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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/882,914
`
`08/08/2022
`
`Ming-Chih CHEN
`
`3722/13 19PUS2
`
`1066
`
`Muncy,Geissler, Olds & Lowe, P.C.
`125 S. RoyalSt.
`Alexandria, VA 22314
`
`HAYES, MARY A
`
`PAPER NUMBER
`
`ART UNIT
`
`2874
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/20/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`MAILROOM @MG-IP.COM
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/882,914
`CHEN, Ming-Chih
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`MARY A EL-SHAMMAA
`2874
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 2/1/2024.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-20 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C} Claim(s)__ is/are allowed.
`Claim(s) 1-20 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 8/8/2022 is/are: a) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Y) All
`1.) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240504
`
`

`

`Application/Control Number: 17/882,914
`Art Unit: 2874
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA 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
`
`Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because
`
`the new ground of rejection does not rely on any reference applied in the prior rejection of record for
`
`any teaching or matter specifically challenged in the argument.
`
`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.
`
`Claim(s) 1-7, 9, and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US
`
`10,216,061 B2 Popovichetal. (herein “Popovich”).
`
`Regarding claim 1, Popovich discloses in Figs. 3A, 3B, and 14, an image displacement device,
`
`comprising:
`
`a first grating (25) switchable between a diffracting state and a non-diffracting state having a
`
`first surface and a second surface opposite the first surface, the first surface being capable of receiving
`
`

`

`Application/Control Number: 17/882,914
`Art Unit: 2874
`
`Page 3
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`image beams, and the second surface being capable of outputting the image beams (col. 10, line 55 —
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`col. 11, line 7); and
`
`a second grating (24) switchable between a diffracting state and a non-diffracting state and
`
`being disposed downstream from the first grating in a light path, the second grating having a third
`
`surface and a fourth surface opposite the third surface, the third surface being configured to directly
`
`receive the image beams output from the second surface, and the fourth surface being capable of
`
`outputting the image beams, wherein the image beams are capable of being projected to form a plane
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`image comprised of rows and columns ofpixels, each of the pixels is capable of being displaced ina
`
`direction by the image displacement device, and a displacement of the each of the pixels is smaller than
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`five times a width of the each of the pixels (col. 12, line 38 — col. 13, line 48; wherein the light travels
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`from grating 25 to grating 24, and both gratings are switchable between diffraction and non-diffraction
`
`states and all surfaces are capable of outputting image beams; furthermore,light can be output with
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`zero displacement, which is smaller than five times a width of each pixel).
`
`The Examinernotesthat the limitations in claim 1 that include the language “capable of” are
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`intended use typelimitations. A recitation of the intended use of the claimed invention must result in a
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`structural difference between the claimed invention and the prior art in order to patentably distinguish
`
`the claimed invention from the prior art. If the prior art structure is capable of performing the intended
`
`use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,
`
`459 (CCPA 1963).
`
`Regarding claim 2, Popovich discloses the image beams are capable of makinga first incident
`
`angle with respect to a surface normal of the first surface and are capable of making a first exit angle
`
`with respect to a surface normal of the fourth surface, and the first incident angle is substantially equal
`
`to the first exit angle (col. 12, line 38 — col. 13, line 48).
`
`

