DETAILED ACTION
Status of the Application
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
This action is in response to the applicant’s filing on October 11, 2023. Claim 10 – 29 are pending and examined below.
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 11 – 21 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 pre-AIA the applicant regards as the invention.
Claims 11 – 19 depend on claims that have been canceled.
In claims 20 – 21, the phrase “the laser pattern” lacks antecedent basis.
Any claims not specifically mentioned herein above, but nonetheless rejected as being indefinite, are rejected for incorporating the errors of their respective base claims by dependency.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 22 is rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2013/0144474 A1 to Ricci (herein after “Ricci publication").
Note: Text written in bold typeface is claim language from the instant application.
Texts written in normal typeface are comments made by the Examiner and/or passages from the prior art reference(s).
As to claim 22,
the Ricci publication discloses a vehicle intent indication system (see FIG. 1 and Abstract for “a perceptible output control system for a vehicle that can perform a number of different operations that are particularly useful for electric vehicles”), comprising:
a sensor configured to monitor an operating environment of a vehicle (see ¶15, where “[t]he perceptible output is in response to detection, by an imaging sensor, of an object in a probable path of the vehicle when the vehicle is in motion”; see also ¶45 for “one or cameras or other imaging sensors (which commonly convert an optical image into an electronic signal but may include other devices for detection objects such as an electromagnetic radiation emitter/receiver that emits electromagnetic radiation and receives electromagnetic waves reflected by the object) to sense objects, such as other vehicles and pedestrians and optionally determine the distance, trajectory and speed of such objects, in the vicinity or path of the vehicle, and other sensors known to those of skill in the vehicle art”);
a digital display configured to display a pattern visible to a person in the operating environment, the digital display comprising light emitting components configured to be selectively illuminated to display the pattern (see ¶70 for “[a] visually perceptible output, such as a strobed, flashed, or varied or constant light output, can be emitted (for viewing by the driver and/or nearby drivers and pedestrians) with synthesized sound when an object, such as a pedestrian, is in the path of the vehicle”); and
a controller (124) configured to:
determine a trajectory of the vehicle (see ¶44, where “FIG. 1 illustrates . . . vehicle 100 includes, among many other components common to vehicles . . . a satellite positioning system receiver 156 (e.g., a Global Positioning System ("GPS") (US), GLONASS (Russia), Galileo positioning system (EU), Compass navigation system (China), and Regional Navigational Satellite System (India) receiver)” which are commonly used to determine a trajectory of the vehicle);
determine whether an object is within the trajectory of the vehicle based on information received from the sensor (see ¶15 and ¶45); and
in response to determining that the object is within the trajectory of the vehicle, cause the light emitting components to be selectively illuminated to display the pattern (see ¶70 for “[a] visually perceptible output, such as a strobed, flashed, or varied or constant light output, can be emitted (for viewing by the driver and/or nearby drivers and pedestrians) with synthesized sound when an object, such as a pedestrian, is in the path of the vehicle”),
wherein the pattern is configured to inform the person in the operating environment of an intent of the vehicle to perform a driving maneuver (see ¶70, where the visually perceptible output, such as a strobed, flashed, or varied or constant light output, can be emitted (for viewing by the driver and/or nearby drivers and pedestrians) . . . [to] warn the pedestrian of the oncoming vehicle”)(Emphasis added).
Claim 28 is rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by U.S. Patent No. 5,132,666 A to Fahs (herein after "Fahs patent").
Note: Text written in bold typeface is claim language from the instant application.
Texts written in normal typeface are comments made by the Examiner and/or passages from the prior art reference(s).
