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 1-5, 15-17, 20 of the instant application [IA] are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-23 of U.S. Patent No. 11385406 (herein may simply be referred to as: ‘406) with obviousness evidenced by {OEB} Hamano (US 20060215963) and/or Terada (US 20130183014) and/or Lerner et al. (US 20030231833; “Lerner”) and/or Drumm (US 20130021302). ‘406 claim 1 is substantially the same as IA claim 1 except “light emitted by the light emitter into the waveguide at an angle-of-entry such that the waveguide guides the light” in ‘406 strongly implies an “input surface”.
Additionally, ‘406 claim 1 has “configured to direct” rather than “configured to reflect” used in IA claim 1.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute “configured to reflect” for “configured to direct” at least since using a reflective surface to direct emitted light into a waveguide {WG} is a well-known design choice used at least for the purpose directing emitted light via reflection off of a slanted mirror/surface at least for the purpose of efficiently coupling light into a WG when the emitter cannot emit light straight into the WG as evidenced by Hamano (e.g., Hamano fig. 1A, ¶ 0022: 45 degrees slanted mirrors 10; enables input of light into WG 3 core 7) and/or Terada (e.g., Terada fig. 1: mirror 23a allows for emitter light to enter WG via mirror 23a input surface) and/or Lerner (e.g., Lerner ¶ 0033, fig. 5: input light enters WG via a slanted reflective surface) and/or Drumm (e.g., Drumm figs. 9-13; see particularly fig. 9A and/or fig. 13A; emitter light coupled into WG 904 via slanted reflective surface 922; ¶ 0122).
Moreover, whether a reflective/mirror surface is metal and/or a dielectric mirror is a very well-known matter of design choice that clearly would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. So, the subject matter of claims 2-5 was clearly obvious.
Also, the structure
Additionally, IA claim 15 corresponds to ‘406 claim 2.
IA claim 16 corresponds to ‘406 claim 3.
IA claim 17 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention at least by the secondary references already cited above.
Regarding IA claim 20, the light emitter comprising a laser diode would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention at least because the use of a laser diode was an extremely well-known light emitter to use.
Allowable Subject Matter
Claims 6-14, 18-19 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.
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.
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/MICHAEL P MOONEY/ Primary Examiner, Art Unit 2874
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