NON-FINAL OFFICE ACTION
This non-final office action addresses U.S. Application No. 18/770,030, which is a broadening reissue application of U.S. Application No. 17/128,873 (hereinafter the “873 Application"), entitled LIGHT SOUCE DISPLAY AND PROJECTION DISPLAY APPARATUS, which issued as U.S. Patent No. 11,385,535 (hereinafter the “535 Patent") on July 12, 2022.
The status of the claims is as follows:
Claims 1-17 are pending and examined herein.
Claims 1-6, 9, 11, 15 and 16 are rejected.
Claims 7, 8, 10, 12-14 and 17 are allowed.
I. STATUS OF CLAIMS
The 535 Patent issued with claims 1-11.
Applicant filed a first preliminary amendment on July 11, 2024 (hereinafter the "2024 Preliminary Amendment") along with the filing of the present application. In the 2024 Preliminary Amendment, the specification was amended to add cross-noting information. Furthermore, patented claims 1 and 3-10 were amended, claims 2 and 11 were unchanged and new claims 12-17 were added.
Therefore, claims 1-17 are pending and will be examined herein.
II. PRIORITY
Examiners acknowledge that the present reissue application is a reissue application of the 873 Application, now the 535 Patent. Examiners further acknowledge the claim of foreign priority to Japanese Patent Application No. JP2019-231781, filed December 23, 2019 and Japanese Patent Application No. JP2020-206398, filed December 14, 2020.
Examiners further acknowledge a continuation application of the 873 Application was filed on June 8, 2022, which was assigned application No. 17/835,228 and is now U.S. Patent No. 11,550,213 (hereinafter the “213 Patent”).
III. CLAIM INTERPRETATION
After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiners, the Examiners find that they are unable to locate any lexicographic definitions (either express or implied) with the required clarity, deliberateness, and precision with regard to pending and examined claims. Because the Examiners are unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiners conclude that Applicant is not his own lexicographer for the pending and examined claims. See MPEP §2111.01(IV).
The Examiners further find that because the pending and examined claims herein recite neither “step for” nor “means for” nor any substitute therefore, the examined claims fail Prong (A) as set forth in MPEP §2181(I). Because all examined claims fail Prong (A) as set forth in MPEP §2181(I), the Examiners conclude that all examined claims do not invoke 35 U.S.C. §112(f). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential)(where the Board did not invoke 35 U.S.C. § 112(f) because “means for” was not recited and because applicant still possessed an opportunity to amend the claims).
Because of the Examiners’ findings above that Applicant is not his own lexicographer and the pending and examined claims do not invoke 35 U.S.C. §112(f) the pending and examined claims will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II).
IV. DOUBLE PATENTING REJECTIONS
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 C.F.R. §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 C.F.R. §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 C.F.R. §1.111(a). For a reply to final Office action, see 37 C.F.R. §1.113(c). A request for reconsideration while not provided for in 37 C.F.R. §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.
A. Double Patenting Rejections Applying the 213 Patent
Claims 1-6, 9, 11, 15 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of the 213 Patent. Although the claims at issue are not identical, they are not patentably distinct because they are merely re-worded versions of the claims with the same scope. For example, claim 1 of the 213 Patent reads on claims 1 and 15 in this reissue application, claim 2 of the 213 Patent reads on claim 2 in this reissue application, claim 3 of the 213 Patent read on claim 3 of this reissue application; claim 4 of the 213 Patent reads on claim 6 in this reissue application; claim 5 of the 213 Patent reads on claim 9 in this reissue application and claim 6 of the 213 Patent reads on claim 11 in this reissue application. Furthermore, claim 1 of the 213 Patent reads on claims 4 and 16 in this reissue application and claim 3 of the 213 Patent reads on claim 5 in this reissue application.
V. ALLOWABLE SUBJECT MATTER
While claims 1-6, 9, 11, 15 and 16 are rejected under double patenting as provided above, all claims in this reissue application are allowable over the prior art.
Regarding claims 1-3, 6, 9, 11 and 15, Examiners find the prior art of record in this reissue application does not show or teach wherein with the optical axis of the lens, as a boundary, “the second green solid-state light source array and the second red solid-state light source array are disposed to confront each other” in the manner as recited in the claims and in combination with the other features of the claims.
Regarding claims 4, 5 and 16, Examiners find the prior art of record in this reissue application does not show or teach wherein with the optical axis of the lens, as a boundary, “the second green solid-state light source array and the first red solid-state light source array are disposed to confront each other” in the manner as recited in the claims and in combination with the other features of the claims.
Regarding claims 7, 8, 10 and 12, Examiners find the prior art of record in this reissue application does not show or teach wherein with the optical axis of the lens, as a boundary, “the first red solid-state light source array is disposed in a position confronting a point between the first solid-state light source array and the first green solid-state light source array” and “the second red solid-state light source array is disposed in a position confronting a point between the first green solid-state light source array and the second green solid-state light source array” in the manner as recited in the claims and in combination with the other features of the claims.
Regarding claims 13 and 14, Examiners find the prior art of record in this reissue application does not show or teach wherein with the optical axis of the lens, as a boundary, the third solid-state light source array is disposed on a first side, and the first solid-state light source array and the second solid-state light source array are disposed on a second side that is opposite to the first side” in combination with arrangement and function of the first mirror, the second mirror, the first dichroic mirror, the first polarization mirror, the second polarization mirror and the second dichroic mirror in the manner as recited in the claims and in combination with the other features of the claims.
VI. PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation apprise the Office of any prior or concurrent proceedings in which the 535 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
VII. INFORMATION MATERIAL TO PATENTABILITY
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
VIII. CONCLUSION
Claims 1-6, 9, 11, 15 and 16 are rejected.
Claims 7, 8, 10, 12-14 and 17 are allowed.
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KENNETH WHITTINGTON whose telephone number is (571) 272-2264. The Examiner can normally be reached on 8:30am - 5:00pm, Monday - Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
Conferees:
/MY TRANG TON/Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992