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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. KR10-2018-0092045, filed on 08/07/2018.
Information Disclosure Statement
The information disclosure statement filed 02/26/2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because no copies of the foreign patent documents nor non-patent literature have been received. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings submitted on 02/26/2024 are in compliance with the provisions of 37 CFR 1.81. Accordingly, the drawings are being considered by the examiner.
Specification
The specification submitted on 02/26/2024 are in compliance with the provisions of 37 CFR 1.71. Accordingly, the specification is being considered by the examiner.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6, 11-12, 14-15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Carothers (US20170146639A1, "Carothers") in view of Jeong et al. (US20190212419A1, “Jeong”), Shiraishi (US20130342822A1, “Shiraishi”), and Stenton (US20100259807A1, “Stenton”).
Regarding claim 1, Carothers teaches an optical scanner comprising (Carothers, Para [0023], Fig. 3, where the elements of LIDAR system 102 consist of the optical scanner):
at least one light source configured to emit light (Carothers, Para [0025], Fig 3, where the monolithic transceiver 202 has laser 402 as disclosed in Para [0027], Fig 4);
a steering unit configured to perform scanning in a first direction based on the light emitted from the at least one light source (Carothers, Para [0025], Fig 3, where the rotatable wedge prisms 206 and 208 can direct light in a first direction toward the cone mirror 320), the steering unit comprising a plurality of first prisms (Carothers, Para [0025], Fig 3, where the rotatable wedge prisms 206 and 208 are the plurality of first prisms), and each of the plurality of first prisms comprising an incident facet configured to pass the light emitted from the at least one light source, and an output facet configured to refract and output the light (Carothers, Para [0026], Fig 3, where the rotatable wedge prisms 206 and 208 refract the laser beam 106 and therefore have first surfaces); and
However, Carothers does not teach a polygon mirror configured to perform, by using the light output from the steering unit, scanning in a second direction different than the first direction based on a rotation of the polygon mirror, the polygon mirror comprising a plurality of reflective facets, and each of the plurality of reflective facets being configured to reflect the light output from the steering unit.
wherein all the plurality of reflective facets of the polygon mirror have flat surfaces and are disposed circularly around a center point of the polygon mirror in a circumferential direction, and an angle of inclination of each of the plurality of reflective facets that is inclined from the first direction, sequentially increases,
wherein the plurality of first prisms are disposed circularly around a center point of the steering unit, and
wherein the steering unit further comprises a plurality of second prisms corresponding to the plurality of first prisms and disposed outside of the plurality of first prisms.
On the other hand, Jeong teaches a rotating polygon mirror with tilted reflective facets (Jeong, Para [0577], Fig. 43, where the rotating polygon mirror 8900 has tilted reflective surfaces 8910, 8920, 8930, 8940) to steer a light output from a steering unit in a second direction (Jeong, Para [0577], Fig. 43, where the rotating polygon mirror 8900 directs light in a second direction toward one of H1-H4 depending on the tilted reflective surfaces 8910, 8920, 8930, 8940).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have modified the optical scanner of Carothers in view of Jeong, by adding the polygon mirror disclosed by Jeong to increase the detection range of the device (Jeong, Para [0023])
However, Carothers in view of Jeong still does not teach
wherein the plurality of first prisms are disposed circularly around a center point of the steering unit, and
wherein the steering unit further comprises a plurality of second prisms corresponding to the plurality of first prisms and disposed outside of the plurality of first prisms.
On the other hand, Shiraishi teaches the situating of reflective surfaces around the rotating body of a polygon mirror (Shiraishi, Para [0031]-[0032], Fig 3-4, where the polygonal mirror 25 is a rotating body with a plurality of reflective surfaces forms a periphery, each with a desired spread angle on a plane including a rotational axis 25a and a light axis of the measuring laser beam L2) with different angles of inclination that sequentially increase (Shiraishi, Para [0035]-[0037] and [0041]-[0043], Fig 3, where the angle of inclination of each of the polygonal mirror 25 reflective surfaces R1-R4 sequentially changes by an amount equal to that spread angle).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have further modified the optical scanner of Carothers in view of Jeong and Shiraishi by having reflective facets disposed circularly around a center point to gain greater control over the device's scanning direction (Shiraishi, Para [0032]).
