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 .
Response to Arguments
The previous drawing objection(s) has/have been addressed and is/are withdrawn.
The previous claim objection(s) has/have been addressed and is/are withdrawn.
The previous 35 U.S.C. 112(d) rejection(s) has/have been addressed and is/are withdrawn.
In combination with the claim amendments, applicant’s arguments, see pages 9-12, filed 5/26/2026, with respect to the rejection(s) of claim(s) 1-4, 6, 17-18, and 20-23 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the new teaching reference, Williamson US4384198.
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, 4, 17, and 19-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 7-8, and 13 of copending Application No. 18038061 (US20230366987) in view of foreign patent document Birkle DE3601442.
Regarding independent claim 1, copending application ‘061 discloses a laser scanner, a laser head, a rotating deflection unit, a drive, a measuring object, a detector module, a control and evaluation unit, a hollow spindle, a beam guide, a deflection mirror, an outlet window, a rotor housing, and the deflection mirror is located between the beam guide and a counterweight connected to the beam guide.
Copending application ‘061 does not disclose wherein the deflection mirror is fixed to the beam guide or to the hollow spindle.
Birkle teaches wherein the deflection mirror is fixed to the hollow spindle (Birkle; Fig. 6; oblique mirror surface 55 is fixed to the hollow spindle 41).
It would have been obvious to one having ordinary skill at the effective filing date of the invention to modify the relative mounting configuration of the deflection mirror and the hollow spindle as taught by Copending application ‘061 so that the deflection mirror is fixed to the hollow spindle as taught by Birkle for the purpose of allowing the mirror to rotate with the spindle and to provide a wider field of view for scanning.
Regarding claims 4 and 17-23, copending application ‘061 discloses the claimed configuration and functionalities of the deflection mirror, the beam guide, a counterweight, an inclined end face, pockets, a screw bore, a reflection-reducing coating, a protective glass, a seal, a material with a lower specific weight than aluminum, and silicon carbide.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 4, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over foreign patent document Birkle DE3601442 in view of Mori et al. US20110235018 and Williamson US4384198.
Regarding independent claim 1, Birkle discloses, in Figures 1 and 6,
A laser scanner (Birkle; Fig. 1 and 6; page 4: “Fig. 6 shows a practical embodiment for realizing the example shown in Fig. 1”) comprising a laser head (Birkle; laser light source 2) for emitting a measurement beam (Birkle; polarized light beam 3) of a rotating deflection unit (Birkle; Fig. 6; the assembly of 38, 39, 40, 41, 42, 42, 44, 54, and 55) driven by a drive (Birkle; electric motor 38) for deflecting the measurement beam in a direction of a measuring object (Birkle; Fig. 1; object 11), a detector module (Birkle; photoelectric converter; page 4: “The transmission light collected by this collimator 12 is applied to a photoelectric converter (not shown) and evaluated there.”) for detecting a reception/measurement beam (Birkle; polarized light beam 3) reflected by the measuring object, and a control and evaluation unit (Birkle; photoelectric evaluation circuit; page 4: “When the autocollimation principle is used, the light beam reflected by the object 11 can be reflected back via the same optical systems, including the deflecting optics 5 , and can be masked out in the mirror system 4 and fed to the aforementioned photoelectric evaluation circuit.”) for signal processing, the rotating deflection unit having a hollow spindle (Birkle; hollow spindle 41), which carries a to which a deflection mirror (Birkle; oblique mirror surface 55) is associated for deflecting the reception/measurement beam in the direction of or from an outlet window (Birkle; the window that is occupied by the translucent cover 45) held on a rotor housing (Birkle; housing 6), wherein the deflection mirror is fixed to the or to the hollow spindle (Birkle; oblique mirror surface 55 is fixed to the hollow spindle 41) (see Birkle’s labeled Figure 6).
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Birkle’s labeled Figure 6.
Birkle does not disclose the rotating deflection unit having a hollow spindle, which carries a beam guide to which a deflection mirror is associated for deflecting the reception/measurement beam in the direction of or from an outlet window held on a rotor housing, wherein the deflection mirror is fixed to the beam guide or to the hollow spindle; wherein the deflection mirror is located between the beam guide and a counterweight connected to the beam guide, the counterweight being configured to balance this arrangement.
