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 .
Information Disclosure Statement
An applicant’s duty of disclosure of material information is not satisfied by presenting a patent examiner with “a mountain of largely irrelevant data from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical data. It ignores the real world conditions under which examiners work.” Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1573, 220 U.S.P.Q. 289 (Fed. Cir. 1983), cert, denied, 469 U.S. 851 (1984). An applicant has a duty to not just disclose pertinent prior art references but to make a disclosure in such way as not to “bury” it within other disclosures of less relevant prior art. See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 U.S.P.Q.2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc., 26 U.S.P.Q.2d 1889, 1899 (D. Del. 1992); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. et al., 175 U.S.P.Q. 260, 272 (S.D. FI. 1972). It is unreasonable for Examiner to review all of the cited references thoroughly. By signing the accompanying 1449 forms with references, Examiner is merely acknowledging the submission of the cited references and indicating that only a cursory review has been made.
Examiner notes that Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Ct. App. 2011) (en banc) has significantly restricted the infringement defense of inequitable conduct. A defendant must show that the patent in question would not have been issued but for undisclosed information, and that the patentee had the intent to deceive. Examiner suggests that future Information Disclosure Statements cite only the most relevant/inclusive references or portions thereof.
The Examiner has considered the voluminous references submitted as part of the Information Disclosure Statements (IDS) to the extent required by M.P.E.P. §609.05(b), but has not found any to be particularly relevant. If Applicants are aware of pertinent material in the references, Applicants are requested to point the specific pertinence in the response to this Office Action.
The following is an excerpt from M.P.E.P. §609.04(a)III:
Although a concise explanation of the relevance of the information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability.
Applicants are reminded of M.P.E.P. § 2004 (presenting "Aids to Compliance With Duty of Disclosure," including "helpful suggestions for avoiding duty of disclosure problems") and the specific suggestion in § 2004 ¶ 13, stating:
It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents … specifically brought to applicant's attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff'd, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
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 as outlined below are rejected on the ground of nonstatutory double patenting as being unpatentable over claims as outlined below of U.S. Patent No.
11860314 in view of Richardson (GB2363016).
Referring to claim 1, Retterath claims a LiDAR (light detection and ranging) system comprising:
a plurality of emitters that emit a series of emitted light packets over a plurality of field of views, each emitted light packet emitted for a cycle duration;
a plurality of detector arrays having an array of detectors configured to cover the plurality of field of views and sample incoming retroreflected signal portions of an emitted light packet at a pre-determined sampling frequency that generates at least two samples corresponding to the cycle duration of the emitted light packet that are stored in a frame buffer corresponding to each detector array;
a processing system configured to analyze the samples from the detector arrays and detect any stationary objects within the plurality of field of views and any moving objects moving past one or more of the plurality of field of views using at least a volumetric analysis of the at least two samples from each detector in the array of detectors corresponding to the incoming retroreflected signal portion of each emitted light packet, wherein
Richardson shows a similar device that includes detecting any moving objects moving past one or more of the plurality of field of views is determined by a current position, the emitters position and determined angles of the retroreflected signals, including any changing angles as the emitters and detectors move past an object (see pages 5-7). It would have been obvious to include the classification of a moving target and a stationary target as shown by Richardson because this allows the device to generate a collision avoidance protocol
Claims of current application
Claims of 11860314
1
1
2
2
3
Cancelled
4
Cancelled
5
Cancelled
6
6
7
7
8
8
9
9
10
10
11
Cancelled
12
Cancelled
13
Cancelled
14
14
15
1
16
NA
17
NA
18
NA
19
NA
20
NA
21
NA
22
NA
23
NA
Allowable Subject Matter
Claims 16-23 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 LUKE D RATCLIFFE whose telephone number is (571)272-3110. The examiner can normally be reached M-F 9:00AM-5:00PM EST.
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, Isam Alsomiri can be reached at 571-272-6970. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUKE D RATCLIFFE/Primary Examiner, Art Unit 3645
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