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
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 12-15, and 17 of U.S. Patent No. 12,148,146. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current application are broader than the claims of the conflicting patent. See the correspondence table below:
Current application 18/912,418
Conflicting patent 12,148,146
1
9
2
9
3
13
4
14
5
15
6
12
7
17
8
9
9
9
10
13
11
14
12
15
13
12
14
17
15
9
16
9
17
13
18
14
19
15
20
12
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the double patenting rejection(s) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record, individually or in combination, does not disclose or suggest in
claim 1: “the graininess variable is mapped to a first axis of the multidimensional coordinate system, and a second variable is mapped to a second axis of the multidimensional coordinate system; access a database of spatial appearance space coordinates, wherein the database comprises multiple unique spatial appearance space coordinates in the multidimensional coordinate system associated with different reference coatings; identify spatial appearance space coordinates associated with a plurality of potentially matching reference coatings from the database of spatial appearance space coordinates; calculate a spatial-appearance-space distance between the identified spatial appearance space coordinates associated with the potentially matching reference coatings and the spatial appearance space coordinates of the target coating for each of the potentially matching reference coatings; identify particular spatial appearance space coordinates from the identified spatial appearance space coordinates associated with the plurality of potentially matching reference coatings that are associated with a smallest spatial-appearance-space distance from the spatial appearance space coordinates of the target coating; and display a visual interface element indicating a particular reference coating that is associated with the particular spatial appearance space coordinates as a proposed spatial appearance match to the target coating.”
claim 8: “the sparkle area variable is mapped to a first axis of the multidimensional coordinate system, and a second variable is mapped to a second axis of the multidimensional coordinate system; access a database of spatial appearance space coordinates, wherein the database comprises multiple unique spatial appearance space coordinates in the multidimensional coordinate system associated with different reference coatings; identify spatial appearance space coordinates associated with a plurality of potentially matching reference coatings from the database of spatial appearance space coordinates; calculate a spatial-appearance-space distance between the identified spatial appearance space coordinates associated with the potentially matching reference coatings and the spatial appearance space coordinates of the target coating for each of the potentially matching reference coatings; identify particular spatial appearance space coordinates from the identified spatial appearance space coordinates associated with the plurality of potentially matching reference coatings that are associated with a smallest spatial-appearance-space distance from the spatial appearance space coordinates of the target coating; and display a visual interface element indicating a particular reference coating that is associated with the particular spatial appearance space coordinates as a proposed spatial appearance match to the target coating.”
claim 15: “the sparkle intensity variable is mapped to a first axis of the multidimensional coordinate system, and a second variable is mapped to a second axis of the multidimensional coordinate system; access a database of spatial appearance space coordinates, wherein the database comprises multiple unique spatial appearance space coordinates in the multidimensional coordinate system associated with different reference coatings; identify spatial appearance space coordinates associated with a plurality of potentially matching reference coatings from the database of spatial appearance space coordinates; calculate a spatial-appearance-space distance between the identified spatial appearance space coordinates associated with the potentially matching reference coatings and the spatial appearance space coordinates of the target coating for each of the potentially matching reference coatings; identify particular spatial appearance space coordinates from the identified spatial appearance space coordinates associated with the plurality of potentially matching reference coatings that are associated with a smallest spatial-appearance-space distance from the spatial appearance space coordinates of the target coating; and display a visual interface element indicating a particular reference coating that is associated with the particular spatial appearance space coordinates as a proposed spatial appearance match to the target coating.”
Kettler et al. (WO 2018/041727) discloses most of the limitations of claims 1, 9, and 20 but since pairs of the three claimed variables together are not mapped to axes, the claims each as a whole are not clearly taught by Kettler.
Prakash (U.S. Pub. No. 2009/0019086) discloses determining a fractional area of an image having image intensities above a threshold (see [0122]). However, modifying the Kettler reference to add an axis which maps the sparkle area variable, as claimed above, is not fairly taught or suggested.
Sai et al. (U.S. Pub. No. 2007/0172113)
Bischoff et al. (U.S. Pub. No. 2022/0381615)
Prakash et al. (U.S. Pub. No. 2004/0252308)
McClanahan et al. (U.S. Pub. No. 2004/0073526)
McClanahan et al. (U.S. Pub. No. 2002/0106121)
Ferrero et al. (Definition of a measurement scale of graininess from reflectance and visual measurements, 2018, Optics Express, Vol. 26, No. 23, Pages 1-12)
Perales et al. (Graininess characterization by multidimensional scaling, 2019, Journal of Modern Optics, Vol. 66, No. 9, Pages 929-938)
Perales et al. (Evaluating the Graininess Attribute by Visual Scaling for Coatings with Special-Effect Pigments, 2020, Coatings, Vol. 10, Pages 1-10)
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN S LEE whose telephone number is (571)272-1981. The examiner can normally be reached 11:30 AM - 7:30 PM.
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/Jonathan S Lee/Primary Examiner, Art Unit 2677
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