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 and 7-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-20 of U.S. Patent No. 11933901. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the instant claimed invention is found within the scope of the Patent claimed invention, with any differences being obvious.
Instant claim 1 recites “a transmitter layer stacked on the receiver layer…” whereas Patent claim 1 recites “a transmitter layer coupled to on the receiver layer…”, in which a person of ordinary skill in the art would find obvious that something coupled onto something else could also be described as stacked, since both descriptions are synonymous and describe a similar, arguably the same, component configuration. Instant claim 1 includes the limitation that the receiver layer has a first surface extending in a second direction crossing a first direction, which in the context of a receiver layer having at least two dimensions, as required by the claimed invention, this feature would be inherent and does not serve to patently distinguish the instant claim from the patent claim. Patent claim 1 includes the limitation wherein the first and second side surfaces of the transmitter and receiver layers are apart from each other in one direction crossing another direction, which introduces additional subject matter not included in the Instant claims, but which, when considered with the remaining claim limitations, serves to encompass all of the subject matter of instant claim 1. Reasoning for claims 19 and 20 of the instant application as corresponding to Patent claims 19 and 20, respectively, are considered mutatis mutandis to that of the comparison of claims 1, above.
Instant claims 7-18 appear to be identical or nearly verbatim to claims 7-18 of the Patent.
Allowable Subject Matter
Claims 1-20 would be allowable if the Double Patenting rejection set forth above is overcome.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, neither alone nor in combination, sufficiently discloses the claimed invention in such a way that the combination of limitations would be rendered anticipatory or obvious to one of ordinary skill in the art. Lewis teaches transmitter and receiver layers coupled by an adhesive layer (see fig. 3). Lewis fails to teach the particulars of the physical relationship between the transmitter and receiver layers, specifically the orientations of transmitter and receiver stacking and coupling as claimed, the particulars of transmitting and receiving via side surfaces and with respect to the claimed optics, and that the side surfaces extend in a third direction crossing the first and second directions as claimed. Suga teaches transmitter and receiver layers each connected by an adhesive layer (see fig. 7). Suga fails to teach the particulars of the physical relationship between the transmitter and receiver layers, specifically the orientations of transmitter and receiver stacking and coupling as claimed, the particulars of transmitting and receiving via side surfaces and with respect to the claimed optics, and that the side surfaces extend in a third direction crossing the first and second directions as claimed. This statement is not intended to necessarily state all of the reasons for indicating reasons of allowance or all of the and has not been written to specifically or impliedly state that all of the reasons 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.
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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