As to claim 28,
the Fahs patent discloses a vehicle (30)(see FIG. 3 and Col. 3, lns 31 – 34 for “an automobile 30”), comprising:
an input device (10) configured to receive inputs from a user of the vehicle corresponding to an intended driving maneuver of the vehicle (see Col. 2, lns 47 – 51, where “[t]he display is controllable by the operator of the vehicle, and can function to provide advertisements (political or otherwise), or individual messages [that include intended driving maneuvers of the vehicle] . . .”; see also Col. 4, lns 29 – 41, where “[t]o operate the electronic display system with an electronic message that can be scrolled, flashed, animated, etc., the program unit 118 is connected to CPU 106. Program unit 118 includes a keyboard, or a series of program selector push buttons mounted on the dashboard of the vehicle, not shown. The user enters one or more messages into the CPU 106, via said keyboard or push buttons. The system is provided with flexibility to allow the same message programmed by a program unit 118 to be displayed on either one or both of the screens 9a and 9b. Alternatively, by providing two programs running simultaneously, a multiplicity of messages may be displayed simultaneously”)(Emphasis added);
a display (9a, 9b, 16) disposed on an exterior of the vehicle and configured to display a pattern visible to a person in an exterior environment of the vehicle (see FIGS. 2 – 3 and Col. 1, lns 65 – 67 and Col. 2, lns 38 – 41, where an electronic display system is mounted to the roof of a vehicle and configured to display a vehicle-controlled message; see also Col. 2, ln 60 through Col. 3, ln 7, where “[s]ection 16 comprises a variable display having two electronic screens 9a and 9b. These electronic screens comprise, for example, LED units that can be electrically programmed to provide a message or advertisement, or graphic picture. The programmed message can be flashed or scrolled across the screens, or can comprise animated, action-type information”)(Emphasis added), the display (9a, 9b, 16) comprising a light emitting component (“LED”) configured to be selectively illuminated to display the pattern (see FIG. 2 and Col. 3, lns 38 – 47 for a block diagram of the electrical control circuit . . . The entire electronic display system is shown generally at reference numeral 100. The unit that is mounted usually on the roof of a vehicle is shown generally at reference numeral 102. In the preferred embodiment, two side display screens 9b and 9d are provided, although four screens can also be used to wrap around the unit. They are light emitting diode units having a matrix of LED elements, one LED per pixel”; see also Col. 4, lns 29 – 41 and Col. 6, lns 30 – 35, where dash mounted programming means under control of the driver of the vehicle is operatively connected to the variable display 16 for providing selected message to the variable display 9a, 9b)(Emphasis added);
an audio emitter1 (13, 122) configured to emit a sound audible to the person in the exterior environment of the vehicle (see Col. 3, lns 8 – 10, where a “speaker 13 on the side of the fixed display section 11 can be used to convey audible messages in connection with the displays 11 and 16”; see also Col. 4, lns 15 – 18 for “[a] public address system 120 [that can] be provided to control audio speakers 122, if desired”); and
a controller (106) configured to:
identify an intended driving maneuver of the vehicle (see ¶18 and ¶20 – ¶24 for when the controller identifies an intended driving maneuver of the vehicle);
selectively illuminate the light emitting component to display the pattern based on the intended driving maneuver of the vehicle (see FIG. 1 and ¶16 – ¶17, where “[t]he dynamic signal unit 10 provides a plurality of dynamic signals relating to various instant driving information of the vehicle . . . [For instance, inputs from the user may include] a turn signal 11, a turn angle signal 12, a brake signal 13, [and] a temporary stop signal 14 . . . The turn signal 11 is provided by a turn switch of the vehicle. The turn angle signal 12 is provided by a turn angle sensor of the vehicle for detecting a turn direction and a turn angle of a steering wheel of the vehicle. The brake signal 13 is provided by a force sensor of the vehicle for detecting an operating (pressing) force acting on a brake of the vehicle. The temporary stop signal 14 is provided by a temporary stop switch of the vehicle”; see also ¶20 – ¶24); and
emit the sound based on the intended driving maneuver of the vehicle (see also Col. 4, lns 15 – 18 for “[a] public address system 120 [that can] be provided to control audio speakers 122, if desired”),
wherein the pattern and the sound are configured to inform the person in the exterior environment of the intended driving maneuver of the vehicle (see Col. 3, lns 8 – 10, where the “speaker 13 on the side of the fixed display section 11 can be used to convey audible messages in connection with the displays 11 and 16”)(Emphasis added), and
wherein the display is distinct from a turn signal of the vehicle (see FIGS. 1 and 3).
