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 .
Response to Amendment
The amendments to the disclosure in the preliminary amendment filed 11/18/2024 are acknowledged and accepted.
The cancellation of Claims 21-36 in the preliminary amendment filed 11/18/2024 is acknowledged and accepted.
Priority
Acknowledgment is made of applicant’s claim for priority under 35 U.S.C. 119 (e) and 120.
Drawings
The originally filed drawings were received on 9/5/2024. The replacement drawings were received on 11/18/2024. These drawings are objected to for the following reason(s) as set forth below.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Figure 12- Reference numeral 1202.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Examples of such errors are set forth below.
The disclosure is objected to because of the following informalities:
Paragraph 0040, line 4- ‘1shows’ should read ‘1 shows’
Paragraph 0076, line 8- ‘1412for’ should read ‘1412 for’.
Appropriate correction is required.
Claim 2 is objected to because of the following informalities:
Claim 2, line 2- ‘at one’ should read ‘at least one’.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites the limitation "the HLA" in line 3. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, this limitation has been taken to be ‘a HLA’.
Claims 11-20 are dependent on Claim 10, and hence inherit the deficiencies of Claim 10.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-2, 4-5, 7-10, 15-20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 1-23 of prior U.S. Patent No. 11092930, of record. This is a statutory double patenting rejection.
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 3, 6, 11-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-23 of U.S. Patent No. 11092930, of record. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-23 of U.S. Patent No. 11092930 similarly claims and discloses the interference pattern comprises holograms encoded to direct light as an array of lenslets, thereby forming a holographic lenslet array ("HLA") (See for example Claim 3); the HLA comprises a plane subdivided into sites, and the substrate sites correspond to the sites of the HLA (See for example Claim 4); the corresponding sites of the HLA and the ISA at least partially overlap (See for example Claim 8); the corresponding sites of the HLA and the ISA have different dimensions (See for example Claim 8); the corresponding sites of the HLA and the ISA are co-centered (See for example Claim 8); and the chief ray propagation path comprises the light propagation path between one of the ISA subsite locations and a center of the corresponding respective site of the HLA (See for example Claim 9).
Claims 1-2, 8-9 rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-16 of U.S. Patent No. 12111615. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-16 of U.S. Patent No. 12111615 similarly claims and discloses a waveguide (See for example Claim 1) comprising, a substrate (See for example Claim 1, line 2; Claim 2) comprising a photographic medium; and an interference pattern encoded in the photographic medium, the interference pattern defining an array of substrate sites in the substrate (See for example Claim 1, lines 3-5); wherein the interference pattern is configured to propagate light along light propagation paths extending from light locations on a first side of the substrate toward a second side of the substrate (See for example Claim 1, lines 6-9); wherein the light propagation paths comprise sets of light propagation paths that extend through a same substrate site and a same light location, wherein each set of light propagation paths are configured to extend in substantially a unique direction on the second side of the substrate and converge from the same substrate site to the same light location on the first side of the substrate, the unique direction being determined by an angular direction of a chief ray propagation path in each set of light propagation paths (See for example Claim 1, lines 10-19); whereby, the array of substrate sites is configured to propagate light according to a four-dimensional light field coordinate system comprising spatial coordinates defined by positions of the substrate sites and angular coordinates defined by the unique directions of the sets of light propagation paths for each substrate site (See for example Claim 1, lines 20-25). Claims 1-16 of U.S. Patent No. 12111615 further similarly claims and discloses the photographic medium comprises at one of the materials selected from the group consisting of photographic emulsions, dichromated gelatin, photoresists, photothermoplastics, photopolymer, and photorefractives (See for example Claim 2); a holographic energy directing system, the system comprising the above waveguide and an illumination source array ("ISA") configured to provide illumination at the light locations on the first side of the substrate (See for example Claim 3); and the ISA comprises a plurality of light sources at the light locations on the first side of the substrate (See for example Claim 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARNEL C LAVARIAS whose telephone number is (571)272-2315. The examiner can normally be reached M-F 10:30 AM-7 PM.
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ARNEL C. LAVARIAS
Primary Examiner
Group Art Unit 2872
7/1/2026
/ARNEL C LAVARIAS/Primary Examiner, Art Unit 2872
Prosecution Insights