`

`Application/Control Number: 17/882,914
`Art Unit: 2874
`
`Page 4
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`Regarding claim 3, Popovich disclosesin Figs. 3A and 3B,thefirst grating (25) and the second
`
`grating (24) are disposed side byside.
`
`Regarding claim 4, Popovich discloses in Figs. 3A and 3B, eachofthe first grating and the second
`
`grating is a holographic polymer dispersed liquid crystal (HPDLC)cell (col. 6, line 49 — col. 7, line 18).
`
`Regarding claim 5, Popovich discloses the first grating and the second grating are both in the
`
`diffracting state or both in the non-diffracting state (col. 12, line 38 — col. 13, line 48).
`
`Regarding claim 6, Popovich discloses when the first grating and the second grating are both in
`
`the non-diffracting state, the image beams are capable of travelling throughthe first grating and the
`
`second grating in a substantially straight direction (col. 12, line 38 — col. 13, line 48).
`
`Regarding claim 7, Popovich discloses when the first grating and the second grating are both in
`
`the diffracting state, the first grating and the second grating are capable of deflecting the image beams
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`in opposite directions (col. 12, line 38 — col. 13, line 48).
`
`Regarding claim 9, Popovich discloses the image beams incident to the first surface are
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`substantially parallel to the image beams outputted from the fourth surface (col. 12, line 38 — col. 13,
`
`line 48).
`
`Regarding claim 10, Popovich disclosesthe first grating and the second grating have an identical
`
`grating orientation (col. 12, line 38 — col. 13, line 48).
`
`Claim(s) 11, 13-16, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`US 2017/0030550 Al Popovichet al. (herein “’550”).
`
`Regarding claim 11, ‘550 disclosesin Figs. 11 and 12, an image displacement device (see Figures
`
`11-12), comprising:
`
`e
`
`=a first grating (Electrically Switchable Holographic Bragg Grating, ESBG 30a) switchable
`
`between a diffracting state and a non-diffracting state (see paragraphs 16, 22, 90, and
`
`

`

`Application/Control Number: 17/882,914
`Art Unit: 2874
`
`Page 5
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`96; each ESBG diffracts has a diffracting state and a non-diffracting state) having a first
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`surface (the first surface of ESBG 30a faces lens 2) and a second surface (the second
`
`surface of ESBG 30a faces ESBG 30b) opposite the first surface, the first surface being
`
`capable of receiving image beams (see Figures 11 and 12), and the second surface being
`
`capable of outputting the image beams (see Figures 11 and 12); and
`
`e
`
`asecond grating (ESBG 30b) switchable between a diffracting state and a non-diffracting
`
`state (see paragraphs 16, 22, 90, and 96; each ESBGdiffracts has a diffracting state and
`
`a non-diffracting state) and being disposed downstream from the first grating (30a) ina
`
`light path (see Figures 11a and 11b), the second grating (30b) having a third surface (the
`
`surface facing ESBG 30a) and a fourth surface (the surface facing ESBG 30c) opposite the
`
`third surface, the third surface being configured to directly receive the image beams
`
`output from the second surface (see Figures 11 and 12), and the fourth surface being
`
`capable of outputting the image beams (see Figures 11 and 12),
`
`e wherein the image beams are capable of being projected to at least form a first plane
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`image comprised ofpixels inafirst position and a second plane image comprised of
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`pixels in a second position sequentially, the second position is different to the first
`
`position, and the second plane image overlapsthe first plane image in space (see the
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`abstract and paragraph 3; the image display panel 6 inherently includes pixels and
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`colour sequential illumination functions in the claimed manner).
`
`Regarding claim 13, ‘550 disclosesin Figs. 11 and 12, the first grating (30a) and the second
`
`grating (30b) are disposed side byside.
`
`Regarding claim 14, ‘550 discloses in Figs. 11 and 12, each of the first grating and the second
`
`grating is a holographic polymer dispersed liquid crystal (HPDLC) cell (para [0007]).
`
`

`

`Application/Control Number: 17/882,914
`Art Unit: 2874
`
`Page 6
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`Regarding claim 15, ‘550 discloses in Figs. 11 and 12, the first grating and the second grating are
`
`both in the diffracting state or both in the non-diffracting state (paras [0096, 0119]).
`
`Regarding claim 16, ‘550 discloses in Figs. 11 and 12, when the first grating and the second
`
`grating are both in the non-diffracting state, the image beams are capable of travelling through the first
`
`grating and the second grating in a substantially straight direction (para [0096]).
`
`Regarding claim 18, ‘550 discloses in Figs. 11 and 12, when the first grating and the second
`
`grating are disposed in a projection lens (projection lens formed by the combination of lens, ESBGs 3,
`
`DOE 4, and lens 5; see Figures 11 and 12, and para [0096]).
`
`Regarding claim 19, ‘550 discloses in Figs. 11 and 12, the image beams incident to the first
`
`surface are substantially parallel to the image beams outputted from the fourth surface (See paragraph
`
`[0016], wherein each ESBGdiffracts light in a direction substantially parallel to the optical axis when in
`
`the active state, the optical elements being aligned along the optical axis in Figures 11 and 12 and the
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`input light being parallel to the optical axis).
`
`Regarding claim 20, ‘550 discloses in Figs. 11 and 12, the first grating and the second grating
`
`have an identical grating orientation (paras [0007, 0120, 0124)]).
`
`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 ordinaryskill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 10,216,061 B2
`
`Popovich et al. (herein “Popovich”).
`
`

