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 .
Status Of Claims
Claims 1-19, received 4/27/2023, are pending for examination.
If applicant is aware of any relevant prior art, or other co-pending application not already of record, he/she is reminded of his/her duty under 37 CFR 1.56 to disclose the same.
Information Disclosure Statement
The information disclosure statement filed 4/27/2023 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because in accordance with 37 CFR 1.98(b)(5) “Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.” It has been placed in the application file, but the cross-through information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “80” has been used to designate both “the outer edge” and “the concave surface” (see paragraph [0066]). 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "80" and "90" have both been used to designate “the outer edge” (see paragraph [0066]). 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 370 (fig. 9). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Specification
The abstract of the disclosure is objected to because multiple instances of a series of dashes on lines 4 and 5, and due to the use of legal phraseology in lines 2 and 6 (e.g. comprises). Correction is required. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claims 7-18 are objected to because of the following informalities: in claim 7 “second coating disposed the outer edge” should be corrected. Appropriate correction is required.
Claims 8-18 are objected to for inheriting the same informalities through their dependency from claim 7.
Claims 6, 11 and 18 are objected to because of the following informalities: it is interpreted that in claims 6, 11 and 18, “a first narrow band of light” should be changed to “a second narrow band of light”. Appropriate correction is required.
Claims 17 and 18 are objected to because of the following informalities: it is interpreted that in claims 17 and 18, “light wavelengths is between” should be changed to “light wavelengths between”. 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 1-6, 8, 17, 19 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 lens” on lines 7, 9 and 14. There is insufficient antecedent basis for this limitation in the claim. Therefore the intended scope of the claim cannot be determined.
Claims 2-6 are rejected for inheriting the same deficiencies of the claims from which they depend.
Claim 8 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. Claim 8 appears to conflict with claim 7 since claim 7 requires a first coating disposed on an inner concave surface, but claim 8 requires that the inner surface is a center cavity of the ring, and therefore there would be no first coating. Therefore the intended metes and bounds of claim 8 cannot be determined.
Claim 17 recites the limitation “the first dielectric coating”, which is interpreted to be intended to refer either back to “the first dielectric film” or “the first coating”. There is insufficient antecedent basis for this limitation in the claim. Therefore the intended scope of the claim cannot be determined.
Claim 19 recites the limitation “the lens” on lines 10 and 11. There is insufficient antecedent basis for this limitation in the claim. Therefore the intended scope of the claim cannot be determined.
Claim 19 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: whether the “disk optical element” of claim 19 is a hollow ring (e.g. as shown in figure 3), or a lens having an inner concave surface (e.g. as shown in figure 1). Claim 19 recites “a disk optical element”, but also refers to the disk optical element as “a ring”. The interpretation of “a ring” includes a center of the ring shaped disk optical element being hollow/including a void. However, additional portions of claim 19 recite “a concave surface” and “the original concave surface” and refer to “the lens”. It is not clear how the disk optical element may be considered simultaneously both a lens having a concave surface (e.g. as shown in figure 1), and a ring shaped disk element which includes a center void (e.g. as shown in figure 3). Therefore, the intended scope of claim 19 cannot be determined.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Paige, U.S. Patent Number 6,327,806 B1, of record (hereafter Paige) in view of Montelin et al., U.S. Patent Number 5,440,387, of record (hereafter Montelin).
Regarding claim 7, Paige discloses a sighting device to assist a shooter in aiming at a target (see at least figures 1 and 5-6), the sight device comprising:
a frame housing (see at least element 31) coupled to a disk optical element (see at least element 1), wherein the disk optical element comprises:
a concave surface (see at least element 3) comprising an inner surface (see at least figures 1, 3 and 4, the inner part of element 3), an outer surface (see at least figures 3 and 4, the more distal radial part of element 3), and an outer edge (see at least figure 3, left, right and bottom chopped off parts of element 3);
the outer edge of the concave surface comprising a curvature that is less than that of a curvature of the concave surface (see at least figure 3, left, right and bottom chopped off parts of element 3);
a first coating disposed on the inner concave surface (see at least element 33);
a second coating disposed on the outer edge of the concave surface (seat least element 34, and column 8, lines 5-28, “anti-reflective coating”); and
an light source coupled to a mount located at a point of the disk optical element wherein the emission of light from the light source faces the disk optical element (see at least element 2).
Paige does not specifically disclose that the light source is located at a focal point of the disk optical element.
However, Montelin teaches a sighting device wherein a light source is mounted at a focal point of a concave optical element (see at least figure 1 and the abstract of Montelin).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the mount location of the light source of Paige to include the teachings of Montelin so that the light source is coupled to a mount located at a focal point of the disk optical element, for the purpose of mounting the light source in a desired location for illuminating a concave reflective surface of the optical sighting device while having a reasonable expectation for success.
Regarding claim 14, Paige in view of Montelin discloses that the disk optical element is parabolic (see at least column 8, lines 29-39 of Paige).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Paige, U.S. Patent Number 6,327,806 B1, of record (hereafter Paige) in view of Montelin et al., U.S. Patent Number 5,440,387, of record (hereafter Montelin) as applied to claim 7 above, and further in view of Grace, U.S. Patent Application Publication Number 2020/0271419 A1, of record (hereafter Grace).
