`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
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`
`
`
`
` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
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`13/444,923
`
`04/12/2012
`
`Yosuke MIZUYAMA
`
`AOYB—43 1US
`
`5509
`
`EXAMINER
`RATNERPRESTIA —
`07’0”“ —
`7590
`52473
`PO BOX 980
`LAMBRIGHT, BETHANY s
`VALLEY FORGE, PA 19482-0980
`
`PAPER NUMBER
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`ART UNIT
`
`1755
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`07/01/2014
`
`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):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/444,923 MIZUYAMA, YOSUKE
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`BETHANY LAMBRIGHT first“ 1755
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3_ MONTHS FROM THE MAILING DATE
`OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX () MONTHS from 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) MONTHS from 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, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on AQI’i/ 141 2014.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:| This action is non-final.
`a)IXl This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)|XI Claim(s) 9-_18is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)IZ| CIaim(s)_9-18is/are rejected.
`8)I:I Claim(s)_ is/are objected to.
`
`9)|:l Claim((s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`://www.usoto. ov/ atents/init events"
`h/index.‘s orsend an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`htt
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I 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)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.|:I Copies of the certified copies of the priority documents have been received in 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)
`
`
`
`3) D Interview Summary (PT0_413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D InformatIon DIscIosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20140423
`
`

`

`Application/Control Number: 13/444,923
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`Page 2
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`Art Unit: 1755
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`DETAILED ACTION
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`This action is in response to remarks filed April 14, 2014.
`
`Response to Arguments
`
`The amendment to Claim 9 which stated “the Fresnel lens having a height
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`extending from the first surface” does in fact overcome the indefiniteness of the
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`previously presented limitation. The amendment clarifies that the height is a measure
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`from the first surface of the Fresnel lens, thereby being the height of the facets of the
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`Fresnel lens.
`
`However, the amendment to Claim 9 which states " wherein at the height of the
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`Fresnel lens a diffraction efficiency of each of at least two different wavelengths of the
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`light within a range of wavelengths passing through the concentrating lens is at a
`
`highest level between 0 and 1” does not overcome the indefiniteness of the previously
`
`presented limitations.
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`The previous Office Action stated that the diffraction efficiency being “maximized"
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`at such a height was indefinite as there was no discussion as to what "maximized"
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`

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`Application/Control Number: 13/444,923
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`Page 3
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`Art Unit: 1755
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`included. Applicant's amendment to recite "a diffraction efficiency of each of at least two
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`different wavelengths of the light within a range of wavelengths passing through the
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`concentrating lens is at a highest level between 0 and 1” does not further clarify what
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`would be intended by “at a highest level”. The limitation also does not distinctly point out
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`what is meant by the highest level being between 0 and 1.
`
`Applicant’s arguments with respect to claims 9-18 have fully considered but have
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`not been found persuasive.
`
`Regarding Claim 9, Applicant states "In Mori, central portion 10a is a plane
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`surface and is, thus, not used for collecting light. Instead, light intercepting member (11)
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`is used to collect light. Because central portion is not used to collect light there is no
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`reason in Mori to provide any microlenses on the second surface as required in Claim 9.
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`However, The Office has not relied on Mori to teach the addition of microlenses
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`on the second side of the Fresnel lens. Mori discloses a fully transparent Fresnel lens
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`wherein light enters a first surface and exits a second surface opposite the first (Fig. 3).
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`Shiratsuchi discloses a Fresnel lens wherein the second surface through which light
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`exits is comprised of a plurality of microlenses (Fig. 1). The microlenses collect light
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`which has been refracted and collimated by the first surface of the Fresnel lens to a
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`target ([0065]). Therefore, there is explicit motivation in Shiratsuchi to modify the second
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`

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`Application/Control Number: 13/444,923
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`Page 4
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`Art Unit: 1755
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`surface of Mori's Fresnel lens in order to collect light which has been collimated and
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`refracted by the first surface so as to project the light to a specified target.
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`Applicant states “Mori does not disclose or suggest that the height of the Fresnel
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`lens a diffraction efficiency of each of at least two different wavelengths of the light is at
`
`a highest level. More does not consider Fresnel lens height or relating the diffraction
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`efficiency of two different wavelengths to a Fresnel lens height for highest level
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`diffraction".
`
`However, the instant claim only requires the structural component of a Fresnel
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`lens with a height. Mori discloses a Fresnel lens with a height. Applicant's reason for
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`selecting the claimed "height" is functional language and does not further limit the
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`structural components of the claim. Additionally, as amended, Claim 9 states that the
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`diffraction efficiency of the Fresnel lens at a height is at its highest level for two separate
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`wavelengths at an efficiency between 0 and 1. Regardless of the height of the Fresnel
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`lens, a diffraction efficiency will be between 0 and 100% efficiency, therefore, any height
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`of any Fresnel lens will exhibit efficiency between 0 and 1 for at least two wavelengths.
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`Additionally, Applicant states “by selecting an optimized Fresnel lens height,
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`Applicant is able to obtain unexpected results. As Applicant is claiming a feature which
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`provides unexpected results, the above-claimed feature is not simply a matter of design
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`choice".
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`

