a projector to the eye of a user of the wearable electronic device (“A ‘redirector’ as used herein is a reflective, diffractive and/or refractive structure that changes the angle of light incident upon it. In one example, each redirector is a mirror … In another example, diffractive structures such as gratings are known,” ¶ 539).
In view of the foregoing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki by including a prism as taught by Lee at the exit of the light source and replacing the mirrors/holographic optical elements of Otsuki with at least one grating structure, as taught by Chaum, since this involves the simple substitution of known optical redirecting structures for other known optical redirecting structures which are known to be suitable for the same purposes.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuki in view of Spitzer et al. (U.S. Patent No. 6,879,443, hereinafter Spitzer).
Regarding claims 16-17, Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 14. Otsuki is silent with respect to a battery. However, Spitzer teaches a wearable electronic device (“binocular viewing system,” Abstract) comprising a battery (“circuits 295 may include the batteries,” col. 11:43-54, see Fig. 31) located in a second temple portion (285) (claim 16), wherein a light source (LCD 830, Fig. 30; col. 11:2-11, 44-45) is electrically coupled to the battery via a flexible circuit (“flexible interconnects … so that the circuits fold,” col. 11:45-49; see also col. 6:66-7:20), and the flexible circuit is housed in an opening of a transparent member frame (“flexible circuit or wiring 580 can extend into a cavity 581 in the nose bridge 582. See Fig. 12,” col. 7:9-10) (claim 17). Spitzer teaches that locating the battery in the temple portion and a flexible circuit in the transparent member frame reduces the need for external cables to the wearable device (e.g., “to have only one cable to the head,” col. 6:66-67; or to eliminate the need for an external interface controller, see col. 12:21-27). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki by including a battery as taught by Spitzer in the second temple portion and a flexible circuit as taught by Spitzer housed in an opening of the transparent frame member to electrically couple the light source to the battery, in order to reduce the need for external cables to the wearable device.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuki in view of Chaum, in further view of Hanover.
Regarding claim 20, Chaum teaches the claimed invention substantially as claimed, as set forth above for claim 18. Otsuki further discloses a fixing device (plate spring 10, Fig. 3; ¶ 14) configured to provide a force (i.e., a spring force) for maintaining the unfolded state of the housing. See Fig. 3(c), ¶ 14. Otsuki does not teach that the fixing device comprises second and third magnetic bodies. However, Hanover discloses a similar wearable electronic device (eyewear 31, Fig. 2) comprising a fixing device (magnets 344 and 354, Fig. 6; col. 3:3-12, 9:32-42) configured to provide a force for maintaining an unfolded state of the device (“to promote continuous contact engagement between the cooperating ports on the temple and the frame when the smart glasses are worn,” col. 3:3-12), wherein the fixing device further comprises a magnetic body (354) disposed in a housing (temple 320A, which may also house a display device, see col. 10:28-35), and another magnetic body (344) disposed in a transparent member frame (frame 318, to which the temple 320A is rotatably attached via hinge assembly 360) and having a polarity opposite to that of the other magnetic body (354; this being an inherent feature of “cooperating magnetic elements” as described at col. 3:6-7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki by adding second and third magnetic bodies respectively disposed in the housing and in the transparent member frame, as taught by Hanover, in order to promote proper alignment between the temple and the frame.
Claims 23-30 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuki in view of Chaum, in further view of Spitzer.
Regarding claim 23, the modified Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 22. Otsuki is silent with respect to a flexible printed circuit board. However, Spitzer teaches a wearable electronic device (“binocular viewing system,” Abstract) comprising a flexible printed circuit board circuit at least partially disposed through an opening in a transparent member frame (“flexible circuit or wiring 580 can extend into a cavity 581 in the nose bridge 582. See Fig. 12,” col. 7:9-10). Spitzer teaches that locating a flexible circuit in the transparent member frame reduces the need for external cables to the wearable device (e.g., “to have only one cable to the head,” col. 6:66-67; or to eliminate the need for an external interface controller, see col. 12:21-27). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Otsuki by disposing a flexible printed circuit board as taught by Spitzer at least partially through an opening of the transparent frame member, in order to reduce the need for external cables to the wearable device.