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.
Claims 10 – 12, 14 – 18 and 23 – 26 are rejected under 35 U.S.C. 103 as being unpatentable over the Fahs patent in view of U.S. Patent No. 8,606,430 B2 to Seder et al. (herein after “Seder et al. patent").
Note: Text written in bold typeface is claim language from the instant application.
Texts written in normal typeface are comments made by the Examiner and/or passages from the prior art reference(s).
As to claim 10,
the Fahs patent discloses a vehicle intent indication system (9a, 9b, 10, 16, 100)(see FIGS. 1 – 3), comprising:
a display (9a, 9b, 16) configured to display a pattern visible to a person in the operating environment of the vehicle, the display comprising light emitting components (“LED”) configured to be selectively illuminated to display the pattern (see FIGS. 2 – 3 and Col. 1, lns 65 – 67 and Col. 2, lns 38 – 41, where an electronic display system is mounted to the roof of a vehicle and configured to display a vehicle-controlled message; see also Col. 2, ln 60 through Col. 3, ln 7, where “[s]ection 16 comprises a variable display having two electronic screens 9a and 9b. These electronic screens comprise, for example, LED units that can be electrically programmed to provide a message or advertisement, or graphic picture. The programmed message can be flashed or scrolled across the screens, or can comprise animated, action-type information”)(Emphasis added),
wherein the pattern is configured to inform the person in the operating environment of the vehicle of an intent of the vehicle to perform a driving maneuver (see Col. 2, lns 47 – 51, where “[t]he display is controllable by the operator of the vehicle, and can function to provide advertisements (political or otherwise), or individual messages [directed at person in the operating environment of the vehicle and include intended driving maneuvers of the vehicle] . . .”). (Emphasis added.)
The Fahs patent, however, fails to specifically disclose
a vehicle intent indication system, comprising:
a sensor configured to detect an object in an operating environment of a vehicle; and
a controller configured to:
receive information from the sensor indicating that the object has been detected in the operating environment; and
in response to receiving the information from the sensor, cause the light emitting components to be selectively illuminated to display the pattern.
The Seder et al. patent discloses a system for displaying a graphic that describes a desired communication upon a substantially transparent screen of a vehicle. The system includes monitoring the desired communication, monitoring an external presentation mode to present the desired communication, determining the graphic describing the desired communication, registering a location of the graphic upon the substantially transparent screen to be communicated outside of the vehicle, wherein displaying the graphic upon a substantially transparent screen comprises one of light emitting particles or microstructures over a predefined region of the screen permitting luminescent display while permitting transmission therethrough. (See Abstract.)
The Seder et al. patent “includes a programmable processor and programming to monitor various inputs and determine what information is appropriate to display upon the substantially transparent screen describing the desired communication.” (See Col. 2, lns 34 – 38.)
“[T]he desired communication to be presented can include personal communications. Personal communications can include customized insignias where the graphic describing the customized insignia includes a customized graphic . . . (See Col. 5, lns 58 – 62.)
“If the one or more of the in-vehicle sensors determine that vehicle drivability may be threatened, a warning graphic describing a warning message may be utilized by the EVS system manager 110 to display the warning graphic upon a window of the vehicle. For example, referring to FIG. 3A, the warning graphic 306 registered upon the rear window 310 of the vehicle 300 can include a textual message communicating to vehicles traveling behind the vehicle that the front passenger-side tire is flat. The warning graphic can be determined to flash in bright colors to gain the attention of any vehicle that may be trailing behind the vehicle to warn the trailing vehicle of the flat tire.” (See Col. 6, ln 57 through Col. 7, ln 2.)(Emphasis added.)
“The EVS system manager 110 further monitors the external presentation mode configured to present the desired communication. An input corresponding to the desired communication is received by the EVS system manager 110 and the external presentation mode to present the desired communication is activated based on the received input.” (See Col. 7, lns 13 – 18.)
