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
The information disclosure statements filed 2/15/2024, 11/20/2024, 1/14/2025 and 3/3/2025 have been considered by the examiner.
Drawings
The drawings filed 1/26/2024 are approved by the examiner.
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 1-6 and 8-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of USPN 11,921,211. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to claim 1, the claims of USPN 11,921,211 teach or suggest: An apparatus [ taught by line 1 of claim 1of USPN 11,921,211 ] comprising: an object [ taught by the reflector of line 2 of claim 1 of USPN 11,921,211 ] with a rotational symmetry about an axis of rotation [ lines 7-8 of claim 1 of USPN 11,921,211 set forth a motor defining an axis of rotation ], with a transparent flat front surface having a normal that is parallel to the axis of rotation [ taught by claim 8 of USPN 11,921,211 ], and with a reflective surface embedded within [ suggested by lines 3-5 of claim 1 of USPN 11,921,211 ], wherein the object is configured to rotate about the axis of rotation [ taught by lines 7-8 of claim 1 of USPN 11,921,211 ], wherein the object has static and dynamic balance about the axis of rotation [ can be inferred from claim 23 of USPN 11,921,211], and wherein a normal of the reflective surface is not parallel to the axis of rotation [ taught by lines 8-9 of claim 1 of USPN 11,921,211 ]; and a light source configured to direct a beam of light at a front surface of the object to the reflective surface [ taught by claim 7 of USPN 11,921,211 ], wherein the beam of light exits the front surface as a scanned beam which is scanned across a target area by the rotation of the object [ taught by lines 10-13 of claim1 of USPN 11,921,211 ].
Claim 2 is taught by line 2 of claim 1 of USPN 11,921,211.
Claims 3 and 4 are taught by lines 3-10 of claim 11 of USPN 11,921,211.
Claim 5 is taught by line 7 of claim 1 of USPN 11,921,211.
Claim 6 is taught by claim 14 of USPN 11,921,211.
Claim 8 is taught by lines 4-5 of claim 1 of USPN 11,921,211.
With respect to claim 9, the claims of USPN 11,921,211 teach or suggest: An apparatus [ taught by claim 1 of USPN 11,921,211 ] comprising: a solid optical reflector which includes a reflective surface embedded within the solid optical reflector [ taught by lines 2-3 of claim 1 of USPN 11,921,211 ]; and a motor configured to rotate the solid reflector about an axis of rotation [ taught by lines 7-8 of claim 1 of USPN 11,921,211 ], wherein the solid reflector has an inertial axis which is generally coincident with the axis of rotation [ taught by claim 23 of USPN 11,921,211 ], and wherein the solid reflector has a transparent front surface having a normal that is generally coincident with the axis of rotation [ taught by claim 8 of USPN 11,921,211 ], and wherein light which enters the front surface of the reflector and reflects off the reflective surface exits the front surface of the reflector as a scanned beam [ taught by lines 10-13 of claim 1 of USPN 11,921,211].
Claim 10 is taught by lines 4-5 of claim 1 of USPN 11,921,211.
Claim 11 would have been obvious because a person of ordinary skill in the art would have been reasonably expected to use a refractive index of greater than 1.5 in order to enable refracting light toward the reflective surface set forth by claim 1 of USPN 11,921,211.
Claim 12 is taught by lines 7-9 of claim 1 of USPN 11,921,211.
Claim 13 is taught by claim 15 of USPN 11,921,211.
Claim 14 can be inferred from claim 23 of USPN 11,921,211.
Claim 15 is taught by lines 10-14 of claim 1 of USPN 11,921,211.
Claim 16 is met by the subject matter of the claims of USPN 11,921,211, as applied to claims 9-15.
Claim 17 is taught by claims 7 and 14 of USPN 11,921,211.
Claim 18 is taught by claim 15 of USPN 11,921,211.
Claim 19 is taught by claim 16 of USPN 11,921,211.
Claim 20 is taught by lines 8-9 of claim 1 of USPN 11,921,211.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of USPN in view of Kalayeh et al (United States Patent No. 6,822,742).
Claim 7 would have been obvious because Kalayeh et al taught that using scanned light to detect gas was a known application of scanning technology.
Claims 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of USPN 11,592,563. Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to claim 16, the claims of USPN 11,592,563 teach or suggest: A method [ taught by claim 24 of USPN 11,592,563 ] comprising: rotating a solid reflector about an axis of rotation [ taught by line 10 of claim 24 of USPN 11,592,563 ], wherein the reflector has an axis of rotational symmetry and an inertial axis which is generally coincident with the axis of rotation [ taught by claim 26 of USPN 11,592,563 ]; and directing light through a front surface of the reflector, wherein the light passes through a material of the reflector to reflect off a reflective surface embedded within the detector to exit the front surface of the reflector as a scanned beam [ taught by lines 4-9 of claim 24 of USPN 11,592,563 ].
Claim 17 is taught by lines 13-18 of claim 24 of USPN 11,592,563.
Claim 18 is taught by claim 14 of USPN 11,592,563 ].
Claim 19 is suggested by claim 3 of USPN 11,592,563.
Claim 20 is taught by lines 10-12 of claim 24 of USPN 11,592,563.
Allowable Subject Matter
Upon filing of terminal disclaimers, claims 1-20 would be allowed.
The cited prior art closest to claims 1-20 is shown by figure 6 of Kelley et al, which shows a rotatable scanning element including wedged glass plate (54) covering the reflective surface (24) of a spin mirror (22).
With regard to claim 1, Kelley et al, taken alone or in combination with the other cited prior art, does not at least teach or suggest directing a beam in the front surface of the glass plate (54) wherein beam reflected by surface (24) exits the front surface.
Claims 2-8 depend on claim 1.
Claim 9 defines over the cited prior art for at least reciting the transparent front surface has a normal coincident with the rotation axis and reflected light exiting the front surface.
Claims 10-15 depend on claim 9.
Claim 16 defines over the cited prior art by at least reciting rotational symmetry and inertial axis coincident with the rotation axis wherein light exits the front surface.
Claims 17-20 depend on claim 16.
Any inquiry concerning this communication should be directed to MARK HELLNER at telephone number (571)272-6981.
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/MARK HELLNER/Primary Examiner, Art Unit 3645
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