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 .
Terminal Disclaimer
This application was filed on or after September 16, 2012. The party identified in the terminal disclaimer filed on 08/25/2026 is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c).
For cases filed on/after 9/16/12, 37 CFR 1.321 specifies that the applicant can disclaim, and the terminal disclaimer must specify the extent of the applicant's ownership.
A request under 37 CFR 1.46(c) to change the applicant needs to be filed, which is (1) a request, signed by a 1.33(b) party, (2) a corrected ADS (37 CFR 1.76(c)) that identifies the "new" applicant in the applicant information, and is underlined since it is new, and (3) a 3.73(c) statement showing chain of title to the new applicant. Along with the § 1.46(c) request we need a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, unless they file a TD that is signed by the applicant.
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, 8-9, 11-14 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 12-13 of U.S. Patent No. 12,032,277 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 reads on patented claims 1 and 3 as follow: a phosphor wheel (column 14, line 57) comprising: a first substrate having a first main surface and a second main surface (column 14, lines 58-59), the second main surface being opposite to the first main surface (column 14, lines 59-60); a phosphor ring provided on the first main surface of the first substrate (column 14, lines 62-63); a second substrate having a third main surface and a fourth main surface (column 14, lines 64-65), the fourth main surface being opposite to the third main surface (column 14, lines 65-66), the third main surface being located between the second main surface and the fourth main surface (column 14, line 66 through column 15, line 1); and a plurality of heat dissipation fins disposed at the fourth main surface side of the second substrate (column 15, lines 3-4), wherein the second main surface of the first substrate and the third main surface of the second substrate are in thermal contact with each other (column 15, lines 7-9), and the plurality of heat dissipation fins are disposed at positions at least partially overlapping the phosphor ring when viewed from the fourth main surface side of the second substrate (column 15, lines 31-33).
Claim 8 reads on patented claim 1 (column 15, lines 10-19).
Claim 9 reads on patented claim 2.
Claim 11 reads on patented claim 4.
Claim 12 reads on patented claim 5.
Claims 13 and 14 read on patented claim 6.
Claim 18 reads on patented claim 12.
Claim 19 reads on patented claim 13.
Allowable Subject Matter
Claims 2-7, 10 and 15-17 are objected to as being dependent upon a rejected base claim, but would be allowable upon timely filing of terminal disclaimer in compliance with 37 CFR 1.321(c) to overcome the nonstatutory double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, Tabayashi et al. (US Pub. No. 2022/0390822 A1) discloses a phosphor wheel (Figure 3, element 20) comprising: a first substrate (Figure 3, element 22) having a first main surface (Figure 3, element 22a) and a second main surface (Figure 3, element 22b), the second main surface (Figure 3, element 22b) being opposite to the first main surface 22a); a phosphor ring (Figure 3, element 23) provided on the first main surface (Figure 3, element 22a) of the first substrate (Figure 3, element 22); a second substrate (Figure 3, element 30) having a third main surface (Figure 3, element 30a) and a fourth main surface (Figure 3, element 30b), the fourth main surface (Figure 3, element 30b) being opposite to the third main surface (Figure 3, element 30a), the third main surface (Figure 3, element 30a) being located between the second main surface (Figure 3, element 22b) and the fourth main surface 30b); and a plurality of heat dissipation fins (Figure 3, element 31) disposed at the fourth main surface (Figure 3, element 30b) side of the second substrate (Figure 3, element 30). However, Tabayashi et al. and the prior art of record neither shows nor suggests a phosphor wheel comprising a second main surface of the first substrate and the third main surface of the second substrate are in thermal contact with each other, and the plurality of heat dissipation fins are disposed at positions at least partially overlapping the phosphor ring when viewed from the fourth main surface side of the second substrate.
Regarding claims 2-19, the claims are allowable based on their dependence from claim 1.
Since the prior art of record, individually or in combination, does not teach a phosphor wheel comprising a second main surface of the first substrate and the third main surface of the second substrate are in thermal contact with each other, and the plurality of heat dissipation fins are disposed at positions at least partially overlapping the phosphor ring when viewed from the fourth main surface side of the second substrate, a timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) may be used to overcome the rejection based on a nonstatutory double patenting and put the case in condition for allowance.
Any comments considered necessary by the applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance”.
Response to Arguments
Applicant's arguments filed on 08/25/2026 have been fully considered but they are not persuasive.
The party identified in the terminal disclaimer filed on 08/25/2026 is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c).
A request under 37 CFR 1.46(c) to change the applicant needs to be filed, which is (1) a request, signed by a 1.33(b) party, (2) a corrected ADS (37 CFR 1.76(c)) that identifies the "new" applicant in the applicant information, and is underlined since it is new, and (3) a 3.73(c) statement showing chain of title to the new applicant. Along with the § 1.46(c) request we need a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, unless they file a TD that is signed by the applicant.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAGDA CRUZ whose telephone number is (571)272-2114. The examiner can normally be reached Monday-Friday from 9:00 AM to 5:30 PM.
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, Toan Ton can be reached at 571-272-2303. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAGDA CRUZ/
Primary Examiner
Art Unit 2882
10/01/2026
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