Mori teaches a beam guide (Mori; Fig. 2; hollow cylindrical guide member 9d; [0057] “hollow cylindrical guide member 9d for guiding the measurement light deflected by the first deflecting mirror 9a to the space to be measured”) to which a deflection mirror (Mori; first deflecting mirror 9a) is associated for deflecting the reception/measurement beam (Mori; [0052] measurement light emitted along light paths La and Lb) in the direction of or from an outlet window (Mori; light-transmissive optical window 2a) held on a rotor housing (Mori; rear housing 23).
It would have been obvious to one having ordinary skill at the effective filing date of the invention to modify the rotating deflection unit as taught by Birkle to include a beam guide as taught by Mori for the purpose of improving the guiding/directing of measurement light (Mori; [0057] “hollow cylindrical guide member 9d for guiding the measurement light deflected by the first deflecting mirror 9a to the space to be measured”).
Modified Birkle teaches wherein the deflection mirror (Birkle; oblique mirror surface 55) is located between the beam guide (Mori; Fig. 2; hollow cylindrical guide member 9d) and the beam guide.
Modified Birkle does not teach wherein the deflection mirror is located between the beam guide and a counterweight connected to the beam guide, the counterweight being configured to balance this arrangement.
Williamson teaches a counterweight connected to the beam guide, the counterweight being configured to balance this arrangement (Williamson; Fig. 2; col. 3:45-48 counterweight 40 for mirrors 39/41 and is arranged so that “Counterweight 40 does not interfere with laser beam 15 during rotation.”; col. 3:61-62 counterweight 40 provides dynamic balancing).
It would have been obvious to one having ordinary skill at the effective filing date of the invention to modify the mirror and beam guide configuration as taught by Modified Birkle to comprise a counterweight as taught by Williamson for the purpose of providing dynamic balancing while not interfering with the laser beam during rotation (Williamson; Fig. 2; col. 3:45-48 counterweight 40 for mirrors 39/41 and is arranged so that “Counterweight 40 does not interfere with laser beam 15 during rotation.”; col. 3:61-62 counterweight 40 provides dynamic balancing).
Regarding claim 4, Modified Birkle teaches the invention substantially the same as described above, and The laser scanner according to claim 1, wherein the deflection mirror (Birkle; oblique mirror surface 55) is located on an inclined end face of the beam guide (Mori; Fig. 2; hollow cylindrical guide member 9d; the inclined end face of the beam guide 9d is located at the interface between the guide 9d and the first deflecting face 91 of 9a(91) and matches the corresponding inclined surface 91 which is inclined relative to second deflecting face 92 of 9a(92)).
Regarding claim 6, Modified Birkle teaches the invention substantially the same as described above, and The laser scanner according to claim 2, wherein the counterweight (Birkle; prism 47 is plate-shaped by having a flat prism face/surface) and the beam guide (Mori; Fig. 2; hollow cylindrical guide member 9d is web-shaped in a similar fashion as instant applicant’s counterweight 58 in Figure 4 which shows a single hole in the middle) are plate- or web-shaped.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birkle in view of Mori and Williamson as applied to claim 1 above, and further in view of Karasaki et al. US20020196512.
Regarding claim 3, Modified Birkle teaches the invention substantially the same as described above, and The laser scanner according to claim 1.
Modified Birkle is silent regarding wherein fasteners of the counterweight pass through the deflection mirror.
Karasaki teaches fasteners pass through the deflection mirror (Karasaki; Fig. 1; [0069] screws pass through optical mirror 10 at screw holes 13).
It would have been obvious to one having ordinary skill at the effective filing date of the invention to modify the coupling of the counterweight with the deflection mirror as taught by Modified Birkle to include fasteners that pass through the mirror as taught by Karasaki for the purpose of providing a means for assembly and disassembly for mirror repair/maintenance purposes.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birkle in view of Mori and Williamson as applied to claim 1 above, and further in view of Staunton US3254556.
Regarding claim 17, Modified Birkle teaches the invention substantially the same as described above, and The laser scanner according to claim 1.
Modified Birkle does not teach wherein pockets that lie in a stray light beam path are arranged on the beam guide for minimizing stray light.
Staunton teaches pockets that lie in a stray light beam path are arranged on the beam guide for minimizing stray light (Staunton; col. 4:34-35 “pocket which forms an effective light trap”; col. 5:26-27 “to catch and suppress scattered light”).
