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 .
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 17-24 of U.S. Patent No. 10,964,007.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 20-27 of U.S. Patent No. 11,449,978.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
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 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.
Claim(s) 1, 3, 8 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bonewitz et al (US 5917602) in view of Nordbryhn (US 5898169).
As to claim 1, Bonewitz discloses an induction station of case goods in a logistic facility, the induction station comprising:
at least one conveyor for advancing a case of goods into the facility (FIG. 1, conveyor 120);
a case inspection apparatus disposed for inspection of the cased goods advanced past the case inspection apparatus by the at least one conveyor (FIG. 1, inspection station 126);
at least one electromagnetic (EM) source configured to transmit an illumination (FIG. 2, lighting assembly 160, camera box 172);
the vision system with at least one camera (FIG. 2, camera 158) wherein:
the at least one camera is configured so as to capture an image formed by diffused (col. 5, lines 29-55), and
the image captured by the at least one camera embodies a case of goods image that is generated by the case of goods advanced by the at least one conveyor through the illumination (FIG. 2 and col. 5, lines 59-67); and
the image generated spans (FIG. 2 and col. 8, lines 34-37).
Bonewitz fails to explicitly disclose that the illumination is an illumination sheet, of parallel illumination rays, having a predetermined width.
However, Nordbryhn teaches an illumination sheet, of parallel illumination rays, having a predetermined width (FIG. 1; see Abstract; col. 6, line 9).
At the time before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skills in the art to modify Bonewitz using Nordbryhn’s teachings to transmit an illumination sheet, of parallel illumination rays, having a predetermined width in order to generate an image free of perspective distortions (Nordbryhn; col. 6, lines 7-9).
As to claim 3, the combination of Bonewitz and Nordbryhn further discloses wherein the gray scale image is of part of the illumination sheet blocked by and transmitted through the at least a portion of the case of goods (Bonewitz; FIG. 2 and col. 8, lines 34-37).
As to claim 8, the combination of Bonewitz and Nordbryhn further discloses wherein the at least one EM source comprises:
a substantially point source lamp having an output light beam (Nordbryhn; FIG. 1, light source 1; see col. 5, lines 25-29);
an output beam shaper configured to redirect the output light beam into the sheet of collimated illumination having parallel light rays of the output light beam (Nordbryhn; FIG. 1 and col. 5, lines 25-29; col. 6, line 9); and
a mirror to reduce a foot print of the apparatus (Nordbryhn; col. 3, lines 58-59).
As to claim 10, the combination of Bonewitz and Nordbryhn further discloses wherein the vision system is configured to determine an ambient light intensity from a sample buffer of cached images (Bonewitz; see col. 7, lines 34-48; col. 8, lines 34-50; see also col. 2, lines 7-20; col. 5, line 56 to col. 6, line 6; col. 7, line 57 to col 8, line 15; col. 8, lines 34-38; see FIG. 5).
As to claim 11, the combination of Bonewitz and Nordbryhn further discloses wherein the vision system is configured to identify presence of debris on an input window of the vision system based on common pixels of same intensity across a number of digitized images (Bonewitz; col. 5, lines 8-13, 46-67; col. 7, lines 34-47).
Allowable Subject Matter
Claims 2, 4-7, 9 and 12-17 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed on 01/22/2026 have been fully considered but they are not persuasive.
Applicant argues, at pages 2-3, that “What is disclosed in Bonewitz is that the camera 158 is a high-resolution line scan camera … one skilled in the art would simply not replace the line scan camera 158 of Bonewitz with the camera 4 of Nordbryhn as this would clearly change the manner/principle in which Bonewitz operates … As such, the teachings of the Nordbryhn and Bonewitz are so disparate one skilled in the art would not combine the two references as suggested in the office action for this additional reason.”
The examiner respectfully disagrees. First, the office action does not suggest “replace the line scan camera 158 of Bonewitz with the camera 4 of Nordbryhn.” Second, Nordbryhn was used to teach “an illumination sheet, of parallel illumination rays, having a predetermined width”. Applicant failed to address and completely ignored these teachings in their response.
Furthermore, these arguments are unpersuasive because “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Applicant’s arguments about the specific manner in which the references are combined are unpersuasive because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). An ordinarily skilled artisan would have been capable of using the illumination taught in Nordbryhn to Bonewitz’s system, and the Examiner’s proposed combination relies on combining these teachings, not the specific structures of each reference.
These arguments are therefore moot.
Conclusion
THIS ACTION IS MADE FINAL. 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 BOUBACAR ABDOU TCHOUSSOU whose telephone number is (571)272-7625. The examiner can normally be reached M-F 8am-4pm.
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, Chris Kelley can be reached at 5712727331. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BOUBACAR ABDOU TCHOUSSOU/Primary Examiner, Art Unit 2482