However Carothers in view of Jeong and Shiraishi still does not teach wherein the steering unit further comprises a plurality of second prisms corresponding to the plurality of first prisms and disposed outside of the plurality of first prisms.
On the other hand, Stenton teaches a second prism wheel that surrounds a first set of prisms (Stenton, Para [0048], Figs. 9-10, where a second prism wheel 30 is surrounding first prism wheel 22).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have further modified the optical scanner of Carothers in view of Jeong, Shiraishi and Stenton by situating second prisms outside a set of first prisms to have simultaneous passage and alignment of light through multiple sets of prisms (Stenton, Para [0036])
Regarding claim 2, Carothers in view of Jeong, Shiraishi and Stenton teaches the optical scanner of claim 1, wherein the at least one light source comprises a laser diode configured to emit a laser beam (Carothers, Para [0025], Fig 3, where the monolithic transceiver 202 has laser 402 as disclosed in Para [0027], Fig 4).
Regarding claim 3, Carothers in view of Jeong, Shiraishi and Stenton teaches the optical scanner of claim 1, wherein the steering unit is further configured to change a traveling path of the light emitted from the at least one light source in the first direction based on a rotation of the plurality of first prisms (Carothers, Para [0025]-[0026], Fig 3, where the rotatable wedge prisms 206 and 208 can steer light in a second direction).
Regarding claim 4, Carothers in view of Jeong, Shiraishi and Stenton teaches the optical scanner of claim 1, wherein the plurality of second prisms are wedge prisms (Carothers, Para [0025], Fig 3, where the rotatable wedge prisms 206 and 208.
Regarding claim 5, Carothers in view of Jeong, Shiraishi and Stenton teaches the optical scanner of claim 1, wherein a number of the plurality of first prisms is 6, and a number of the plurality of second prisms is 6 (Stenton, Para [0048], Fig 9, where the number of prisms in both of the prism wheels 22 and 30 are 8 each (See MPEP 2144.05.I).
Regarding claim 6, Carothers in view of Jeong, Shiraishi and Stenton teaches the optical scanner of claim 1, wherein a number of the plurality of first prisms is 8, and a number of the plurality of second prisms is 8 (Stenton, Para [0048], Fig 9, where the number of prisms in both of the prism wheels 22 and 30 are 8 each (See MPEP 2144.05.I).
Regarding claim 11, Carothers in view of Jeong, Shiraishi and Stenton teaches the optical scanner of claim 1, further comprising a reflective member (Carothers, Para [0025], Fig 3, where the cone mirror 320 is a reflective member) configured to reflect the light output from the steering unit to the polygon mirror (Carothers, Para [0025]-[0026], Fig 3, where the light reflected by the cone mirror changes the direction of light to a third direction).
Regarding claim 12, Carothers in view of Jeong, Shiraishi and Stenton teaches the optical scanner of claim 1, wherein the second direction is perpendicular to the first direction (Carothers, Para [0025]-[0026], Fig 3, where the light reflected by the cone mirror changes the direction of light to a third direction that is at a right angle from the emitting direction).
Regarding claim 14, Carothers in view of Jeong, Shiraishi and Stenton teaches the optical scanner of claim 1, further comprising:
a first motor configured to rotate the steering unit around a first axis parallel to a traveling direction of the light emitted from the at least one light source (Carothers, Para [0025], Fig. 3, where motors 210 and 212 are rotating the prisms 206 and 208);
a second motor configured to rotate the polygon mirror around a second axis perpendicular to the traveling direction of the light emitted from the at least one light source (Jeong, Para 261, Fig 5, where the driver 1140 drives the rotating body of mirror 1100); and
a controller configured to independently drive each of the at least one light source, and independently drive the first motor and the second motor (Carothers, Para [0025], Fig. 3, where motors 210 and 212 are rotating the prisms 206 and 208 via the controller 214 that gives the motors instructions, and when combined with Jeong would control a polygonal mirror's motor).