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`Application/Control Number: 13/444,923
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`Page 5
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`Art Unit: 1755
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`However, Applicant has not claimed a specific height or range of heights and has
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`provided no convincing evidence to support the position that the height of the instant
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`Fresnel lens provide unexpected results.
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`Applicant’s arguments regarding Shiratsuchi as it pertains to the height of the
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`Fresnel lens are moot as such arguments are not commensurate with the scope of the
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`previous rejection. Examiner has not relied on Shiratsuchi to teach the height of the
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`Fresnel lens.
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`Applicant states “There is no reason for the skilled person to combine Mori with
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`Shiratsuchi. As discussed above, Mori’s central portion is a plane surface and is not
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`used for collecting light. Because central portion is not used for light collection, there is
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`no reason to provide Shiratsuchi’s lenticules on a second surface of Mori’s light focusing
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`lens. Thus, Shiratsuchi does not make up for the deficiencies of Mori".
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`However, as stated above, Mori discloses a fully transparent Fresnel lens
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`wherein light enters a first surface and exits a second surface opposite the first (Fig. 3).
`
`Shiratsuchi discloses a Fresnel lens wherein the second surface through which light
`
`exits is comprised of a plurality of microlenses (Fig. 1). The microlenses collect light
`
`which has been refracted and collimated by the first surface of the Fresnel lens to a
`
`target ([0065]). Therefore, there is explicit motivation in Shiratsuchi to modify the second
`
`

`

`Application/Control Number: 13/444,923
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`Page 6
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`Art Unit: 1755
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`surface of Mori's Fresnel lens in order to collect light which has been collimated and
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`refracted by the first surface so as to project the light to a specified target.
`
`Claim Rejections - 35 USC § 1 12
`
`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 9-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`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 pre-AIA the
`
`applicant regards as the invention.
`
`Regarding Claim 9, the claim has been amended to state “a diffraction efficiency
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`of each of at least two different wavelengths of the light within a range of wavelengths
`
`passing through the concentrating lens is at 3 highest level between 0 and 1”. It is
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`unclear what is meant by the term “at 3 highest level between 0 and 1”. As there is no
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`explicit support in the specification for such a limitation, for the purposes of examining,
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`Examiner has assumed that O and 1 relate to percentages, wherein O equates to 0%
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`and 1 equates to 100%. Therefore, the limitation will be interpreted to state that the
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`

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`Application/Control Number: 13/444,923
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`Page 7
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`Art Unit: 1755
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`diffraction efficiency at a specific height of the Fresnel lens will be at its highest level
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`between O-100°/o diffraction efficiency. Revision is advised.
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`Regarding Claim 10, the claim has been amended to state “the height of the
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`Fresnel lens is configured to simultaneously reduce an error in deviation from a
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`maximum phase retardation to 3 lowest level for the at least two different wavelengths”.
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`It is unclear what is meant by “lowest level”, whether it be a range, an upper limit or a
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`lower limit, a set value or a threshold. Any degree of phase retardation will be
`
`considered "a lowest level" for the purposes of examination. Additionally, the claim
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`requires that a phase retardation be reduced from a maximum phase retardation to a
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`lower phase retardation by an optimum height selection. It is unclear from the claim
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`what reference point “maximum phase retardation" is considered. As the claim
`
`specifies that the height of the Fresnel lens is used to determine the phase retardation,
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`a single phase retardation is associated with a specific height. Therefore, it is unclear
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`how there can be a maximum phase retardation for a specific height as well as a
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`reduced or "lowest level" phase retardation for that same height, as suggested by the
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`claim. Revision is advised.
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`Claims 11-18 are rejected as being dependent on Claim 9.
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`Claim Rejections - 35 USC § 103
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`

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`Application/Control Number: 13/444,923
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`Page 8
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`Art Unit: 1755
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`The factual inquiries set forth in Graham v. John Deere 00., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`Claims 9-13 and 15-17 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over US 4653472 by Mori in view of US 20070147041 by Shiratsuchi et al
`
`(hereinafter Shiratsuchi).
`
`Regarding Claim 9, Mori discloses a light focusing lens which separates light
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`comprising a first and second surface (Numeral 10 Fig. 3 corresponding to the claimed
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`“at least one concentrating lens configured to receive light and to separate the light
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`