“[T]he external presentation mode can be activated to present the desired communication based on detecting a pedestrian proximate to the vehicle. Pedestrian detection is known in the art and methods known in the art for detecting pedestrians include motion sensors, infrared sensors and radar sensors. For instance, a personal communication left by the operator of the vehicle can be displayed anytime a pedestrian is proximate to the vehicle allowing the graphic to only be displayed when somebody is proximate to the vehicle.” (See Col. 7, ln 66 through Col. 8, ln 8.)(Emphasis added.)
Such disclosure(s) suggest(s) a vehicle intent indication system, comprising:
a sensor configured to detect an object in an operating environment of a vehicle, and a controller configured to: receive information from the sensor indicating that the object has been detected in the operating environment; and in response to receiving the information from the sensor, cause the light emitting components to be selectively illuminated to display the pattern.
Based on a reasonable expectation of success, it would have been obvious to one having ordinary skill in the art before the time the invention was filed to modify and/or provide the Fahs patent with a sensor configured to detect an object in an operating environment of a vehicle, and a controller configured to: receive information from the sensor indicating that the object has been detected in the operating environment; and in response to receiving the information from the sensor, cause the light emitting components to be selectively illuminated to display the pattern, as suggested by the Seder et al. patent, in order to indicate instant driving information of the vehicle.
As to claim 11,
the Fahs patent discloses the pattern comprising one or more words that describe the driving maneuver. (See Col. 4, lns 29 – 41.)
As to claims 12 and 25,
the Fahs patent discloses the pattern comprising an arrow that indicates a direction of the driving maneuver (See Col. 2, lns 63 – 67, where “Section 16 comprises a variable display having two electronic screens 9a and 9b. These electronic screens comprise . . LED units that can be electrically programmed to provide a message or advertisement, or graphic picture”.)(Emphasis added.)
As to claims 14 and 26,
the Fahs patent, as suggested and modified by the Seder et al. patent (see Col. 7, ln 66 through Col. 8, ln 8, where “the external presentation mode can be activated to present the desired communication based on detecting a pedestrian proximate to the vehicle”), is considered to disclose the object detected by the sensor being the person in the operating environment of the vehicle.
As to claim 15,
the Fahs patent, as suggested and modified by the Seder et al. patent, is considered to disclose the sensor being further configured to determine a location of the object relative to the vehicle, and the controller being configured to cause the light emitting components to be selectively illuminated to display the pattern based on the location of the object relative to the vehicle. (See Col. 7, ln 67 through Col. 8, ln 8, where “the external presentation mode can be activated to present the desired communication based on detecting a pedestrian proximate to the vehicle. Pedestrian detection is known in the art and methods known in the art for detecting pedestrians include motion sensors, infrared sensors and radar sensors. For instance, a personal communication . . . by the operator of the vehicle can be displayed anytime a pedestrian is proximate to the vehicle allowing the graphic to only be displayed when somebody is proximate to the vehicle.”)
As to claim 16,
the Fahs patent discloses an input device (18) configured to receive inputs from a user of the vehicle, wherein the controller (106) is further configured to: receive information from the input device (18) associated with the inputs from the user; and cause the light emitting components (“LED”) to be selectively illuminated to display the pattern based on the information from the input device. (See FIG. 2; see also Col. 3, lns 54 – 58 and Col. 4, lns 29 – 41.)
As to claim 17,
the Fahs patent, as suggested and modified by the Seder et al. patent, is considered to disclose an audio emitter configured to emit a sound audible to the person in the operating environment of the vehicle, wherein the controller being further configured to: in response to receiving the information from the sensor, cause the audio emitter to emit the sound, and wherein the sound is configured to further inform the person in the operating environment of the vehicle of the intent of the vehicle to perform the driving maneuver. (See Col. 3, lns 8 – 10 of the Fahs patent for “[a] speaker 13 on the side of the fixed display section 11 can be used to convey audible messages in connection with the displays 11 and 16”; see also Col. 2, lns 34 – 38 of the Seder et al. patent which “includes a programmable processor and programming to monitor various inputs and determine what information is appropriate to display upon the substantially transparent screen describing the desired communication.”)(Emphasis added.)
