DETAILED ACTION
Response to Amendment
This Office Action is responsive to the amendment filed on 10/22/2025. As indicated by the amendment: claims 44, 45, 48, 63 and 66-67 have been amended and claim 49 has been cancelled. In response to the amendments of claims 44-45 and 66-67, their rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been withdrawn. Claims 44-48 and 50-67 are presently pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 66 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claim 66 has been amended to recite “wherein the emissive radiation source and all optical elements are contained within an internal cavity of the head unit”. An optical element has not been positively recited in the claim. Moreover, the recited elements that can be considered optical elements include the imaging scope and the light source. The claim recites that the imaging scope is received in the second aperture of the head unit. As is known in the art, imaging scopes contain a variety of optical elements, such as sensors, lenses, fiber optics, etc., located at its proximal end, distal end and/or therebetween. Applicant has not disclosed a configuration wherein the optical elements contained the portion of the imaging scope that extends from the front face of the head unit are “contained within an internal cavity of the head unit” as now claimed. Accordingly, the claim fails to comply with the written description requirement.
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.
Claim 66 is 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. Independent claim 66 has been amended to recite “wherein the emissive radiation source and all optical elements are contained within an internal cavity of the head unit”. An optical element has not been positively recited in the claim such that is not clear what is considered an optical element. Are optical elements the imaging scope and the light source? Are the optical elements the light source and an unclaimed element? Are the optical elements all unclaimed elements? As the optical elements are unclear, the claim is rendered indefinite.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 44, 50 and 65 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 37 of U.S. Patent No. 11,330,963. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patent claims. Except for minor differences in terminology, it is clear that all elements of claims 44, 50 and 65 are found in claim 37 of the patent. The difference between claims of the application and claims of the patent lies in the fact that the patent claims include more elements and is thus more specific. The invention of claim 37 of the patent is in effect a “species” of the “generic” invention of claims 44, 50 and 65 of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 44, 50 and 65 are anticipated by claim 37 of the patent, they are not patentably distinct from the patented claims.
Claim 66 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,330,963. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patent claims. Except for minor differences in terminology, it is clear that all elements of claim 66 are found in claim 3 of the patent. The difference between claims of the application and claims of the patent lies in the fact that the patent claims include more elements and is thus more specific. The invention of claim 3 of the patent is in effect a “species” of the “generic” invention of claim 66 of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 66 is anticipated by claim 3 of the patent, it is not patentably distinct from the patented claim.
Allowable Subject Matter
Claim 67 is allowed. In the Non-Final Rejection of 04/25/2025, it was indicated that claim 67 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph (see page 12 of the Non-Final Rejection of 04/25/2025). In the Amendment of 10/22/2025, Applicant amended claim 67 to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph. Accordingly, claim 67 is allowed.
Regarding independent claim 44, in the Non-Final Rejection of 04/25/2025, the Examiner recommended amending the claim to recite that the volumetric spectrum converter includes a plurality of layers and that the phosphor particles are volumetrically disposed within the plurality of layers to overcome the rejection, as Ouderkirk does not specifically disclose such configuration (see pages 12-13 of the Non-Final Rejection of 04/25/2025). In the Amendment of 10/22/2025, Applicant amended claim 44 clarifying the structure of the volumetric spectrum converter as suggested by the Examiner. The prior art does not specifically disclose, or otherwise render obvious, a wireless imaging system comprising the volumetric spectrum converter as recited in claim 44. However, as discussed above, claims 44, 50 and 65 are rejected under nonstatutory double patenting. A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting. Upon the timely filing of a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d), claims 44-48 and 50-65 will be allowed.
Response to Arguments
Applicant’s arguments, see claim amendments and Remarks, filed 10/22/2025, with respect to the rejection(s) of the claim(s) under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made under 35 U.S.C. 112 and double patenting, as discussed above.
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 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 shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 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 SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYNAE E BOLER whose telephone number is (571)270-3620. The examiner can normally be reached Mon - Fri 9:00-5:00.
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/RYNAE E BOLER/Examiner, Art Unit 3795
/ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
12/15/25