DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 9453907. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the instant claims are found within the scope of the Patent claims.
Regarding claims 1: both claimed inventions employ first and second scanning mirrors to direct first and second beams toward a target – while the Patent claims utilizing a laser, a person of ordinary skill in the art would find obvious that since the claimed inventions are drawn to lidar subsystems, a laser is a critical component thereof, and that the beams recited in the instant claims must be of a laser source. Claim 1 of the Parent additionally includes a limitation of correcting a set of three-dimensional measurements based on one or more calibration adjustments, but the scope of the instant claimed invention is still found within the scope of the Patent claimed invention.
Claims 2, 3 and 5 are seemingly identical in verbiage.
Claim 4 of the instant application differs from the combination of claims 4 and 6 of the Patent by the wording “correct the horizontal offset by a shift between the 3D horizontal offset and the noseridge” and “determine one or more calibration adjustments based on the corrected horizontal offset and vertical offset” (instant claim 4) and “correct the sets of three-dimensional measurement or the at least one image of the target for the horizontal offset and the vertical offset based on the determined calibration adjustments” (Patent claim 4). However, a person of ordinary skill in the art would find obvious that while the language differs, the intent of the claims are of the same scope, in that horizontal and vertical offsets are determined and corrected, and that a calibration adjustment is based on the correction(s). Additionally, the combination of Patent claims 4 and 6 require that a noseridge is determined and that a horizontal offset is determined based on the noseridge. Instant claim 4 recites correcting a horizontal offset by a shift between the 3D offset and the noseridge, which requires determination of a horizontal offset and that the shift is based, at least in part, on the noseridge. Therefore, while the claim language differs, the scopes of the claimed inventions are not patentably distinct. This reasoning extends to Patent claim 7 mutatis mutandis.
Claim 1 is further rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 of U.S. Patent No. 10048359. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the instant claims are found within the scope of the Patent claims. The claims differ in that instant claim 1 is drawn to a system and Patent claim 6 is drawn to a method, however the system and method correspond and require all of the same limitations. Therefore, the disclosed system would be obvious in light of the disclosed method, and likewise, the disclosed method would be obvious in light of the disclosed system.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-5 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-5 of prior U.S. Patent No. 10048359. This is a statutory double patenting rejection. The instant claims and the Patent claims correspond numerically and appear identical in language and scope.
Allowable Subject Matter
Claims 1-5 would be allowable if the Double Patenting rejections set forth above are overcome.
The following is an examiner’s statement of reasons for indicating allowable subject matter:
The closest prior art, when taken alone, or, in combination, cannot be construed as reasonably teaching or suggesting all of the elements of the claimed invention as arranged, disposed, or provided in the manner as claimed by the Applicant, nor would there exist a reasonable motivation to combine prior art with similar components in such a way that does not render the original invention inoperable for its intended purpose.
The combination of the closest prior art, Dimsdale, Crampton, and Demirli would not render obvious the claimed invention to one of ordinary skill in the art for the following reasons: The combination of Dimsdale and Crampton describes a mechanism for determining offsets between measurements of a target and a standard model, as opposed to determining offsets between two sets of measurements. That is to say, Crampton teaches how measurements of a face are compared against a standard model of a face to determine how well the measurements align with the model of best fit for the measurements. Once determined, the best fit model is used, for example, to correct or alter pose of the facial measurements. Thus, the offsets of Crampton are not used for calibration purposes, but instead are used for purposes of identifying a best fit of the measurements to a model. Therefore, a combination of Dimsdale and Crampton would yield determining a first set of measurement offsets relative to a standard model and determining a second set of measurement offsets relative to the standard model, but no relationship exists between the first and second measurement sets, which would not promote any form of calibration. Further still, the offsets of Demirli would not be readily understood to indicate a difference in locations of a plurality of symmetrical facial features relative to a 3D symmetry plane, as such, a symmetry plane must also be defined by the measurement sets offsets of Dimsdale and Crampton. Therefore, no combination of the closest prior art would yield an obvious outcome comparable to the claimed invention for at least the reasons above, as the offset determination of each reference is not consistent with the next, and would therefore not support any conclusion of calibration, in conjunction with the remaining claim limitations. See the IFW, examiner’s reasons for allowance for parent application 13840833, in the non-final rejection dated 11/05/2015; and for parent application 15272149, in the non-final rejection dated 06/19/2017.
This statement is not intended to necessarily state all the reasons for allowance or all the details of why the claims are allowed and has not been written to specifically or impliedly state that all the reasons for allowance are set forth (MPEP 1302.14).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha K. Nickerson whose telephone number is (571)270-1037. The examiner can normally be reached Generally Monday-Tuesday, 7:00AM-3:00PM CT.
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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SAMANTHA K. NICKERSON
Primary Examiner
Art Unit 3645
/SAMANTHA K NICKERSON/Primary Examiner, Art Unit 3645
Prosecution Insights