As to claims 18 and 24,
the Fahs patent discloses that the sound comprises one or more words that describe the driving maneuver. (See Col. 4, lns 42 – 44, where words can be spoken into the microphone.)
As to claim 23,
the Fahs patent, as suggested and modified by the Seder et al. patent, is considered to disclose the driving maneuver being a maneuver where the vehicle continues on the trajectory of the vehicle.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over the Fahs patent in view of U.S. Patent Application Publication No. 2003/0147247 A1 to Koike (herein after "Koike publication").
Note: Text written in bold typeface is claim language from the instant application.
Texts written in normal typeface are comments made by the Examiner and/or passages from the prior art reference(s).
As to claim 13,
the modified Fahs patent discloses the invention substantially as claimed, except for
the driving maneuver being a future parking maneuver..
To avoid colliding with another object while parking, the Koike publication discloses “[a] beam radiator that radiates visible light beams having a predetermined wavelength onto a road surface to inform drivers of other vehicles of the existence of a self-owned vehicle”. (See Abstract.)
“FIG. 8 is an explanatory view showing how to set a position of a visible light pattern resulting from visible light beams radiated from each of the beam radiators 24 that are provided in the rear-left and rear-right portions of the vehicle body when the vehicle 22 moves backwards to be parked . . . As shown in FIG. 8, in the case where the driver shifts a shift lever into a parking position so that the vehicle 22 moves backwards to be parked, visible light beams are radiated from the beam radiators in the rear portion of the vehicle body such that visible light patterns having a constant length along a traveling locus along which the vehicle 22 is estimated to run are projected onto a road surface behind the vehicle 22” (See ¶71.)(Emphasis added.)
It should be noted that the sensed input is the driver shifting a shift lever into a parking position so that the vehicle 22 moves backwards to be parked. Accordingly, such disclosure suggests the driving maneuver being a future parking maneuver.
Based on a reasonable expectation of success, it would have been obvious to one having ordinary skill in the art before the time the invention was filed to further modify the Fahs patent so that the driving maneuver is a future parking maneuver, as suggested by the Koike publication, in order to avoid colliding with another object during parking.
Claims 19 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over the Ricci publication in view of U.S. Patent Application Publication No. 2003/0147247 A1 to Koike (herein after "Koike publication").
Note: Text written in bold typeface is claim language from the instant application.
Texts written in normal typeface are comments made by the Examiner and/or passages from the prior art reference(s).
As to claims 13, 19 and 29,
the Ricci publication discloses the invention substantially as claimed, except for
a laser emitter configured to emit a laser pattern onto a ground around the vehicle,
wherein the controller is further configured to:
in response to receiving the information from the sensor, cause the laser emitter to emit the laser pattern, and
wherein the laser pattern is configured to further inform the person in the operating environment of the vehicle of the intent of the vehicle to perform the driving maneuver.
The Koike publication discloses “[a] beam radiator that radiates visible light beams having a predetermined wavelength onto a road surface to inform drivers of other vehicles of the existence of a self-owned vehicle”. (See Abstract.)
“FIG. 8 is an explanatory view showing how to set a position of a visible light pattern resulting from visible light beams radiated from each of the beam radiators 24 that are provided in the rear-left and rear-right portions of the vehicle body when the vehicle 22 moves backwards to be parked . . . As shown in FIG. 8, in the case where the driver shifts a shift lever into a parking position so that the vehicle 22 moves backwards to be parked, visible light beams are radiated from the beam radiators in the rear portion of the vehicle body such that visible light patterns having a constant length along a traveling locus along which the vehicle 22 is estimated to run are projected onto a road surface behind the vehicle 22” (See ¶71.)(Emphasis added.)
It should be noted that the sensed input is the driver shifting a shift lever into a parking position so that the vehicle 22 moves backwards to be parked. Accordingly, such disclosure suggests a laser emitter configured to emit a laser pattern onto a ground around the vehicle, wherein the controller is further configured to: in response to receiving the information from the sensor, cause the laser emitter to emit the laser pattern, and wherein the laser pattern is configured to further inform the person in the operating environment of the vehicle of the intent of the vehicle to perform the driving maneuver.