`

`Application/Control Number: 13/444,923
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`Page 9
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`Art Unit: 1755
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`passing through the respective concentrating lens into a plurality of beamlets”
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`limitation). The first surface of the light focusing lens is a Fresnel lens (Numeral 11 Fig.
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`1 corresponding to the claimed “each concentrating lens comprising: a first surface
`
`having a Fresnel lens and a second surface opposite the first surface” limitation).
`
`Modified Mori discloses that the Fresnel lens extends up from the first surface a
`
`height (Fig. 1 corresponding to the claimed “the Fresnel lens having a height extending
`
`from the first surface” limitation). As the Fresnel lens is used to collect and diffract light,
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`light incident on the Fresnel lens, including at least two wavelengths of light as visible
`
`light includes wavelengths between 390 and 700 nm, will be diffracted at a certain
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`efficiency, that efficiency being between 0 and 100 percent efficiency corresponding to
`
`the claimed "wherein at the height of the Fresnel lens, a diffraction efficiency of each of
`
`at least two different wavelengths of the light within a range of wavelengths passing
`
`through the concentrating lens is at a highest level between 0 and 1" limitation.
`
`Mori discloses a solar cell (Numeral 14 Fig. 3) which receive light from the
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`focusing lens (Fig. 3 corresponding to the claimed "and at least one PV cell
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`corresponding to the at least one concentrating lens configured to receive the
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`respective plurality of beamlets” limitation).
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`Mori does not disclose "the second surface having a plurality of microlenses”.
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`

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`Application/Control Number: 13/444,923
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`Page 10
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`Art Unit: 1755
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`However, Shiratsuchi discloses a concentrating lens (Numeral 30 Fig. 1) which
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`collimates and refracts light towards a target ([0065]). The first side, incident to light
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`comprises a Fresnel lens (Numeral 31 Fig. 1) and the second side comprising a plurality
`
`of microlenses (Numeral 32 Fig. 1 corresponding to the claimed “the second surface
`
`having a plurality of microlenses” limitation) in order to collect light which has been
`
`refracted and collimated by the Fresnel lens and focuses the light onto a target ([0065]).
`
`Therefore, it would have been obvious to one having ordinary skill in the art at
`
`the time of the invention to employ a plurality of microlenses on the second side of
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`Mori’s focusing lens, as taught by Shiratsuchi, in order to collect light which has been
`
`refracted and collimated by the Fresnel lens and focuses the light onto a target
`
`(Shiratsuchi [0065]).
`
`Regarding Claim 10, modified Mori discloses the front surface of the focusing
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`lens comprises a Fresnel lens has a height (Mori Numeral 11 Fig. 3). At any height, a
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`Fresnel lens exhibits a degree of phase retardation, as supported by the instant
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`specification [0048]-[0049]. At any height, the Fresnel lens would exhibit a specific
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`phase retardation which is considered to read on the claimed "wherein, for each
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`concentrating lens, the height of the Fresnel lens is configured to simultaneously reduce
`
`an error in deviation from a maximum phase retardation to a lowest level for the at least
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`two different wavelengths” limitation. As disclosed previously in the rejection of Claim 10
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`under 112 second paragraph, any degree of phase retardation is considered “reduced”
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`

`

`Application/Control Number: 13/444,923
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`Page 11
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`Art Unit: 1755
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`for the purpose of examination as it is unclear how there may exist several phase
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`retardation levels for one specific height of the Fresnel facets.
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`Regarding Claim 11, modified Mori discloses the solar cell absorbs light from the
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`focusing lens (Mori Column 2 Lines 65-67 and Column 3 Lines 1-7 corresponding to the
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`claimed “wherein, for each concentrating lens, the at least two different wavelengths
`
`correspond to one or more wavelength absorption bands of the corresponding PV cell”
`
`limitation).
`
`Regarding Claim 12, modified Mori discloses the first side of the focusing lens
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`receives light (Mori Fig. 3 corresponding to the claimed "wherein each concentrating
`
`lens is configured to receive the light via the first surface” limitation).
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`Regarding Claim 13, modified Mori discloses the second side of the focusing lens
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`receives light from the first side (Shiratsuchi Fig.
`
`1 [0065] corresponding to the claimed
`
`"wherein each concentrating lens is configured to receive the light via the second
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`surface” limitation).
`
`Regarding Claim 15, modified Mori discloses the first side of the focusing lens is
`
`a Fresnel lens (Mori Numeral 11 Fig. 3). Light exiting the focusing lens converges to an
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`approximate focal point before diverging (Mori Fig. 3 corresponding to the claimed
`
`