Regarding claim 12, Paige in view of Montelin does not specifically disclose that the light source comprises a fiber optic light collector.
However, Grace teaches a curved optical sighting device wherein the light source comprises a fiber optic light collector (see at least paragraphs [0061], [0090]).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the light source of the sighting device of Paige and Montelin to include the teachings of Grace so that the light source comprises a fiber optic light collector, for the purpose of using a known type of light collecting optical element to collect and transmit light while having a reasonable expectation for success.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Paige, U.S. Patent Number 6,327,806 B1, of record (hereafter Paige) in view of Montelin et al., U.S. Patent Number 5,440,387, of record (hereafter Montelin) as applied to claim 7 above, and further in view of Crispin, U.S. Patent Application Publication Number 2018/0128574 A1, of record (hereafter Crispin).
Regarding claim 13, Paige in view of Montelin does not specifically disclose that the disk optical element is spherical.
However, Crispin teaches a curved optical sighting device wherein the disk optical element is spherical (see at least paragraphs [0026], [0027], [0033], [0043], [0045]).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the light source of the sighting device of Paige and Montelin to include the teachings of Crispin so that the disk optical element is spherical, for the purpose of decreasing production costs and/or complexity.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Paige, U.S. Patent Number 6,327,806 B1, of record (hereafter Paige) in view of Montelin et al., U.S. Patent Number 5,440,387, of record (hereafter Montelin) and McCabe et al., U.S. Patent Application Publication Number 2013/0141693 A1, of record (hereafter McCabe).
Regarding claim 19, Paige discloses a method of manufacturing a sighting device to assist a shooter in aiming at a target (see at least figures 1 and 5-6), the method comprising:
creating a disk optical clement with a concave surface (see at least element 3), wherein the disk optical element comprises a ring (see at least figures 2 and 3, an outer circumferential surface);
reducing a curvature of the ring to less than that of the original concave surface (see at least figure 3, the removed portions of element 1/3);
coating the ring with a dichroic film reflecting a narrow band of light wavelengths (see at least column 3, lines 50-55);
housing the disk optical element within a frame body (see at least element 3); and
providing a light source located at a point of the lens wherein the emission of light from the light source faces the lens, and wherein a wavelength of the light matches the narrow band of light wavelength from the dichroic film (see at least column 3, lines 50-55, and element 2).
Paige does not specifically disclose that the light source is located at a focal point of the disk optical element.
However, Montelin teaches a sighting device wherein a light source is mounted at a focal point of a concave optical element (see at least figure 1 and the abstract of Montelin).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the mount location of the light source of Paige to include the teachings of Montelin so that the light source is coupled to a mount located at a focal point of the disk optical element, for the purpose of mounting the light source in a desired location for illuminating a concave reflective surface of the optical sighting device while having a reasonable expectation for success.
Paige and Montelin does not specifically disclose that the disk optical element is formed/shaped or reduced by grinding, or that the narrow band film is a dielectric film.
However, McCabe teaches that it is known to shape lens elements by grinding methods, and that it is well-known to use dielectric stacks as filtering films (see at least paragraphs [0167], [0300], [0336], [0342]).
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to modify the shape and curvature of the disk optical element by grinding, and for the light wavelength film to include dielectric layers, for the purpose of using well-known lens forming and shaping methods and well-known types of narrow band wavelength selective filters, as are well-known in the optical arts, while having a reasonable expectation for success.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-6 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-6 of prior U.S. Patent No. 11,644,275. This is a statutory double patenting rejection.
Regarding claim 1 of the instant application, see claim 1 of U.S. Patent 11,644,275 with discloses all of the same limitations.
Regarding claim 2 of the instant application, see claim 2 of U.S. Patent 11,644,275 with discloses all of the same limitations.
Regarding claim 3 of the instant application, see claim 3 of U.S. Patent 11,644,275 with discloses all of the same limitations.
Regarding claim 4 of the instant application, see claim 4 of U.S. Patent 11,644,275 with discloses all of the same limitations.
Regarding claim 5 of the instant application, see claim 5 of U.S. Patent 11,644,275 with discloses all of the same limitations.
Regarding claim 6 of the instant application, see claim 6 of U.S. Patent 11,644,275 with discloses all of the same limitations.
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.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 11,644,275. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are merely broader than or an obvious variation of claim 18 of U.S. Patent No. 11,644,275.
Regarding claim 19 of the instant application, see claim 18 of U.S. Patent 11,644,275 with discloses nearly identical limitations.
Allowable Subject Matter
Claims 9-11, 15-16, 18 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEREK S. CHAPEL whose telephone number is (571)272-8042. The examiner can normally be reached M-F 9:30am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone B. Allen can be reached at 571-272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Derek S. Chapel/Primary Examiner, Art Unit 2872 9/24/2025
Derek S. CHAPEL
Primary Examiner
Art Unit 2872