DETAILED ACTION
Reissue
The present reissue application is directed to US 10,871,655 B2 (“655 Patent”). 655 Patent issued on December 22, 2020 with claims 1-5 from application 16/068,985, which is a 371 of PCT/JP2016/086914 filed on December 12, 2016, and claims priority to JP 2016-024711 filed on February 12, 2016 and JP 2016-071034 filed on March 31, 2016.
This application was filed on September 9, 2024. Since this date is after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. Furthermore, the present application is being examined under the first inventor to file provisions of the AIA .
This application is a continuation reissue of reissue application 18/081,853 (now US RE50,118 E).
This application presents broadened claims, which are permitted because Applicant filed these claims and demonstrated an intent to broaden within two years of the issue date of 655 Patent.
The most recent amendment was filed on September 9, 2024. The status of the claims is:
Claims 1-5: Original
Claims 6-12: New
This is a first, non-final action.
References and Documents Cited in this Action
655 Patent (US 10,871,655 B2)
US RE50,118 E
Summary of Rejections and Objections in this Action
Examiner objects to the specification amendment and the reissue declaration.
Claims 1-12 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251.
Claims 1-5 are also rejected under 35 U.S.C. 251 because claims 1-5 have been superseded by reissuance of claims 1-5 in previous reissue US RE50,118 E.
Claims 6-12 are also rejected under 35 U.S.C. 251 for including subject matter directed to non-elected inventions subject to a restriction requirement during the prosecution of 655 Patent.
Claims 1-5 are rejected under 35 U.S.C. 112(b) as being indefinite.
Summary of the Claims
655 Patent is directed to an image display apparatus mounted in a vehicle for displaying information, e.g. on a windshield as a heads up display. Independent claims 1 and 6 are representative:
1. An image display apparatus for a vehicle which is mounted on a vehicle, and is configured to project an image light on a windshield and to form a virtual image in front of the windshield to display an image for a driver, the image display apparatus comprising:
an image display unit that includes a light source and a display element and emits the image light;
a mirror configured to reflect the image light emitted from the image display unit toward the windshield;
a mirror drive unit that is controlled to change an angle and a position of the mirror; and
a control unit configured to determine change amounts in the angle and the position of the mirror and controls the mirror drive unit,
wherein the control unit is configured to determine the change amounts in the angle and the position of the mirror in conjunction with each other to cause the virtual image to be visually recognized and prevent a display state of the image for the driver from changing when a position of the driver’s eyes changes, and
wherein the mirror drive unit includes a link mechanism having three rotary motors configured to rotate the mirror and two movable arms which couple the rotary motors with each other.
6. An image display apparatus comprising:
an image display unit that includes a light source and a display element that outputs light emitted from the light source through an illumination optical system as image light; and
a moving unit for moving the position of the image display unit,
wherein, the moving unit, in the width direction of the vehicle, moves the image display unit left and right direction along a curved rail or a linear rail.
Specification
Examiner objects to the amendment to the specification filed on September 9, 2024. Matter to be added by reissue must be underlined. See 37 CFR 1.173(d). Furthermore, Applicant should include the information “(now US RE50,118 E)” after “application no. 18/081,853” in the sentence.
Oath/Declaration
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
The declarations filed by the assignees state the following reason for this reissue application:
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New independent claim 6 does not contain the stated limitation of patent claim 1 because claims 6-12 are directed to a different, non-elected invention compared to the elected invention of patent claim 1. A reissue applicant’s failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. See MPEP 1412.01 II and In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); and In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). See also Ex parte Sandwick, Appeal No. 2018-008369 (PTAB July 23, 2019).
Claim Rejections - 35 USC § 251
Claims 1-12 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claims 1-5 are also rejected under 35 U.S.C. 251 because claims 1-5 have been superseded by reissuance of claims 1-5 in previous reissue US RE50,118 E. The same claim of the patent cannot be presented for examination in more than one of multiple divisional/continuing reissue applications, as a pending claim, in either its original or amended versions. Once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application.
Claims 6-12 are also rejected under 35 U.S.C. 251 for including subject matter directed to non-elected inventions subject to a restriction requirement during the prosecution of 655 Patent.
More specifically, claims 6-12 are directed to “Group II” as discussed in the requirement for restriction mailed on March 30, 2020 in application 16/068,985 (“an image display apparatus for a vehicle with vehicle information acquisition unit acquiring information for position of a driver's eyes, driving operation of the driver, and a road condition, used by display area control means to move display area in a right and left direction”). Group II is distinguished from Groups I and III by Group II’s details with respect to moving the image display unit along a rail in a right and left direction, i.e., in the width direction of the vehicle, in contrast with Group I’s details with respect to changing the angle and position of the mirror to prevent a display state of the image for the driver from changing when a position of the driver’s eyes changes and Group III’s details with respect to switching the image to be displayed according to the angle of the mirror. As noted in the 16/068,985 restriction requirement, the details of Group II are not required in Groups I or III (and the details of Groups I or III are not required in Group II).
Applicant elected Group I without distinctly and specifically pointing out supposed errors in the restriction requirement (see response filed on May 20, 2020 in 16/068,985); this election was treated as an election without traverse. Applicant did not file a divisional application on the non-elected Group II invention. Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. See MPEP 1412.01 II and In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); and In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). See also Ex parte Sandwick, Appeal No. 2018-008369 (PTAB July 23, 2019).
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 1-5 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.
Claims 1-5 are indefinite because the invention of claims 1-5 is not particularly pointed out and distinctly claimed. Claims 1-5 present one coverage in US RE50,118 E and another coverage pending (with the possibility of amendment) in the present reissue application. This is inconsistent. Again, as noted above with respect to 35 U.S.C. 251, the same claim of the patent cannot be presented for examination in more than one of multiple divisional/continuing reissue applications, as a pending claim, in either its original or amended versions.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which this reissue application is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
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 https://www.uspto.gov/patents/laws/interview-practice.
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Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to Examiner Christina Leung at telephone number (571) 272-3023; the Examiner’s supervisor, SPE Patricia Engle at (571) 272-6660; or the Central Reexamination Unit at (571) 272-7705.
/CHRISTINA Y. LEUNG/Primary Examiner, Art Unit 3991
Conferees: /DEANDRA M HUGHES/ /Patricia L Engle/
Reexamination Specialist, AU 3992 SPRS, AU 3991
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