Regarding claim 24, the modified Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 23. Otsuki further teaches (Fig. 1(a)) the housing includes a first temple portion (9) coupled to a first end of the transparent member frame (4) in a rotatable manner via a first hinge portion (8), and a second temple portion (10) coupled to a second end of the transparent member frame (4) in a rotatable manner via a second hinge portion (8). With respect to the flexible printed circuit board, Spitzer further teaches the flexible printed circuit board is disposed between first and second temple portions (285, Fig. 31) through the opening (cavity 581 in nose bridge 582, Fig. 12) and extended to at least one of the first and second temple portions (“by wrapping the flexible interconnects (previously described, but not shown here for clarity) so that the circuits fold in the vertical plane,” col. 11:44-49).
Regarding claim 25, the modified Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 24. Chaum further teaches the processor is further configured to identify a distance (“sufficiently close” or “far enough away,” ¶ 884) between the transparent member frame (11102) and a temple portion (11104) of the housing using the magnetic sensor (11404) and the magnetic body (11405), and identify whether the temple portion (11104) is folded or unfolded with respect to the transparent member frame (11102) based on the identified distance (¶ 884).
Regarding claim 26, the modified Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 25. Spitzer further teaches the flexible printed circuit board (580, Fig. 12) includes a first portion disposed in the transparent member frame (see Fig. 12), a second portion disposed in the first temple portion (285), and a third portion disposed in the second temple portion (285), to interconnect electronic circuitry (295) in the first and second temples (285; col. 11:44-60).
Regarding claim 27, the modified Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 24. Chaum teaches that the magnetic body (11405, Fig. 114B) is disposed at one end of the transparent member frame (11102) adjacent to the first temple portion (11104), and the first temple portion (11104) includes the magnetic sensor (11404), rather than the reverse as claimed. However, it would have been obvious to one of ordinary skill in the art, when modifying Otsuki in view of Chaum, to simply reverse the position of the magnetic body and the magnetic sensor (i.e., disposing the magnetic body in the first temple portion and the magnetic sensor at the end of the transparent member frame adjacent to the first temple portion) to perform the same function, since the court has held that mere reversal of parts would be an obvious modification. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Regarding claim 28, the modified Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 24. Otsuki further discloses a first hinge portion (8, Fig. 1(a)) coupled with the first temple portion (9) and the transparent member (via the transparent member frame 4), and a second hinge portion (for “folding the temples of the glasses,” ¶ 3) coupled with the second temple portion (10) and the transparent member (via the transparent member frame 4).
Regarding claim 29, the modified Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 24. Chaum further teaches the processor is configured to control the transparent member to cease displaying an image via the projector (i.e., by turning the projector off), in response to identifying that the at least one of the first and second temple portions is folded (¶¶ 858, 882, 884).
Regarding claim 30, the modified Otsuki teaches the claimed invention substantially as claimed, as set forth above for claim 23. Spitzer teaches that the flexible printed circuit board (580, Fig. 12) is electrically connected with “circuitry 295 for processing audio and video signals.” Col. 11:44-60. Therefore, when incorporating a flexible printed circuit board as taught by Spitzer into the wearable electronic device of Otsuki having a magnetic sensor and a processor as taught by Chaum, it would have been obvious to one of ordinary skill in the art to electrically connect the magnetic sensor and the processor with the flexible printed circuit board, e.g., in order to supply power to the magnetic sensor and the processor from a battery (see Chaum, col. 11:45-54).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Holakovsky et al. (U.S. Patent No. 5,129,716) discloses a wearable electronic device comprising a transparent member in a transparent member frame, a projector in a housing perpendicular to the transparent member frame, and an optical transferring member configured to guide light from the projector to the transparent member.
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/Laura Davison/ Reexamination Specialist, Art Unit 3993
Conferees:
/SARAH B MCPARTLIN/ Reexamination Specialist, Art Unit 3993
/Patricia L Engle/ SPRS, Art Unit 3991
1 Original patent claim 11 (misnumbered as claim 13 in the preliminary amendment).
2 Original patent claim 13 (misnumbered as claim 10 in the preliminary amendment).
3 The claim term “transparent member frame” is interpreted in view of the specification as referring to a frame for the transparent member, without requiring that the frame itself is transparent.
4 Original patent claims 9-11 (misnumbered as claims 11-13 in the preliminary amendment).
5 The claim term “third magnetic body” is interpreted as describing a magnetic body that corresponds to Applicant’s disclosed third magnetic body. The examiner notes that first and second magnetic bodies are not recited in claim 10 or in the claims from which it depends. For this reason, the word “third” is interpreted as naming the magnetic body in a manner consistent with the specification, and is not interpreted as requiring three magnetic bodies.
6 Original patent claim 12 (misnumbered as claim 9 in the preliminary amendment).
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