Regarding claim 15, Carothers in view of Jeong, Shiraishi and Stenton teaches the optical scanner of claim 1, wherein the polygon mirror comprises at least two sub-polygon mirrors (Jeong, Para [00394], Fig 17, where the two sub-polygon mirrors are irradiation portion 1951 and light reception portion 1961) disposed symmetrically with respect to a plane parallel to a traveling direction of the light emitted from the at least one light source (Jeong, Para [00394], Fig 17, where the two mirror portions (irradiation portion 1951 and light reception portion 196) are separated by light shielder 1940 and therefore disposed symmetrically with respect to said plane) and
wherein a pair of sub-polygon mirrors among the at least two sub-polygon mirrors disposed symmetrically with respect to the plane have a same shape (Jeong, Para [00394], Fig 17, where the two mirror portions (irradiation portion 1951 and light reception portion 196) can be seen as rectangular prisms looking at the figure).
Regarding claim 17, Carothers teaches a light detection and ranging (LIDAR) system comprising:
an optical scanner comprising (Carothers, Para [0023], Fig. 3, where the elements of LIDAR system 102 consist of the optical scanner):
at least one light source configured to emit light (Carothers, Para [0025], Fig 3, where the monolithic transceiver 202 has laser 402 as disclosed in Para [0027], Fig 4);
a steering unit configured to perform scanning in a first direction based on the light emitted from the at least one light source (Carothers, Para [0025], Fig 3, where the rotatable wedge prisms 206 and 208 can direct light in a first direction toward the cone mirror 320), the steering unit comprising a plurality of first prisms (Carothers, Para [0025], Fig 3, where the rotatable wedge prisms 206 and 208 are the plurality of first prisms), and each of the plurality of first prisms comprising an incident facet configured to pass the light emitted from the at least one light source, and an output facet configured to refract and output the light (Carothers, Para [0026], Fig 3, where the rotatable wedge prisms 206 and 208 refract the laser beam 106 and therefore have first surfaces); and
wherein the optical scanner is configured to scan an object based on light (Carothers, Para [0025], Fig 3, where the monolithic transceiver 202 is the LIDAR laser scanner); and
a detector configured to receive light reflected from the object (Carothers, Para [0025], Fig 3, where the monolithic transceiver 202 is the LIDAR laser detector).
However, Carothers does not teach a polygon mirror configured to perform, by using the light output from the steering unit, scanning in a second direction different than the first direction based on a rotation of the polygon mirror, the polygon mirror comprising a plurality of reflective facets, and each of the plurality of reflective facets being configured to reflect the light output from the steering unit.
wherein all the plurality of reflective facets of the polygon mirror have flat surfaces and are disposed circularly around a center point of the polygon mirror in a circumferential direction, and an angle of inclination of each of the plurality of reflective facets that is inclined from the first direction, sequentially increases,
wherein the plurality of first prisms are disposed circularly around a center point of the steering unit, and
wherein the steering unit further comprises a plurality of second prisms corresponding to the plurality of first prisms and disposed outside of the plurality of first prisms.
On the other hand, Jeong teaches a rotating polygon mirror with tilted reflective facets (Jeong, Para [0577], Fig. 43, where the rotating polygon mirror 8900 has tilted reflective surfaces 8910, 8920, 8930, 8940) to steer a light output from a steering unit in a second direction (Jeong, Para [0577], Fig. 43, where the rotating polygon mirror 8900 directs light in a second direction toward one of H1-H4 depending on the tilted reflective surfaces 8910, 8920, 8930, 8940).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have modified the LIDAR system of Carothers in view of Jeong, by adding the polygon mirror disclosed by Jeong to increase the detection range of the device (Jeong, Para [0023])
However, Carothers in view of Jeong still does not teach
wherein the plurality of first prisms are disposed circularly around a center point of the steering unit, and
wherein the steering unit further comprises a plurality of second prisms corresponding to the plurality of first prisms and disposed outside of the plurality of first prisms.
