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
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.
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Claims 1 and 5-8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of U.S. Patent No. 12,140,779. Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 1 of this application, claim 1 of US 12,140,779 teaches all the limitations of this claim except for specifying the method of manufacturing the diffuser. However given that the method of manufacturing the diffuser in claim 1 of this application is merely to form all the elements of the diffuser as claimed in 12,140,779, the claim scope is the same and could lead to harassment by multiple assignees.
Claim 5 corresponds to limitations found in claim 2 of US 12,140,779.
Claim 6 corresponds to limitations found in claim 3 of US 12,140,779.
Claim 7 corresponds to limitations found in claim 5 of US 12,140,779.
Claim 8 corresponds to limitations found in claim 4 of US 12,140,779.
Claim 10 and 12-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 of U.S. Patent No. 12,140,779 in view of Hsu et al. (US 2019/0353994 A1).
Regarding claim 10, claim 1 of US 12,140,779 teaches the diffuser comprises:
A transparent diffuser substrate having a front side and a back side opposite the front side, wherein the transparent diffuser substrate is transparent for the laser light at the excitation wavelength (column 8 lines 62-64);
Microstructures disposed on or formed into the front side of the transparent diffuser substrate and configured to despeckle the laser light at the excitation wavelength (column 8 lines 65-67);
A reflective film coated directly onto the back side of the transparent diffuser substrate (column 9 lines 1-2);
An extinction layer coated onto the reflective film and configured to block the laser light at the excitation wavelength (column 9 lines 3-4),
Wherein an optical interface defined at a junction of the back side of the transparent diffuser substrate and the reflective film has a reflectivity of at least 96% for the laser light at the excitation wavelength (column 9 lines 5-8).
Claim 1 of US 12,140,779 does not specify connecting a motor to a disk to rotate the disk via the motor; providing an optical ring including at least one fluorescent segment and a diffuser segment; and securing the optical ring to the disk such that the optical ring rotates with the disk.
Hsu teaches connecting a motor (110, figure 2) to a disk (120, figure 2) to rotate the disk via the motor; providing an optical ring (160, 170, figure 2) including at least one fluorescent segment (160) and a diffuser segment (170, paragraph 0027); and securing the optical ring to the disk such that the optical ring rotates with the disk (140, figure 2).
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to modify the diffuser of Claim 1 of US 12,140,779 to function with the disc of Hsu in order to cool the diffuser segment more effectively.
Claim 12 corresponds to limitations found in claim 4 of US 12,140,779.
Claim 13 corresponds to limitations found in claim 6 of US 12,140,779.
Claim 14 corresponds to limitations found in claim 2 of US 12,140,779.
Claim 15 corresponds to limitations found in claim 5 of US 12,140,779.
Claim 16 corresponds to limitations found in claim 3 of US 12,140,779.
Regarding claim 17, Hsu further teaches forming a sector cutaway in the disk, wherein the sector cutaway formed in the disc is aligned with the diffuser segment (see 1222, figure 2).
It would have been obvious to a person having ordinary skill in the art at the time the invention was made to modify the diffuser of Claim 1 of US 12,140,779 to function with the disc of Hsu in order to cool the diffuser segment more effectively.
Allowable Subject Matter
Claims 2-4, 9, 11, and 18-21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 2-4, 9, 11 and 18-21 prior art does not teach adding the extinction layer onto the reflective film as claimed in claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN D HOWARD whose telephone number is (571)270-5358. The examiner can normally be reached M-F 8-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minh-Toan Ton can be reached at 5712722303. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN D HOWARD/Primary Examiner, Art Unit 2882 6/10/2026
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