It would have been obvious to one having ordinary skill at the effective filing date of the invention to modify the beam guide as taught by Modified Birkle to include pockets as taught by Staunton for the purpose of providing an “effective light trap” and “to catch and suppress scattered light” (Staunton; col. 4:34-35 “pocket which forms an effective light trap”; col. 5:26-27 “to catch and suppress scattered light”).
Regarding claim 18, Modified Birkle teaches the invention substantially the same as described above, and The laser scanner according to claim 1, wherein the deflection mirror (Birkle; oblique mirror surface 55) is located on an inclined end face of the beam guide (Mori; Fig. 2; hollow cylindrical guide member 9d; the inclined end face of the beam guide 9d is located at the interface between the guide 9d and the first deflecting face 91 of 9a(91) and matches the corresponding inclined surface 91 which is inclined relative to second deflecting face 92 of 9a(92)).
Modified Birkle does not teach wherein at least one pocket is formed on the beam guide, wherein the at least one pocket is arranged in a stray beam path, wherein the at least one pocket is arranged on the beam guide for minimizing stray light, and wherein the at least one pocket opens into an inclined end face of the beam guide.
Staunton teaches wherein at least one pocket is formed on the beam guide, wherein the at least one pocket is arranged in a stray beam path, wherein the at least one pocket is arranged on the beam guide for minimizing stray light (Staunton; col. 4:34-35 “pocket which forms an effective light trap”; col. 5:26-27 “to catch and suppress scattered light”).
It would have been obvious to one having ordinary skill at the effective filing date of the invention to modify the beam guide as taught by Modified Birkle to include pockets as taught by Staunton for the purpose of providing an “effective light trap” and “to catch and suppress scattered light” (Staunton; col. 4:34-35 “pocket which forms an effective light trap”; col. 5:26-27 “to catch and suppress scattered light”). Doing so would yield the pocket opens into the inclined end face of the beam guide because the inclined end face is the entrance to the beam guide for the stray light to enter through.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birkle in view of Mori, Williamson, and Staunton as applied to claim 17 above, and further in view of Kramer US20130250302.
Regarding claim 17, Modified Birkle teaches the invention substantially the same as described above, and The laser scanner according to claim 17, wherein the pockets (Staunton; col. 4:34-35 “pocket which forms an effective light trap”; col. 5:26-27 “to catch and suppress scattered light”).
Modified Birkle does not teach wherein the pockets are provided with a reflection-reducing coating.
Kramer teaches a reflection-reducing coating (Kramer; [0037] “black coating” and “The sensor preferably comprises an optical trap to at least partially absorb reflections of the transmitted light beam at the front screen.”).
It would have been obvious to one having ordinary skill at the effective filing date of the invention to modify the pockets as taught by Modified Birkle to include a reflection-reducing coating as taught by Kramer to enhance the pocket’s ability as a light trap because a black coating absorbs reflections (Kramer; [0037] “The sensor preferably comprises an optical trap to at least partially absorb reflections of the transmitted light beam at the front screen.”).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birkle in view of Mori and Williamson as applied to claim 1 above, and further in view of Matsas US3584227 and Burch et al. US3916195.
Regarding claim 21, Modified Birkle teaches the invention substantially the same as described above, and The laser scanner according to claim 1, wherein in a region between a protective cover (Birkle; translucent cover 45) of the outlet window (Birkle; the window that is occupied by the translucent cover 45) and the beam guide (Mori; Fig. 2; hollow cylindrical guide member 9d).
Modified Birkle does not teach wherein in a region between a protective glass of the outlet window and the beam guide a seal is provided, along which the outlet window rests.
Matsas teaches a protective glass of the outlet window (Matsas; Fig. 2; outer glass window 9; col. 1:54-55 “protecting the lens system”).
It would have been obvious to one having ordinary skill at the effective filing date of the invention to modify the material of the protective cover as taught by Modified Birkle to be glass as taught by Matsas for the purpose of protecting the lens/mirror system by providing sufficient strength and rigidity in the measurement environment (Matsas; col. 1:54-55 “protecting the lens system”).
Modified Birkle does not teach wherein in a region between a protective glass of the outlet window and the beam guide a seal is provided, along which the outlet window rests.
Burch teaches a seal is provided, along which the outlet window rests (Burch; col. 4:19-24 seals provide a gas-tight sealing).
