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 Amendment
Receipt is acknowledged of the amendment filed 5/22/2026. Claims 21 is new and claims 1-21 are currently pending.
Election/Restrictions
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/22/2026.
Newly submitted claim 21 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: details are directed only to the subcombination, identified in the 3/26/2026 Restriction as Invention II, that was not elected for examination. Had the dependent claim been originally presented, the subcombination would have been identified as distinct from Claims 2-15 with Claim 1 being linking. As Applicant has elected Claims 1-15, the invention identified as Invention I has been elected for examination.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 21 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-15 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-15 of prior U.S. Patent No. 12482377. This is a statutory double patenting rejection.
US Ser. 19374084Claim
US Patent 12482377Claim
Differing Language
1
1
“at least one angular scale disposed adjacent to at least one of the ninth side and the tenth side”
2
2
N/A
3
3
N/A
4
4
N/A
5
5
N/A
6
6
N/A
7
7
N/A
8
8
N/A
9
9
N/A
10
10
N/A
11
11
N/A
12
12
N/A
13
13
N/A
14
14
N/A
15
15
N/A
The broadest reasonable interpretation of “at least one angular scale disposed adjacent to at least one of the ninth side and the tenth side” does not provide a functional relationship between the indicia and the associated substrate and is therefore drawn to nonfunctional descriptive matter and does not patentably distinguish the invention over prior art. Were the angular scale to be limited as having a correlation to the structure of the polyhedral optical conduit, then the indicia would be considered functional descriptive matter. Absent a structural distinction due to the angular scale, the claims are otherwise identical.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 63/338,841, 29/843,646, and 18/310,776, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. There are no angular scales nor any indicia on the corresponding faces to indicate angular scale. Accordingly, claims 1-15 are not entitled to the benefit of the prior applications.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “at least one angular scale disposed adjacent to at least one of the ninth side and the tenth side”. Under a broadest reasonable interpretation of the claim, the structure of “angular scale” cannot be determined in light of the Specifications. In the Specifications, Applicant discloses the angular scale may be embodied as “hash marks” ([0031] and Fig. 1). The metes and bounds of the claim scope cannot be determined as “angular scale” merely captures an abstract measure of angle without a specific means for determining species captured by the limitation. For example, it is unclear if the metes and bounds of “angular scale” includes, in addition to ‘hash marks”, the shape of the optical conduit itself and/or the markings (120) on the first through eighth sides. The shape of the ninth side is an angular scale in that each edge indicates a relative angular position of 22.5⁰ relative to an adjacent side. The markings (120) constitute an angular scale in that the markings such as |0><0| indicates a global angular position of the optical conduit relative to all others of the first through eighth sides. A person having ordinary skill in the art would not understand the metes and bounds of the claim to require either tangible or abstract embodiments of a measure of angle.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over US PG Pub. 2024/0144843 to Brunschwig (hereafter Brunschwig) in view of US. Pat. 7,801,401 to Morioka, et al. (hereinafter Marioka).
Regarding claim 1, Brunschwig discloses a polyhedral optical conduit, comprising: a longitudinal axis (Figs. 1-5; Claim 1), a first transverse axis (Figs. 1-5; Claim 1) perpendicular to the longitudinal axis, and a second transverse axis perpendicular to both the longitudinal axis and the first transverse axis; a first side (Figs. 1-5; Claim 1) parallel to a second side (Figs. 1-5; Claim 1), each side having two longitudinal edges and two transverse edges; a third side (Figs. 1-5; Claim 1) parallel to a fourth side (Figs. 1-5; Claim 1), each side having two longitudinal edges and two transverse edges; a fifth side (Figs. 1-5; Claim 1) parallel to a sixth side (Figs. 1-5; Claim 1), each side having two longitudinal edges and two transverse edges; a seventh side (Figs. 1-5; Claim 1) parallel to an eighth side (Figs. 1-5; Claim 1), each side having two longitudinal edges and two transverse edges; a ninth side (Figs. 1-5; Claim 1) parallel to a tenth side (Figs. 1-5; Claim 1), each side having a plurality of transverse edges; wherein: the first side and the third side are joined along one of their respective longitudinal edges at a first angle (Figs. 1-5; Claim 1); the third side and the fifth side are joined along one of their respective longitudinal edges at a second angle (Figs. 1-5; Claim 1); the fifth side and the seventh side are joined along one of their