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.
Claim 49-51,53,57-59 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No 11927741. Although the claims at issue are not identical, they are not patentably distinct from each other because
Claim 49-51 is obvious over Claim 1 of U.S. Patent No 11927741.
Claim 53 is obvious over Claim 2 of U.S. Patent No 11927741.
Claim 57-59 is obvious over Claim 3 of U.S. Patent No 11927741.
Claim 60 is obvious over Claim4 of U.S. Patent No 11927741.
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.
Claim(s) 49-64,69-78 is/are rejected under pre-AIA 35 U.S.C. 102a as being anticipated by Tsuboi et al (US 20100194235)
Regarding Claim 49,
Tsuboi et al discloses (Fig. 16) a micromirror comprising: a mirror pivotally (11a) attached to a mount (20’) by a first pivoting structure (31) that permits pivotal movement of the mirror relative to the mount about a first axis (A1); a first comb drive having a first portion fixed relative to the mirror (12a, [0053] connected to land portion 11) and second portion fixed relative to the mount (Fig. 17, element 32a), the first comb drive being for actuating the mirror about the first axis [0067]; and a weight connected to the mirror (14a,14b), the weight and mirror being on opposite sides of a fulcrum of the first pivoting structure (Fig. 8 and Fig. 16), wherein the first axis is non-parallel to a longitudinal axis extending through the weight and the mirror (see Fig. 16).
Regarding Claim 50,
Tsuboi et al discloses (Fig. 16) further comprising: a first support structure (40) pivotally attached to the mount by a second pivoting structure (33,34) that permits pivotal movement of the first support structure mount relative to the first-support-structure mount about a second axis (A2), the second axis being non- parallel to the first axis (16); and a second comb drive having a first portion fixed relative to the mount (35) and a second portion fixed relative to the first support structure (36), and the second comb drive being for actuating the mount about the second axis [0115].
Regarding Claim 51,
Tsuboi et al discloses (Fig. 16) wherein the first comb drive is positioned between the fulcrum and the weight, and the mirror is positioned between the first and the second comb drives, the first comb drive being adjacent the fulcrum (as shown in Fig. 16).
Regarding Claim 52,
Tsuboi et al discloses (Fig. 16) a third comb drive having a first portion fixed relative to the mirror ((12b)[0053] connected to land portion 11) and a second portion fixed relative to the mount (32b), the third comb drive being for actuating the mirror about the first axis together with the first comb drive [0067], wherein the mirror is positioned between the fulcrum and the third comb drive, the mirror being adjacent the fulcrum (see Fig. 16).
Regarding Claim 53,
Tsuboi et al discloses (Fig. 16) wherein the first comb drive is positioned between the second comb drive and the weight, the weight being adjacent the fulcrum (see Fig. 16).
Regarding Claim 54,
Tsuboi et al discloses (Fig. 16) a third comb drive having a first portion fixed relative to the mirror ((12b, [0053], connected to land portion 11) and a second portion fixed relative to the mount (32b), the third comb drive being for actuating the mirror about the first axis together with the first comb drive [0067], wherein the mirror is positioned between the fulcrum and the third comb drive, the mirror being adjacent the fulcrum (see Fig. 16).
Regarding Claim 55,
Tsuboi et al discloses (Fig. 16) wherein the first axis is perpendicular to the longitudinal axis (see Fig. 16).
Regarding Claim 56,
Tsuboi et al discloses (Fig. 16) wherein the weight and the mirror have an equivalent inertial torque on the fulcrum [0062].
Regarding Claim 57,
Tsuboi et al discloses (Fig. 15 and Fig. 16) a plurality of micromirrors, each of the micromirrors comprising: a mirror (Fig. 15, 11a) pivotally attached to a mount (20’) by a first pivoting structure (31) that permits pivotal movement of the mirror relative to the mount about a first axis (A1); a first comb drive having a first position portion fixed relative to the mirror ((12a)[0053] connected to land portion 11)) and a second portion fixed relative to the mount (32a), the first comb drive being for actuating the mirror about the first axis ([0067], and a weight connected to the mirror 14a,14b); and a weight connected to the mirror, the weight and the mirror being on opposite sides of a fulcrum of the first pivoting structure (Fig. 16 and Fig. 8), wherein the first axis is non- parallel to a longitudinal axis extending through the weight and the mirror (Fig. 16).
Regarding Claim 58,
Tsuboi et al discloses (Fig. 15 and Fig. 16) each of the micromirrors further comprising: a first support structure (40) pivotally attached to the mount by a second pivoting structure (33,34) that permits pivotal movement of the first support structure relative to the mount relative to the mount about a second axis (A2), the second axis being non-parallel to the first axis (see Fig. 16); and a second comb drive having a first portion fixed relative to the mount (35) and a second portion fixed relative to the first support structure (36), and the second comb drive being for actuating the mount about the second axis [0115].