It would have been obvious to one having ordinary skill at the effective filing date of the invention to modify the region as taught by Modified Birkle to include a seal as taught by Burch for the purpose of sealing against dust/dirt/debris which protects the internal components (Burch; col. 4:19-24 seals provide a gas-tight sealing).
Claim(s) 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birkle in view of Mori and Williamson as applied to claim 1 above, and further in view of Roper et al. US9086229.
Regarding claim 22, Modified Birkle teaches the invention substantially the same as described above, and The laser scanner according to claim 1, wherein the deflection mirror consists of a material (Birkle; the material of oblique mirror surface 55).
Modified Birkle is silent regarding wherein the deflection mirror consists of a material with a lower specific weight than aluminum.
Roper teaches mirror consists of a material with a lower specific weight than aluminum (Roper; col. 1:52-53 “silicon carbide mirrors”; col. 1:38 providing “high stiffness, light weight and/or minimum mass”; col. 1:45-49 “In some current designs, low mass is achieved by making the structures using materials with physical properties favorable for mirror production. This includes mirror structures made from silicon carbide”).
It would have been obvious to one having ordinary skill at the effective filing date of the invention to modify the mirror material as taught by Modified Birkle to consist of silicon carbide as taught by Roper for the purpose of providing a relatively lighter weight (Roper; col. 1:38 providing “high stiffness, light weight and/or minimum mass”; col. 1:45-49 “In some current designs, low mass is achieved by making the structures using materials with physical properties favorable for mirror production. This includes mirror structures made from silicon carbide”). Doing so would yield a material with a lower specific weight than aluminum because silicon carbide has a specific weight that is lower than aluminum which is consistent with instant applicant’s specification on page 12/17 at lines 7-10 that recites “For minimizing the moment of inertia and the overall weight, the mirror 46 is not made of aluminum in the conventional manner, but of a lighter material such as silicon carbide.”.
Regarding claim 23, Modified Birkle teaches the invention substantially the same as described above, and The laser scanner according to claim 22, wherein the deflection mirror consists of silicon carbide (Roper; col. 1:52-53 “silicon carbide mirrors”; col. 1:38 providing “high stiffness, light weight and/or minimum mass”; col. 1:45-49 “In some current designs, low mass is achieved by making the structures using materials with physical properties favorable for mirror production. This includes mirror structures made from silicon carbide”).
Allowable Subject Matter
Regarding claim 19, the claim would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) is filed to overcome the double patenting rejection.
Claims 5, 7, 14-16, and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 5, in combination with the other structures required by the base claim and intervening claims, the prior art fails to disclose, teach, suggest, or render obvious the claimed configuration of the rotor housing is attached to a front flange of the hollow spindle. It would not be obvious to modify the spindle of Birkle to comprise a flange that attaches to the rotor housing because doing so would prevent the spindle from rotating/spinning since the housing is held relatively static.
Regarding claim 7, in combination with the other structures required by the base claim and intervening claims, the prior art fails to disclose, teach, suggest, or render obvious the claimed configuration of “the front flange carries drive means.”. It would not be obvious to modify the front flange to carry drive means because Birkle has an electric motor 38 that drives the spindle 41 and modifying the flange to further comprise drive means would interfere with the operation of the motor 38.
Regarding claim 15, in combination with the other structures required by the base claim and intervening claims, the prior art fails to disclose, teach, suggest, or render obvious the claimed configuration of “the front flange carries drive means.”. It would not be obvious to modify the front flange to carry drive means because Birkle has an electric motor 38 that drives the spindle 41 and modifying the flange to further comprise drive means would interfere with the operation of the motor 38.
Regarding claim 19, in combination with the other structures required by the base claim and intervening claims, the prior art fails to disclose, teach, suggest, or render obvious the claimed configuration of wherein at least one pocket opens into a screw bore because the prior art does not teach pockets on the beam guide with a screw bore and at least one pocket that opens to the screw bore.
Child claims 14 and 16 are also allowable based on their dependency.
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 JONATHAN MALIKASIM whose telephone number is (313)446-6597. The examiner can normally be reached M-F; 8 am - 5 pm (CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yuqing Xiao can be reached at 571-270-3603. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN MALIKASIM/ Primary Examiner, Art Unit 3645 7/27/26
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