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 .
This is the initial office action for US Patent Application No. 18/407259 by Waldern et al.
Claims 1-20 are currently pending and have been fully considered.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 11,442,222. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims contain similar method limitations to the claims recited in the patent.
Regarding claims 1 and 2 of the pending application, the patent recites (Claim 1) a method for fabricating a deep surface relief grating (SRG), the method comprising providing a mixture of monomer and liquid crystal; providing a substrate; coating a layer of the mixture on a surface of the substrate; applying holographic recording beams to the layer to form a holographic polymer dispersed liquid crystal grating comprising alternating polymer rich regions and liquid crystal rich regions; and removing at least a portion of the liquid crystal in the liquid crystal rich regions to form a polymer surface relief grating, wherein the liquid crystal rich regions comprise air gaps after removing at least a portion of the liquid crystal in the liquid crystal rich regions.
The patent further recites (Claim 18) applying a protective layer over the deep SRG. In view of claims 1 and 2 of the pending application, the protective layer recited in the patent is considered to be analogous to an optical material that is deposited on the polymer rich regions such that the optical material covers the surfaces of the polymer surface relief grating and at least partially fills the air gaps.
Regarding claims 3-20 of the pending application, the patent recites (Claims 2-5 and 7-29) analogous limitations related to the method for fabricating the deep SRG recited in independent claim 1.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claims 1-20 contain allowable subject matter because the prior art does not teach or suggest Applicant’s claimed method for fabricating a deep surface relief grating (SRG) that includes applying holographic recording beams to the layer to form a holographic polymer dispersed liquid crystal grating comprising alternating polymer rich regions and liquid crystal rich regions; and removing at least a portion of the liquid crystal in the liquid crystal rich regions to form a polymer surface relief grating, wherein the liquid crystal rich regions comprise air gaps after removing at least a portion of the liquid crystal in the liquid crystal rich regions, and depositing an optical material onto the polymer rich regions such that the optical material covers the surfaces of the polymer surface relief grating and at least partially fills the air gaps.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEWART A FRASER whose telephone number is (571)270-5126. The examiner can normally be reached M-F, 7am-4pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at 571-270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEWART A FRASER/Primary Examiner, Art Unit 1724
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