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 .
Information Disclosure Statement
The information disclosure statement filed 11/6/2024 has been considered by the examiner.
Drawings
The drawings filed 7/22/2024 are approved by the examiner.
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, 4-8, 11 and 14-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,078,530 in view of Popovich et al (United States Patent Application Publication No. 2018/0003805).
With respect to claim 1, the claims of USPN 12,078,530 teach or suggest:
A system [ taught by line 1 of claim 1 ] comprising: a lens configured to focus light from a scene [ taught by line 2 of claim 1 ]; an aperture defined within an opaque material [ taught by line 5 of claim 1 ]; a waveguide having a first side that receives light focused by the lens and transmitted through the aperture, wherein the waveguide guides at least a portion of the received light toward a second side of the waveguide by total internal reflection or frustrated total internal reflection [ taught by claim 6 ], and wherein the waveguide comprises a grating coupler; and a plurality of light detectors optically coupled to the waveguide [ taught by lines 12-13 of claim 1 ] via the grating coupler.
The claims of USPN 12,078,530 do not teach a grating coupler.
Figure 3 of Popovich et al teaches it was known that waveguides included grating elements (45, 48) to perform the function of directing light in and out of the waveguide.
Therefore, it would have been obvious for a person of ordinary skill in the art to have had a reasonable expectation of success in adding gratings to the device set forth by claim 1 of USPN 12,078,530; when seeking known means to directed light to the detectors.
Claim 11 is rejected by the combination of the claims of USPN 12,078,530 and Popovich et al, as applied to claim 1, in light of claim 11 of USPN 12,078,530.
Claims 4 and 14 are taught by claim 8 of USPN 12,078,530.
Claims 5 and 15 are taught by claim 9 of USPN 12,078,530.
Claims 6 and 16 are taught by claim 2 of USPN 12,078,530.
Claims 7 and 17 are taught by claim 3 of USPN 12,078,530.
Claims 8 and 18 are taught by claim 5 of USPN 12,078,530.
Claims 1, 4, 5, 9-11, 14, 15 , 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,041,753 in view of Popovich et al (United States Patent Application Publication No. 2018/0003805).
With respect to claim 1, the claims of USPN 11,041,753 teach or suggest: A system [ taught by line 1 of claim 1 ] comprising: a lens configured to focus light from a scene [ taught by line 2 of claim 1 ]; an aperture defined within an opaque material [ taught by line 3 of claim 1 ]; a waveguide having a first side that receives light focused by the lens and transmitted through the aperture, wherein the waveguide guides at least a portion of the received light toward a second side of the waveguide by total internal reflection or frustrated total internal reflection [ taught by lines 10-14 of claim 1 ], and wherein the waveguide comprises a grating coupler; and a plurality of light detectors optically coupled to the waveguide [ taught by lines 15-16 of claim 1 ] via the grating coupler.
The claims of USPN 11,041,753 do not teach a grating coupler.
Figure 3 of Popovich et al teaches it was known that waveguides included grating elements (45, 48) to perform the function of directing light in and out of the waveguide.
Therefore, it would have been obvious for a person of ordinary skill in the art to have had a reasonable expectation of success in adding gratings to the device set forth by claim 1 of USPN 11,041,753; when seeking known means to directed light to the detectors.
Claim 11 is rejected by the combination of the claims of USPN 11,041,753 and Popovich et al, as applied to claim 1, in light of claim 11 of USPN 11,041,753.
Claims 4 and 14 are taught by claim 2 of USPN 11,041,753.
Claims 5 and 15 are taught by claim 3 of USPN 11,041,753.
Claim 9 and 19 are taught by claim 8 of USPN 11,041,753.
Claims 10 and 20 are produced by the modifications of claims 1 and 11 in view of Popovich et al in that gratings would be used to direct light in the additional waveguide taught by claim 8 of USPN 11,041,753.
Claim 1-5 and 11-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 10,502,618 in view of Popovich et al (United States Patent Application Publication No. 2018/0003805).
With respect to claim 1, the claims of USPN 10,502,618 teach or suggest:
A system [ taught by line 1 of claim 1 ] comprising: a lens configured to focus light from a scene [ taught by lines 2-3 of claim 1 ]; an aperture defined within an opaque material [ taught by line 4 of claim 1 ]; a waveguide having a first side that receives light focused by the lens and transmitted through the aperture, wherein the waveguide guides at least a portion of the received light toward a second side of the waveguide by total internal reflection or frustrated total internal reflection [ taught by lines 5-10 of claim 1 ], and wherein the waveguide comprises a grating coupler; and a plurality of light detectors optically coupled to the waveguide [ taught by lines 13-14 of claim 1 ] via the grating coupler.
The claims of USPN 10,502,618 do not teach a grating coupler.
Figure 3 of Popovich et al teaches it was known that waveguides included grating elements (45, 48) to perform the function of directing light in and out of the waveguide.
Therefore, it would have been obvious for a person of ordinary skill in the art to have had a reasonable expectation of success in adding gratings to the device set forth by claim 1 of USPN 10,502,618; when seeking known means to directed light to the detectors.
Claim 11 is rejected by the combination of the claims of USPN 10,502,618 and Popovich et al, as applied to claim 1, in light of claim 18 of USPN 10,502,618.
Claims 2, 3, 12 and 13 are taught by lines 11-12 of claim 1 and claim 6 of USPN 10,502,618.
Claims 4 and 14 are taught by claim 2 of USPN 10,502,618.
Claims 5 and 15 are taught by claim 3 of USPN 10,502,618.
Allowable Subject Matter
Upon filing terminal disclaimers overcoming the rejections of claims 1-20 for non-statutory double patenting with respect to United States Patent Numbers 12,078,530, 11,041,753 and 10,502,618; their subject matter would be allowable.
The cited prior art does not teach the combination of a grating and a waveguide utilizing either total internal reflection or frustrated total internal reflection, as these elements are presented in the entire context of claims 1-20.
Any inquiry concerning this communication should be directed to MARK HELLNER at telephone number (571)272-6981.
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/MARK HELLNER/ Primary Examiner, Art Unit 3645
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