On the other hand, Shiraishi teaches the situating of reflective surfaces around the rotating body of a polygon mirror (Shiraishi, Para [0031]-[0032], Fig 3-4, where the polygonal mirror 25 is a rotating body with a plurality of reflective surfaces forms a periphery, each with a desired spread angle on a plane including a rotational axis 25a and a light axis of the measuring laser beam L2) with different angles of inclination that sequentially increase (Shiraishi, Para [0035]-[0037] and [0041]-[0043], Fig 3, where the angle of inclination of each of the polygonal mirror 25 reflective surfaces R1-R4 sequentially changes by an amount equal to that spread angle).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have further modified the LIDAR system of Carothers in view of Jeong and Shiraishi by having reflective facets disposed circularly around a center point to gain greater control over the device's scanning direction (Shiraishi, Para [0032]).
However Carothers in view of Jeong and Shiraishi still does not teach wherein the steering unit further comprises a plurality of second prisms corresponding to the plurality of first prisms and disposed outside of the plurality of first prisms.
On the other hand, Stenton teaches a second prism wheel that surrounds a first set of prisms (Stenton, Para [0048], Figs. 9-10, where a second prism wheel 30 is surrounding first prism wheel 22).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have further modified the LIDAR system of Carothers in view of Jeong, Shiraishi and Stenton by situating second prisms outside a set of first prisms to have simultaneous passage and alignment of light through multiple sets of prisms (Stenton, Para [0036]).
Regarding claim 18, Carothers in view of Jeong, Shiraishi and Stenton teaches the LIDAR system of claim 17, wherein the steering unit is further configured to change a traveling path of the light emitted from the at least one light source in the first direction based on a rotation of the plurality of first prisms (Carothers, Para [0025]-[0026], Fig 3, where the rotatable wedge prisms 206 and 208 can steer light in a second direction).
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Carothers in view of Jeong, Shiraishi, Stenton, and Birch1.
Regarding claim 7, Carothers in view of Jeong, Shiraishi, and Stenton teaches the optical scanner of claim 1.
However, Carothers in view of Jeong, Shiraishi, and Stenton does not teach wherein at least two of the plurality of first prisms comprise output facets having different angles of inclination.
On the other hand Birch teaches varying angles of inclination in a prism array in a single axis (Birch, "Calculation of Optimal Facet Angles", Fig. 1, Eq. 6, where varying angles of inclination of prism arrays are used. The equation teaches calculating the z-coordinate of each of multiple vertices which therefore changes the tilt angle in one direction and resultingly inclination).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have modified the optical scanner of Carothers in view of Jeong, Shiraishi, Stenton and Birch by configuring a plurality of a set of prisms to have different tilt angles in a single axis to refract to a desired detector location (Birch, "Calculation of Optimal Facet Angles", Para [0001]).
Regarding claim 8, Carothers in view of Jeong, Shiraishi, and Stenton teaches the optical scanner of claim 7.
However, Carothers in view of Jeong, Shiraishi, and Stenton does not teach wherein output facets of first prisms among the plurality of first prisms disposed at symmetrical locations with respect to the center point of the steering unit have a same angle of inclination.
On the other hand, Birch teaches the symmetrical situating of prisms such that prisms and a same distance away from a point have the same angle of inclination (Birch, “Implementation of Pseudo-Random Prisms", Fig 2b, where in order to focus light into a single dot prisms may be disposed in symmetrical locations with respect to the center of the array with output facets at the same angle of inclination).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have modified the optical scanner of Carothers in view of Jeong, Shiraishi, Stenton and Birch by configuring prisms a symmetric distance from a desired location at the same inclination angle to focus light to a single point (Birch, Fig 2).
