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 .
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.
Claim 1 and 12 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,111,473. This is a statutory double patenting rejection.
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 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,111,473.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,111,473 discloses:
A wearable device, comprising: a light source configured to generate image light comprising a first bandwidth of light, the first bandwidth of light centered at a first frequency, the light source comprising a color source; a see-through display configured to present the image light to a user, the see-through display comprising a mirror configured to: direct the image light towards an eye of the user; and transmit environmental light, wherein: the image light does not comprise the environmental light, the environmental light comprises a second bandwidth centered at a second frequency, and the second frequency differs from the first frequency by less than a threshold frequency; and one or more filters, the one or more filters configured to apply a bandpass filter to an output of the color source to transmit the first bandwidth of light.
Claim 1 of the instant application does not disclose “a color source”, however in the field of head mounted displays and augmented reality, a light source comprising a color source is well known in the art.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,111,473 discloses:
12. A method comprising: generating, via a light source of a wearable head device, image light comprising a first bandwidth of light, the first bandwidth of light centered at a first frequency, the light source comprising a color source; presenting, via a see-through display of the wearable head device, the image light to a user of the wearable head device, the see-through display comprising a mirror; directing, via the mirror, the image light towards an eye of the user; transmitting, via the mirror, environmental light, wherein: the image light does not comprise the environmental light, the environmental light comprises a second bandwidth centered at a second frequency, and the second frequency differs from the first frequency by less than a threshold frequency; and applying, via one or more filters of the wearable head device, a bandpass filter to an output of the color source to transmit the first bandwidth of light.
Claim 14 of the instant application does not disclose “a color source”, however in the field of head mounted displays and augmented reality, a light source comprising a color source is well known in the art.
Claims 2-11, 15, 17, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 13, 15, 16, and 19, of U.S. Patent No. 12,111,473 because the claims are identical.
Claims 13, 16, and 18 are objected to because they depend on claims rejected on the ground of nonstatutory double patenting.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nortrup et al. (US11366320).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH P MARTINEZ whose telephone number is (571)272-2335. The examiner can normally be reached Monday-Thursday 9am to 7pm PACIFIC.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bumsuk Won can be reached at (571) 272-2713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Joseph P Martinez/ Primary Examiner, Art Unit 2872 5-29-26
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