`

`Application/Control Number: 17/882,914
`Art Unit: 2874
`
`Page 7
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`Regarding claim 8, Popovichis silent as to explicitly disposing the gratings in a projection lens.
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`However, Popovich is drawn to an image sensor and it would have been obvious to one of ordinaryskill
`
`in the art at the time the invention wasfiled to include a projection lens so as to be able to magnify and
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`project the image from the sensor. Obviousness may be established by combining or modifying the
`
`teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or
`
`motivation to do so found either in the references themselvesor in the knowledge generally available to
`
`one of ordinary skill in the art. See /n re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones,
`
`958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR InternationalCo. v. Teleflex, Inc., 550 U.S. 398,
`
`82 USPQ2d 1385 (2007).
`
`Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0030550 A1
`
`Popovich et al. (herein “’550”) in view of US 10,216,061 B2 Popovich etal. (herein “Popovich”).
`
`Regarding claim 12, ‘550 discloses in Figs. 11 and 12, the image beams are capable of making a
`
`first incident angle with respect to a surface normal of the first surface and are capable of makinga first
`
`exit angle with respect to a surface normal of the fourth surface, butis silent as to the first incident
`
`angle being substantially equal to the first exit angle. However, Popovich discloses three stacked SBG
`
`gratings wherein the SBG gratings can bein diffracting states and non-diffracting states; therefore, when
`
`the first two SBGs are in a non-diffracting, the result would be the first incident angle being equal to the
`
`first exit angle, thus meeting the claimed limitation (col. 13, lines 31-48). It would have been obvious to
`
`one of ordinary skill in the art at the time the invention was filed to include the diffracting and non-
`
`diffracting states of the SBGs as taught by Popovichso as to control the incident and exit angles of the
`
`beams.
`
`

`

`Application/Control Number: 17/882,914
`Art Unit: 2874
`
`Page 8
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`Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0030550 A1
`
`Popovich et al. (herein “’550”).
`
`Regarding claim 17, ‘550 is silent as to when the first grating and the second grating are bothin
`
`the diffracting state, the first grating and the second grating are capable of deflecting the image beams
`
`in opposite directions. However, it would have been obvious to one of ordinary skill in the art at the
`
`time the invention was filed to have the gratings be capable of deflecting the image beams in identical,
`
`opposite, or any other desirable direction as needed for the intended outcome. Controlling the directing
`
`of the beams allows for optimization of the illumination device and would require only routine skill in
`
`the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21
`
`USPQ2d 1941 (Fed. Cir. 1992), and KSR InternationalCo.v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385
`
`(2007).
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
`
`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the
`
`extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
`
`the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHS ofthe mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
`
`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuantto 37 CFR 1.136(a) will be calculated from the mailing
`
`date of the advisory action.
`
`In no event, however, will the statutory period for reply expire later than
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`SIX MONTHS from the date of this final action.
`
`

`

`Application/Control Number: 17/882,914
`Art Unit: 2874
`
`Page 9
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to MARY A EL-SHAMMAA whosetelephone number is (571)272-2469. The examiner
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`can normally be reached Mon-Fri, 9am-6pm (flexible schedule).
`
`Examiner interviewsare available via telephone, in-person, and video conferencing using a
`
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`
`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,
`
`Thomas Hollweg can be reached on 571-270-1739. The fax phone number for the organization where
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`this application or proceedingis assigned is 571-273-8300.
`
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`
`/MARY A EL-SHAMMAA/
`Examiner, Art Unit 2874
`
`/MICHELLE R CONNELLY/
`Primary Examiner, Art Unit 2874
`
`