`

`Application/Control Number: 13/444,923
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`Page 12
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`Art Unit: 1755
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`“wherein, for each concentrating lens, the Fresnel lens is configured to compensate for
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`a dispersion by at least one of the first surface or the second surface” limitation).
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`Regarding Claim 16, modified Mori discloses light exiting the focusing lens
`
`crosses path with light exiting the opposing side of the focusing lens, thereby striking
`
`the target at an opposite side from which it exits the focusing lens (Mori Fig. 3
`
`corresponding to the claimed “wherein, for each concentrating lens, the first surface is
`
`configured to superimpose the respective plurality of beamlets onto the corresponding
`
`PV cell” limitation).
`
`Regarding Claim 17, modified Mori discloses light exiting the focusing lens
`
`converges to an approximate focal point between the lens and the solar cell (Mori Fig. 3
`
`and Shiratsuchi Fig. 1 corresponding to the claimed "wherein, for each concentrating
`
`lens, the first surface is configured to focus the respective plurality of beamlets to a
`
`position between the concentrating lens and the corresponding PV cell” limitation).
`
`Claim 14 is rejected under 35 U.S.C. 103(a) as being unpatentable over Mori and
`
`Shiratsuchi as applied to claim 9 above, and further in view of US 20110023939 by
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`Chen et al (hereinafter Chen).
`
`Regarding Claim 14, Applicant is directed above for a full disclosure of modified
`
`Mori as it pertains to Claim 9. Modified Mori discloses a focusing lens having a first side
`
`

`

`Application/Control Number: 13/444,923
`
`Page 13
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`Art Unit: 1755
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`comprising a Fresnel lens and a second side comprising a plurality of microlenses but
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`does not explicitly disclose “wherein the at least one concentrating lens includes a
`
`plurality of concentrating lens and the at least one PV cell includes a plurality of PV
`
`cells”.
`
`However, Chen discloses a plurality of solar cell units having a plurality of
`
`Fresnel lenses disposed, wherein each solar cell receives light from a corresponding
`
`Fresnel lens (Fig. 2 [0034] corresponding to the claimed "wherein the at least one
`
`concentrating lens includes a plurality of concentrating lens and the at least one PV cell
`
`includes a plurality of PV cells” limitation) in order to form an assembly of solar cell units
`
`([0034]). Such an assembly is capable of converting more energy than a single solar
`
`cell unit.
`
`Therefore, it would have been obvious to one having ordinary skill in the art to
`
`employ a plurality of solar concentrating units, as taught by Chen, because a plurality of
`
`units is capable of converting more energy than a single unit.
`
`Claim 18 is rejected under 35 U.S.C. 103(a) as being unpatentable over Mori and
`
`Shiratsuchi as applied to claim 16 above, and further in view of US 20090185302 by
`
`Forrester et al (hereinafter Forrester).
`
`

`

`Application/Control Number: 13/444,923
`
`Page 14
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`Art Unit: 1755
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`Regarding Claim 18, Applicant is directed above for a full disclosure of modified
`
`Mori as it pertains to Claim 16. Modified Mori discloses a focusing lens having a first
`
`side comprising a Fresnel lens and a second side comprising a plurality of microlenses
`
`but does not explicitly disclose "wherein, for each concentrating lens, the plurality of
`
`microlenses are configured to produce a homogenized distribution of the superimposed
`
`plurality of beamlets on the corresponding PV cell”.
`
`However, Forrester discloses a solar concentrator comprising a Fresnel lens
`
`which directs light to a solar receiver as concentrated homogenized light (Abstract
`
`corresponding to the claimed “wherein, for each concentrating lens, the plurality of
`
`microlenses are configured to produce a homogenized distribution of the superimposed
`
`plurality of beamlets on the corresponding PV cell” limitation) in order to eliminate
`
`hotspots which reduce efficiency of the solar cell by striking the cell with energy which is
`
`uniform in intensity ([0027]).
`
`Therefore, it would have been obvious to one having ordinary skill in the art to
`
`configure the Fresnel lens of modified Mori's solar concentrator to produce
`
`homogenized energy, as taught by Forrester, in order to increase cell efficiency by
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`striking with light which is uniform in intensity, thereby eliminating hotspots (Forrester
`
`[0027D-
`
`

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`Application/Control Number: 13/444,923
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`Page 15
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`Art Unit: 1755
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`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
`
`CFR1.136(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 event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BETHANY LAMBRIGHT whose telephone number is
`
`(571)270-7298. The examiner can normally be reached on Monday - Thursday 7:00 -
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`5:30.
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`

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`Application/Control Number: 13/444,923
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`Page 16
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`Art Unit: 1755
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Jonathan Johnson can be reached on 571-272—1177. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`/JONATHAN JOHNSON/
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`Supervisory Patent Examiner, Art Unit 1755
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`/B. L./
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`Examiner, Art Unit 1755
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