Based on a reasonable expectation of success, it would have been obvious to one having ordinary skill in the art before the time the invention was filed to modify and/or provide the Ricci publication with a laser emitter configured to emit a laser pattern onto a ground around the vehicle, wherein the controller is further configured to: in response to receiving the information from the sensor, cause the laser emitter to emit the laser pattern, and wherein the laser pattern is configured to further inform the person in the operating environment of the vehicle of the intent of the vehicle to perform the driving maneuver, as suggested by the Koike publication, in order to avoid colliding with another object during parking.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over the Ricci publication in view of U.S. Patent Application Publication No. 2009/0013922 A1 to Lin (herein after "Lin publication").
Note: Text written in bold typeface is claim language from the instant application.
Texts written in normal typeface are comments made by the Examiner and/or passages from the prior art reference(s).
As to claims 20 and 21,
the modified Ricci publication discloses the invention substantially as claimed, except for
the laser pattern comprising one or more words that describe the driving maneuver and an arrow that indicates a direction of the driving maneuver.
Projecting a laser pattern onto a ground around the vehicle to communicate information is old and well-known, as demonstrated by the Lin publication who discloses a vehicle lighting system configured to project a predetermined pattern on the road surface by projecting light. (See FIG. 4 and ¶18 for “an arrow-like sign on the ground”; and see FIG. 5 and ¶19 for “a character” which can be used to form one or more words.) Such disclosure suggests the laser pattern comprising one or more words that describe the driving maneuver and an arrow that indicates a direction of the driving maneuver.
Based on a reasonable expectation of success, it would have been obvious to one having ordinary skill in the art before the time the invention was filed to further modify the Ricci publication so that the laser pattern comprises one or more words that describe the driving maneuver and an arrow that indicates a direction of the driving maneuver, as suggested by the Lin publication, in order to avoid colliding with another object on the road or during parking.
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 10 and 19 – 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 10, 11, 19 – 23 of U.S. Patent No. 9,333,908 (‘908 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other. For instance, instant claims 10, 17 and 19 – 21 are a broader recitation of claims 8, 10, 11, 19 – 22 of the ‘908 Patent, and instant claim 28 corresponds to claim 23 of the ‘908 Patent.
Claims 10 and 19 – 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 9,809,157 (‘157 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
Conclusion
Examiner's Note(s): The Examiner has cited particular paragraphs or columns and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested of the applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. SEE MPEP 2141.02 [R-07.2015] VI. PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert, denied, 469 U.S. 851 (1984). See also MPEP §2123.
In addition, disclosures in a reference must be evaluated for what they would fairly teach one of ordinary skill in the art. See In re Snow, 471 F.2d 1400, 176 USPQ 328 (CCPA 1973) and In re Boe, 355 F.2d 961, 148 USPQ 507 (CCPA 1966). Specifically, in considering the teachings of a reference, it is proper to take into account not only the specific teachings of the reference, but also the inferences that one skilled in the art would reasonably have been expected to draw from the reference. See In re Preda, 401 F.2d 825, 159 USPQ 342 (CCPA 1968) and In re Shepard, 319 F.2d 194, 138 USPQ 148 (CCPA 1963). Likewise, it is proper to take into consideration not only the teachings of the prior art, but also the level of ordinary skill in the art. See In re Luck, 476 F.2d 650, 177 USPQ 523 (CCPA 1973). Specifically, those of ordinary skill in the art are presumed to have some knowledge of the art apart from what is expressly disclosed in the references. See In re Jacoby, 309 F.2d 513, 135 USPQ 317 (CCPA 1962).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY A. BUTLER whose telephone number is (313)446-6513. The examiner can normally be reached on weekdays, Monday through Friday, between 9 a.m. and 5 p.m. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne M. Antonucci can be reached on weekdays, Monday through Friday, between 9 a.m. and 5 p.m. at (313) 446-6519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RODNEY A BUTLER/Primary Examiner, Art Unit 3666
1 Vehicle horns and/or vehicle related pedestrian warning systems are common knowledge prior to November 6, 2013.