Regarding Claim 59,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the first comb drive is positioned between the fulcrum and the weight, and the mirror is positioned between the first and thesecond comb drives, the first comb drive being adjacent the fulcrum (see Fig. 16).
Regarding Claim 60,
Tsuboi et al discloses (Fig. 15 and Fig. 16) each of the micromirrors further comprising: a third comb drive having a first portion fixed relative to the mirror (12b) and a second portion fixed relative to the mount (32b), the third comb drive being for actuating the mirror about the first axis together with the first comb drive [0067], wherein the mirror is positioned between the fulcrum and the third comb drive, the mirror being adjacent the fulcrum (see Fig. 16).
Regarding Claim 61,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the first comb drive is positioned between the second comb drive and the weight, the weight being adjacent the fulcrum (see Fig. 16).
Regarding Claim 62,
Tsuboi et al discloses (Fig. 15 and Fig. 16) each of the micromirrors further comprising: a third comb drive having a first portion fixed relative to the mirror ((12b)[0053, connected to land portion 11) and a second portion fixed relative to the mount (32b), the third comb drive being for actuating the mirror about the first axis together with the first comb drive [0067], wherein the mirror is positioned between the fulcrum and the third comb drive, the mirror being adjacent the fulcrum (see Fig. 16).
Regarding Claim 63,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the first axis is perpendicular to the longitudinal axis (see Fig. 16).
Regarding Claim 64,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the weight and the mirror have an equivalent inertial torque on the fulcrum [0062].
Regarding Claim 69,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the first comb drive is positioned along the longitudinal axis between the weight and the mirror (see Fig. 16).
Regarding Claim 70,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the first comb drive is positioned along the longitudinal axis on a side of the fulcrum opposite the mirror and between the fulcrum and the weight (14a,14b).
Regarding Claim 71,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the weight is positioned along the longitudinal axis between the first comb drive and the mirror (11a).
Regarding Claim 72,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the longitudinal axis and the second axis are collinear, and the weight and the first comb drive [0067] are positioned along the second axis between the second comb drive and the fulcrum of the first pivoting structure (31).
Regarding Claim 73,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the weight is positioned between to the second comb drive and the first comb drive, and the first comb drive is positioned between the weight and the fulcrum [0062].
Regarding Claim 74,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the first comb drive is positioned between the second comb drive and the weight, and the weight is positioned between the first comb drive and the fulcrum [0062].
Regarding Claim 75,
Tsuboi et al discloses (Fig. 15 and Fig. 16) a third comb drive having a first portion fixed relative to the mirror ((12b),[0053]) and second portion fixed relative to the mount (32b), the third comb drive actuating the mirror about the first axis together with the first comb drive [0067], wherein the mirror and the third comb drive are positioned along the second axis on a side of the fulcrum opposite the first comb drive and the weight.
Regarding Claim 76,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the first [0067], the second, and the third comb drives and the weight, the fulcrum and the mirror are arranged along the second axis in an order of: the second comb drive, the weight, the first comb drive, the fulcrum, the third comb drive and the mirror (Fig. 16).
Regarding Claim 77,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the first, the second, and the third comb drives and the weight, the fulcrum and the mirror are arranged along the second axis in an order of: the second comb drive, the weight, the first comb drive, the fulcrum, the mirror and the third comb drive [0067].
Regarding Claim 78,
Tsuboi et al discloses (Fig. 15 and Fig. 16) wherein the first, the second, and the third comb drives and the weight, the fulcrum and the mirror are arranged along the second axis in an order of: the second comb drive, the first comb drive, the weight, the fulcrum, the mirror and the third comb drive [0067].
Allowable Subject Matter
Claim 65-68 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.
Regarding Claim 65,
Tsuboi et al discloses (Fig. 15 and Fig. 16) a plurality of micromirrors attached to a mount, each micromirror comprising: a first end and a second end, the second end being connected to the mount; a mirror (11a) at the first end; a hinge attached to the mount, the hinge being for permitting rotation of the mirror about a first axis (A1); and a first comb drive for actuating the mirror ((12a)[0053], connected to land portion 11) about the first axis [0067];
The prior art does not disclose nor would it be obvious to one of ordinary skill in the art to include another reference to disclose a first and second rows of the micromirrors, the micromirrors being positioned such that the first ends of the mirrors in the first and the second rows are opposite one another.
Claims 66-68 depends on Claim 65, therefore are objected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY P CHIEN whose telephone number is (571)272-8579. The examiner can normally be reached 9AM-5PM PST Monday, Tuesday, and Wednesday.
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, Michael Caley can be reached at 571-272-2286. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LUCY P CHIEN/Primary Examiner, Art Unit 2871