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 .
Specification
2. Applicants’ cooperation is requested in correcting any errors of which applicants may become aware in the specification.
Inventorship
3. This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Double Patenting
4. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 1-10 and 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/523874 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because they essentially recite the same method and structure of an apparatus comprising a module.
Regarding claim 1, see claims 1 and 11 of copending Application No. 18/523874.
Regarding claim 12, see claims 12 and 19 of copending Application No. 18/523874.
Regarding claim 20, see claims 12 and 19 of copending Application No. 18/523874.
Copending Application No. 18/523874 does not explicitly disclose an aspect ratio of the front end greater than 0.75.
However, the aspect ratio of the front end greater than 0.75 is considered to be obvious to obtain higher efficiency of optical signal transmission. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hendrix to include the above feature for the purpose of obtaining higher efficiency of optical signal transmission, and it also has been held that discovering an optimum value of a result effective variable involves only routine skill in the art and it is noted that the applicant does not disclose criticality in the value claimed. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05).
Regarding claim 2, see claim 2 of copending Application No. 18/523874.
Regarding claim 3, see claim 3 of copending Application No. 18/523874.
Regarding claim 4, see claim 4 of copending Application No. 18/523874.
Regarding claim 5, see claim 5 of copending Application No. 18/523874.
Regarding claim 6, see claim 6 of copending Application No. 18/523874.
Regarding claim 7, see claim 7 of copending Application No. 18/523874.
Regarding claim 8, see claim 8 of copending Application No. 18/523874.
Regarding claim 9, see claim 9 of copending Application No. 18/523874.
Regarding claim 10, see claim 10 of copending Application No. 18/523874.
Regarding claim 13, see claim 13 of copending Application No. 18/523874.
Regarding claim 14, see claim 14 of copending Application No. 18/523874.
Regarding claim 15, see claim 15 of copending Application No. 18/523874.
Regarding claim 16, see claim 16 of copending Application No. 18/523874.
Regarding claim 17, see claim 17 of copending Application No. 18/523874.
Regarding claim 18, see claim 18 of copending Application No. 18/523874.
Regarding claim 19, see claim 19 of copending Application No. 18/523874.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
6. The amendment of claims, filed on 03/02/26, has been fully considered.
Claims 1-8, 10 and 12-20 have been amended. Claim 11 has been canceled. The previous ground of rejection is now changed in this Office Action in response to the amendment of claims. Since the new ground of rejection is necessitated by the amendment, this office action is made final.
Conclusion
7. 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 extension fee 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 date of this final action.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Doan whose telephone number is (571) 272-2346. The examiner can normally be reached on Monday to Friday from 7:00am to 3:30pm.
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, Thomas Hollweg can be reached on 571-270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER DOAN/Primary Examiner, Art Unit 2874
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