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 .
Claim Objections
Claim 8 is objected to because of the following informalities: the end of line 2 should read “said planar major external surfaces”. Appropriate correction is required.
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 1-7 of the instant application [IA] are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12124037 [herein may be referred to as, simply: ‘037]. Although the claims at issue are not identical, they are not patentably distinct from each other because IA claim 1 is essentially a broadened version of ‘037 claim 1. IA claim 1 leaves out the limitation “wherein said first orientation of said first set of partially-reflecting surfaces is orthogonal to said planar major external surfaces”.
IA claims 2-7 have a one-to-one correspondence with ‘037 claims 2-7.
Allowable Subject Matter
Claims 9-10 are allowed.
Claim 8 objected to as being dependent upon a rejected base claim, but can be made allowable if the objection above is overcome and if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art, either alone or in combination, does not disclose or render obvious said first set of partially-reflecting surfaces being sandwiched between clear face plates of a first thickness; and b. a second region containing a second set of planar, mutually-parallel, partially-reflecting surfaces having a second orientation non-parallel to said first orientation, said second set of partially-reflecting surfaces being sandwiched between clear face plates of a second thickness, said second thickness being greater than said first thickness, wherein said first set of face plates and said second set of face plates are parts of a pair of mutually-parallel planar major external surfaces extending continuously across said first and second regions, and wherein said first set of partially-reflecting surfaces are oriented so that a part of image illumination propagating within said LOE by internal reflection at said planar major external surfaces from said coupling-in region is deflected towards said second region, and wherein said second set of partially-reflecting surfaces are at an oblique angle to said planar major external surfaces so that a part of image illumination propagating within said LOE by internal reflection at said planar major external surfaces from said first region into said second region is coupled out of said LOE towards the user in combination with the rest of claim 9.
It is noted that claim 9 is allowable because of the unique combination of each and every specific element stated in the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mr. Michael Mooney whose telephone number is 571-272-2422. The examiner can normally be reached during weekdays, M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uyen-Chau Le can be reached on 571-272-2397. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Center. Should you have questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). For checking the filing status of an application, please refer to <https://www.uspto.gov/patents/apply/checking-application-status/check-filing-status-your-patent-application>.
/MICHAEL P MOONEY/Primary Examiner, Art Unit 2874
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