Regarding claim 9, Carothers in view of Jeong, Shiraishi, and Stenton teaches the optical scanner of claim 1.
However, Carothers in view of Jeong, Shiraishi, and Stenton does not teach wherein at least two of the plurality of second prisms comprise a plurality of output facets having different angles of inclination.
On the other hand Birch teaches varying angles of inclination in a prism array in a single axis (Birch, "Calculation of Optimal Facet Angles", Fig. 1, Eq. 6, where varying angles of inclination of prism arrays are used. The equation teaches calculating the z-coordinate of each of multiple vertices which therefore changes the tilt angle in one direction and resultingly inclination).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have modified the optical scanner of Carothers in view of Jeong, Shiraishi, Stenton and Birch by configuring a plurality of a set of prisms to have different tilt angles in a single axis to refract to a desired detector location (Birch, "Calculation of Optimal Facet Angles", Para [0001]).
Regarding claim 10, Carothers in view of Jeong, Shiraishi, and Stenton teaches the optical scanner of claim 1.
However, Carothers in view of Jeong, Shiraishi, and Stenton does not teach wherein second prisms among the plurality of second prisms disposed at symmetrical locations with respect to the center point of the steering unit have a same angle of inclination.
On the other hand, Birch teaches the symmetrical situating of prisms such that prisms and a same distance away from a point have the same angle of inclination (Birch, “Implementation of Pseudo-Random Prisms", Fig 2b, where in order to focus light into a single dot prisms may be disposed in symmetrical locations with respect to the center of the array with output facets at the same angle of inclination).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have modified the optical scanner of Carothers in view of Jeong, Shiraishi, Stenton and Birch by configuring prisms a symmetric distance from a desired location at the same inclination angle to focus light to a single point (Birch, Fig 2).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Carothers in view of Jeong, Shiraishi, Stenton, and Goto (US4795224A, “Goto”).
Regarding claim 13 Carothers in view of Jeong, Shiraishi, and Stenton teaches the optical scanner of claim 1, and
wherein the angle of inclination of each of the plurality of reflective facets, respectively, sequentially increases by a half of a vertical resolution of the at least one light source in a circumferential direction (Shiraishi, Para [0035]-[0037] and [0041]-[0043], Fig 3 and 7-8, where the angle of inclination of each of the polygonal mirror 25 reflective surfaces R1-R4 sequentially changes by an amount equal to that spread angle for an improved resolution performance (Para [0078]), overlapping scanning angles being the a part of the sequentially changed spread angle).
However, Carothers in view of Jeong, Shiraishi, and Stenton does not teach wherein a minimum angle of inclination of a reflective facet among the plurality of reflective facets is 0°
On the other hand, Goto teaches a polygonal mirror with increasing angles of intersection and therefore inclination of reflective facets starting at 0° (Goto, Col 7. lin. 66 -Col.8 lin. 28, Fig 3, where an initial angle for a mirror surface 58a of reflection starting at 0 degrees increasing incrementally by 40 degrees).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have modified the optical scanner of Carothers in view of Jeong, Shiraishi, Stenton and Goto by angling multiple facets with sequentially increasing angles to direct an exit path of a beam such that scanning is linear (Goto, Col 7. lin. 70-Col.8 lin. 28).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Carothers in view of Jeong, Shiraishi, Stenton, and Otana (US20210364943A1, “Otana”)
Regarding claim 16, Carothers in view of Jeong, Shiraishi, and Stenton teaches the optical scanner of claim 1, wherein the steering unit further comprises a first steering unit and a second steering unit (Carothers, Para [0025], Fig 3, where the rotatable wedge prisms 206 and 208 are the first steering unit and the first and second steering unit are the same).
