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 .
Election/Restrictions
Claim 1 contains allowable subject matter. The restriction requirement between groups I, II, and III and between species I and II , as set forth in the Office action mailed on 2025-02-26, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 2025-02-26 is partially withdrawn. Claims 9-13, directed to species I, is no longer withdrawn from consideration because the claims require all the limitations of an allowable claim. However, claims 21 and 24, directed to groups II and III remain withdrawn from consideration because they do not require all the limitations of an allowable claim.
Claims 9-13 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
The rejoinder is appropriate because claim 1 recites a window with a representation of a spherical object illuminated by two light sources and/or a backlight, while claim 9 adds, in combination with the window’s representation and light sources/backlight, a spherical object illuminated by a light source on a rotatable lever. These structures are not mutually exclusive or contradictory.
However, due to the rejoinder and amendments, the claims are replete with indefiniteness errors. Applicant is kindly requested to review all claims and correct the errors noted below, and any others found.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the system of claims 9-13 comprising (1) a spherical object with a light source on a rotatable lever and (2) a translucent diffusing window with a representation of a spherical object illuminated by a backlight, a light guide, and two light sources around each of which a rotating mask is situated must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because “each facing at least one light source, wherein around each electrical light source” may refer to new light sources rather than the previously recited “at least two electrical light sources.” The limitation is suggested to be changed to -each facing at least one of said two light sources, wherein around each of said two light sources-. Appropriate correction is required.
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 1-18 and 20 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 the limitation "the backlight" in the third-to-last line. There is insufficient antecedent basis for this limitation in the claim. It has been read as -a backlight-.
Claim 1 recites “the light source” in the second-to-last line. There is insufficient antecedent basis for this limitation. It has been read as -the backlight-.
Claim 9 lacks antecedent basis for “the reality” in line 2. It has been read as -reality-.
The limitation “mimics reality” in claim 9 is a relative term which renders the claim indefinite. The phrase “mimics reality” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 9 recites that reality is mimicked by a spherical object illuminated by a rotating light source. How a sphere and a light source mimic reality is not clear, and persons of ordinary skill in the art will have different definitions of what structures are needed and how they should be arranged so as to mimic reality.
Claim 9 recites “illuminating miniature substantially or partially spherical object.” This limitation does not have antecedent basis. Whether it refers to the spherical object of claim 1 or a new spherical object is unclear.
The word “miniature” in claim 9 is a relative term which renders the claim indefinite. The phrase “miniature” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What one considers miniature may be considered normal or large to another.
Claim 9 recites “a light source” and “the light source” in line 3. These limitations have ambiguous antecedent basis because whether they refer to a new light source or one of the two light sources recited in claim 1 is unclear. They have been read as -a third light source- and -the third light source-.
Claim 9 recites “the spherical object” in line 4. Whether this limitation refers to claim 9’s spherical object or claim 1’s spherical object is unclear. It has been read as referring to claim 9’s spherical object.
Claim 9 recites “as near as possible to the perpendicular of the observation axis” in the last line. An axis is a line, and lines have an infinite number of perpendicular lines. Which perpendicular this limitation refers to is unclear. The limitation has been read as -as perpendicular as possible to the observation axis-.
Claim 9 lacks antecedent basis for “the observation axis” in the last line. It has been read as -an observation axis-.
Claim 10 lacks antecedent basis for “the cycle” in line 3. It has been read as -a cycle-.
Regarding claim 10, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The phrase “traditional moon phase mechanism” in claim 10 is a relative term which renders the claim indefinite. The phrase “traditional moon phase mechanism” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What one considers a traditional moon phase mechanism is subjective, as different persons of ordinary skill may have different opinions on what structures are optional rather than required for a traditional mechanism.
Claim 10 recites “in which, preferably, a traditional moon phase mechanism is used.” The limitation appears to say that either the inside of claim 10’s lever or the inside of the moon uses a traditional moon phase mechanism. However, neither a lever nor the moon use a moon phase mechanism, so what this limitation structurally recites is unclear.
The word “realistic” in claim 11 is a relative term which renders the claim indefinite. The phrase “realistic” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What one considers realistic may be considered fake to another.
Claim 11 recites “a mask” in line 3, while claim 1 already recites at least two masks. Whether claim 11 refers to one of claim 1’s masks or a new mask is unclear. It has been read as -a third mask-.
Claim 11 recites “the spherical object,” but whether this limitation refers to claim 9’s or claim 1’s spherical object is unclear.
Regarding claim 11, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 12, the phrase "for example" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 12 recites “a window.” Whether this window refers to claim 1’s window, translucent diffusing window, or a new window is unclear. It has been read as -a third window-. Also, “a window” in line 4 of claim 1 is recommended to be changed to -a first window-.
Claim 12 lacks antecedent basis for “the ambient light” in the third-to-last line. It has been read as -ambient light-.
The phrase “very limited impact” in claim 12 is a relative term which renders the claim indefinite. The phrase “very limited impact” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What one considers low impact may be considered highly impactful to another.
Claim 12 lacks antecedent basis for “the most light” in the penultimate line. It has been read as -most light-.
Claim 12 recites “the spherical object” in the penultimate line. Whether this limitation refers to claim 9’s spherical object or claim 1’s spherical object is unclear.
Claim 12 recites “the light source” in the last two lines. Whether this limitation refers to claim 9’s light source or one of the two light sources recited in claim 1 is unclear.
Claim 13 lacks antecedent basis for “the contrast” in line 2. It has been read as -contrast-.
Claim 13 lacks antecedent basis for “shadow” in line 2. It has been read as -an unilluminated part-.
Claim 13 recites “the spherical object” in lines 3-4. Whether this limitation refers to the spherical object of claim 9 or claim 1 is unclear.
Claim 14 has multiple antecedent bases for “a backlight” because claim 1 recites a backlight. Whether claim 14’s backlight refers to the same or different backlight is ambiguous. It is read as -the backlight-.
Claim 15 has multiple antecedent bases for “a translucent diffusing window with a representation of a spherical object” because claim 1 recites this limitation as well. Claim 15 is recommended to be cancelled for failing to further limit the subject matter of claim 1.
Claim 17 has multiple antecedent basis for “a cover” and “a diffusing window” because claim 1 recites “a cover” and “a translucent diffusing window.” Claim 17 is recommended to be cancelled because if the system is below the cover as recited in claim 1, then the window that’s part of the system is also below the cover. Claim 17 is therefore redundant and does not further limit claim 1.
Allowable Subject Matter
Claims 1-18 and 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: claim 1 incorporates the allowable subject matter of claim 19 identified in the previous office action.
Conclusion
Applicant's amendment necessitated the new grounds 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.
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2833
/renee s luebke/ Supervisory Patent Examiner
Art Unit 2833