respective longitudinal edges at a third angle (Figs. 1-5; Claim 1); the seventh side and the second side are joined along one of their respective longitudinal edges at a fourth angle (Figs. 1-5; Claim 1); the second side and the fourth side are joined along one of their respective longitudinal edges at a fifth angle (Figs. 1-5; Claim 1); the fourth side and the sixth side are joined along one of their respective longitudinal edges at a sixth angle (Figs. 1-5; Claim 1); the sixth side and the eighth side are joined along one of their respective longitudinal edges at a seventh angle (Figs. 1-5; Claim 1); the ninth side is joined to at least one of the first through eighth sides along one of the transverse edges of each of the at least one of the first through eighth sides at a ninth angle (Figs. 1-5; Claim 1); the tenth side is joined to at least one of the first through eighth sides along the second of the transverse edges of each of the at least one of the first through eighth sides at a tenth angle (Figs. 1-5; Claim 1); the ninth side defining a first opening, the first opening in a first plane defined by the first transverse axis and the second transverse axis; the tenth side defining a second opening, the second opening in a second plane defined by the first transverse axis and the second transverse axis (Figs. 1-5; Claim 1); the polyhedral optical conduit defines a passageway having a length between the first opening and the second opening, the passageway oriented along the longitudinal axis and through which electromagnetic radiation travels to be manipulated (Figs. 1-5; Claim 1); and further comprising: at least one optical device (Figs. 1-5; Claim 1) having a thickness and a defined orientation disposed in the passageway and positioned in the plane defined by the first transverse axis and the second transverse axis so as to manipulate the electromagnetic radiation (Figs. 1-5; Claim 1); wherein the length of the passageway is greater than the thickness of the optical device (Figs. 1-5; Claim 1).
Brunschwig discloses the claimed invention as cited above though does not explicitly disclose at least one angular scale disposed adjacent to at least one of the ninth side and the tenth side.
Morioka discloses at least one angular scale (marking 11, 12, 14, 17 of Fig. 3 & 6-8) disposed adjacent to at least one of the ninth side and the tenth side (Figs. 1 & 3-8).
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to provide an angular scale as taught by Morioka with the system as disclosed by Brunschwig. The motivation would have been to rotate and adjust the optical element for control of the optical effect (col. 2, ll. 17-56).
Regarding claim 2, Brunschwig discloses the eighth side and the first side are joined along one of their respective longitudinal edges at an eighth angle (Figs. 1-5; Claim 2).
Regarding claim 3, Brunschwig discloses each of the first through eighth angles is approximately 45 degrees (Figs. 1-5; Claim 3).
Regarding claim 4, Brunschwig discloses each of the ninth and tenth angles is approximately 90 degrees (Figs. 1-5; Claim 4).
Regarding claim 5, Brunschwig discloses the polyhedral optical conduit is in the form of a decahedron (Figs. 1-5; Claim 5).
Regarding claim 6, Brunschwig discloses the at least one optical device comprises a polarizer (Figs. 1-5; Claim 6).
Regarding claim 7, Brunschwig discloses the at least one optical device comprises a waveplate (Figs. 1-5; Claim 7).
Regarding claim 8, Brunschwig discloses the waveplate comprises a half-wave waveplate (Figs. 1-5; Claim 8).
Regarding claim 9, Brunschwig discloses the waveplate comprises a quarter-wave waveplate (Figs. 1-5; Claim 9).
Regarding claim 10, Brunschwig discloses the orientation of the optical device is approximately 45 degrees relative to at least one of the axes of the polyhedral optical conduit (Figs. 1-5; Claim 10).
Regarding claim 11, Brunschwig discloses the orientation of the optical device is approximately 0 degrees relative to at least one of the axes of the polyhedral optical conduit (Figs. 1-5; Claim 11).
Regarding claim 12, Brunschwig discloses at least one of the sides comprises marking related to the orientation of the optical device (Figs. 1-5; Claim 12).
Regarding claim 13, Brunschwig discloses the marking comprises Dirac bra-ket notation (Figs. 1-5; Claim 13).
Regarding claim 14, Brunschwig discloses the optical device is fixed relative to the longitudinal axis, the first transverse axis, and the second transverse axis (Figs. 1-5; Claim 14).
Regarding claim 15, Brunschwig discloses the optical device is movable relative to a least one of the longitudinal axis, the first transverse axis, and the second transverse axis (Figs. 1-5; Claim 15).
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cited art generally discloses optical devices disposed in octagonal housings.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J STANFORD whose telephone number is (571)270-3337. The examiner can normally be reached 8AM-4PM PST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER STANFORD/Primary Examiner, Art Unit 2872
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