However, Carothers in view of Jeong, Shiraishi, and Stenton does not teach, wherein the first steering unit and the second steering unit are disposed at two sides of the polygon mirror, respectively.
On the other hand, Otana teaches a first and second light unit that are symmetrically situated on two sides of a mirror (Otana, Para [0021], Fig 2, where the polygon mirror 62 scans two laser lights from two light sources 61 in different directions. The two directions are "parallel to front-rear direction D1", which is only possible if the light sources are symmetrically situated on either side of the mirror),
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have modified the optical scanner of Carothers in view of Jeong, Shiraishi, Stenton and Otana by positioning multiple lasers on opposite sides of a polygon mirror to improve accuracy of color shift correction when imaging with considering a change in a rotational speed of a scanning member (Otana, Para [0007]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Carothers in view of Jeong, Shiraishi, Stenton, and Mheen et al. (US20140240691A1, “Mheen”).
Regarding claim 19, Carothers in view of Jeong, Shiraishi, and Stenton teaches the LIDAR system of claim 17.
However, Carothers in view of Jeong, Shiraishi, and Stenton does not teach wherein the detector is disposed at a location where the light reflected from the object is directly received.
On the other hand, Mheen teaches a direct reception after reflection off an object of light to a detector (Mheen, Para [0088], Fig 6, where the ladar system is made in an effort to scan a wide area in association with a target, and detectors 720 and 730 directly receive light without being reflected off any other object).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have modified the LIDAR system of Carothers in view of Jeong, Shiraishi, Stenton and Mheen by making the object reflected light directly receivable by detectors to increase scanning to a wide area (Mheen, Para [0016]).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Carothers in view of Jeong, Shiraishi, Stenton, and Ishikawa et al. (US10078132B2, “Ishikawa”).
Regarding claim 20, Carothers in view of Jeong, Shiraishi, and Stenton teaches the LIDAR system of claim 17, wherein the detector is disposed at a location where light which is reflected from the object, incident on a reflective facet of the polygon mirror, and reflected from the reflective facet is received (Carothers, Para [0025], Fig 3, where the monolithic transceiver 202 is situated to receive light from a mirror 320 after being reflected from an object).
However, Carothers in view of Jeong, Shiraishi, and Stenton does not teach wherein the reflective facet to which the light reflected from the object is incident is the same as a reflective facet configured to reflect the light emitted from the at least one light source to the object.
On the other hand, Ishikawa teaches a single mirror unit facet that both reflects to the object and receives light (Ishikawa, Col. 7 lin. 48-64, Fig 17, where mirror unit MU has a reflective facet configured to reflect the light emitted from a light source to the object).
Accordingly, it would have been obvious of one of ordinary skill in the art, before the effective filing date of the invention to have modified the LIDAR system of Carothers in view of Jeong, Shiraishi, Stenton and Ishikawa by using a mirror unit's reflective facet to reflect light by scan an entire range for a detected object (Ishikawa, Col. 9 lin. 12-21).
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 1-20 rejected on the ground of nonstatutory double patenting over claims 1-16 of U.S. Patent No. US11933894B2 (PAT ‘894).
Claims 1-3, 7, 8, and 11-20 are anticipated respectively by claims 1-3, 4, 4, and 7-16 respectively.
Claims 4-6 are rejected over claim 1 of PAT’ 894 in view of Stenton. See rejections under 103 above.
Claims 9 and 10 are rejected over claim of PAT’ 894 in view of Birch. See rejections under 103 above.
Conclusion
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/ZAKI KEHINDE HAWKINS/Examiner, Art Unit 3645
/YUQING XIAO/Supervisory Patent Examiner, Art Unit 3645
1 Gabriel C. Birch, Bryana L. Woo, Amber L. Dagel, et al. "Pseudo-random prism arrays for lensless computational imagers", Proc. SPIE 10590, International Optical Design Conference 2017, 1059029 (27 Nov 2017)
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