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 .
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 1-8, 10-15 and 17-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,222,556. Although the claims at issue are not
identical, they are not patentably distinct from each other because applicant merely uses slightly
different claim language to claim the same invention. For example, claim 1 of this application broadly
claims the same invention as claims 1, 2 and 5-7 of U.S. Patent No. 11,222,556.
Claims 1-8, 10-15 and 17-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,922,829. Although the claims at issue are not identical, they are not patentably distinct from each other because applicant merely uses slightly different claim language to claim the same invention. For example, claim 1 of this application broadly claims the same invention as claims 1, 8 and 12-14 of U.S. Patent No. 11,922,829 OR claim 1 of this application broadly claims the same invention as claims 1, 8, 12 and 15-16 of U.S. Patent No. 11,922,829.
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 19-20 are rejected under 35 U.S.C. 102a1 as being anticipated by U.S. Patent Application Publication No. 2018/0292916, hereafter referred to as 'Donnelly '916. Donnelly '916 discloses a method comprising: selectively activating or deactivating, by one or more processors (104, 108, 120, 202, 302, para. numbers 30-55) of a directional display (see LED displays 206a-206c, 306a-306c and 400, 400a, 400b in figures 4a-4h, para. #'s 33 and 52-55, figures 1-6), each of a plurality of light emitting diodes of the directional display (see LEDs 206abc, 306abc in paragraph numbers 32 AND 52-55, a processor or controller selectively activates or deactivates each of a plurality LEDs, see para. # 54), wherein each of the plurality of LEDs outputs light when activated (para. # 32 and 52-55); and control, by the one or more processors (104, 108, 120, 202, 302) movement of a plurality of lenses of the directional display OR the plurality of LEDs along one or more supports of the directional display to direct the light along one or more axes (see para. # 32, a motor rotates or moves the plurality of LEDs 206a-c and/or lens 204 along one or more supports (see figure 2, para. # 32, LEDs 206abc are rotated along support 202 OR support described in last sentence of para. # 32 of the directional display 10 to direct the light along one or more axes (see para. #’s. 32 and 52-55).
Regarding claim 20, Donnelly '916 teaches the method directional display of claim 1. Donnelly ‘916 further teaches wherein the light outputted by the activated LEDs is directed by the plurality of lenses (see para. # 32, one or more lenses 204) to locations having differing heights (see figure 2 and 7, LEDs 206abc and lenses 204 extend in vertical direction and direct light at locations having differing heights).
Claims 12-16 and 17-20 are rejected under 35 U.S.C. 102a1 as being anticipated by U.S. Patent Application Publication No. 2002/0005826, hereafter referred to as 'Pederson '826'. Pederson ‘826 teaches a directional display 10 (figures 1-14) comprising: a plurality of light emitting diodes 12 configured to output light; a computing device 50 including one or more processors configured to selectively activate or deactivate each of the plurality of LEDs 12 (see paragraph numbers 97, 108, 117, 118, 119 and 122, a processor or controller 50 selectively activates or deactivates each of a plurality LEDs 12), wherein each of the plurality of LEDs 12 is configured to output light when activated (see paragraph numbers 97, 108, 117, 118, 119 and 122); a plurality of lenses (18, 20, para. #’s 99 and 101 and figures 1 and 6); a motor 24 (para. # 104); and one or more supports 14 along which the motor24 controls movement of the plurality of lenses OR the plurality of LEDs 12 to direct the light along one or more axes (see figures 2 and 7, para. # 197 LEDs are moved or rotated along support hub 14) of the directional display 10 to direct the light along one or more axes (see para. #’s. 97, 104-109 and 111-112).
Regarding claim 13, Pederson ‘826 teaches the directional display of claim 12. Pederson ‘826 further teaches wherein the directional display is configured to be mounted on a vehicle (see para. # 64, directional display 10 is mounted on a vehicle).
Regarding claim 14, Pederson ‘826 teaches the directional display of claim 12. Pederson ‘826 further teaches wherein the light outputted by the activated LEDs 12 is directed by the plurality of lenses (18, 20, para. #’s 99 and 101) to locations having differing heights (see figures 2 and 7, LEDs 12 and lenses 18, 20 extend in vertical direction and direct light at locations having differing heights).
Regarding claim 15, Pederson ‘826 teaches the directional display of claim 12. Pederson ‘826 further teaches wherein the directional display provides text based messages or visual images (see para. # 64, directional display displays different images and messages).
Regarding claim 17, Pederson ‘826 teaches the directional display of claim 12. Pederson ‘826 further teaches wherein messages generated by the directional display are directed in a narrow viewing angle (see a plurality of viewing angle sectors in figures 3-5 and para. # 64 and claim 4).
Regarding claim 18, Pederson ‘826 teaches the directional display of claim 12. Pederson ‘826 further teaches wherein the narrow viewing angle is 10 degrees, or more or less (one viewing sector angle is 1 degree, see claim 4).
Regarding claim 19, Pederson ‘826 teaches a method comprising: selectively activating or deactivating, by one or more processors 50 of a directional display 10 (figures 1-14), each of a plurality of light emitting diodes 12 of the directional display (see paragraph numbers 97, 108, 117, 118, 119 and 122, a processor or controller 50 selectively activates or deactivates each of a plurality LEDs 12), wherein each of the plurality of LEDs 12 outputs light when activated; and control, by the one or more processors 50, movement of a plurality of lenses of the directional display OR the plurality of LEDs 12 along one or more supports of the directional display to direct the light along one or more axes (see para. #’s. 104-109 and 111-112, a motor 24 rotates or moves the plurality of LEDs 12 along one or more supports 14 (figures 2 and 7, para. # 197 LEDs are rotated along support hub 14) of the directional display 10 to direct the light along one or more axes (see para. #’s. 97, 104-109 and 111-112).
Regarding claim 20, Pederson ‘826 teaches the method of claim 19. Pederson ‘826 further teaches wherein the light outputted by the activated LEDs 12 is directed by the plurality of lenses (18, 20, para. #’s 99 and 101) to locations having differing heights (see figures 2 and 7, LEDs 12 and lenses 18, 20 extend in vertical direction and direct light at locations having differing heights).
Response to Arguments
Applicant's arguments filed 04/06/26 have been fully considered but they are not persuasive. The obvious double patenting rejection still applies to claims 1-8, 10-15 and 17-22. Furthermore, claims 12-15 and 17-20 are newly rejected under 35 USC 102 as anticipated by the prior art references of Donnelly ‘916 and Pederson ‘916.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M SEMBER whose telephone number is (571)272-2381. The examiner can normally be reached flexing generally from 7 a.m. to 5.00 p.m. M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ABDULMAJEED Aziz can be reached at 571-270-5046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS M SEMBER/Primary Examiner, Art Unit 2875
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