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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16625684, filed on 12/21/2019.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/18/2024, 6/6/2025, 3/24/2026, and 7/28/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by Egloff (20090262346) hereafter Egloff.
Regarding claims 1 and 6, Egloff discloses a mirror unit (9A) comprising: a mirror device (9A) that includes a base (43) including a first surface and a second surface opposite to the first surface, and a movable mirror (40, 41) supported in the base (43) to be movable along a first direction that intersects the first surface (fig. 9A, par. [0101]-[0105]); and a member (30) including a third surface (9A) that faces the second surface, a fourth surface opposite to the third surface, and a fifth surface that is separated from the mirror device in a region where the fifth surface faces at least the movable mirror, wherein the second surface of the base and the third surface of the member are joined to each other, and the fifth surface of the member extends to an outer edge of the member when viewed from the first direction (fig. 9, par. [0032][0034][0100]-[0105]).
Regarding claims 2 and 7, Egloff discloses the mirror unit according to The mirror unit according to wherein the second surface of the base and the third surface of the member are joined to each other by direct bonding (fig. 9, par. [0100]-[01005]).
Regarding claims 3 and 8, Egloff discloses the mirror unit according to The mirror unit according to wherein the mirror device is constituted by a semiconductor substrate, the semiconductor substrate includes a support layer that is a first semiconductor layer, a device layer that is a second semiconductor layer, and an intermediate layer that is an insulating layer disposed between the support layer and the device layer, the second surface of the base is a surface opposite to the intermediate layer in the device layer, and a mirror surface of the movable mirror is provided on a surface on the intermediate layer side in the device layer (fig. 9A, par. [0032][0034][0100]-[0105]).
Regarding claims 4 and 9 Egloff discloses the mirror unit according to The mirror unit according to wherein the base further includes a sixth surface that is separated from the member in a region including at least a part of an outer edge of the base when viewed from the first direction (fig. 9A, par. [0032][0034][0100]-[0105]).
Regarding claims 5 and 10, Egloff discloses the mirror unit according to The mirror unit according to wherein the outer edge of the member is located outside of an outer edge of the base when viewed from the first direction (fig. 9A).
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11879731 hereafter Suzuki. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 of Suzuki read on or make obvious claims 1-10 of the instant application.
Regarding claim 1, Suzuki discloses a mirror unit comprising: a mirror device that includes a base including a first surface and a second surface opposite to the first surface, and a movable mirror supported in the base to be movable along a first direction that intersects the first surface; and a member including a third surface that faces the second surface, a fourth surface opposite to the third surface, and a fifth surface that is separated from the mirror device in a region where the fifth surface faces at least the movable mirror, wherein the second surface of the base and the third surface of the member are joined to each other, and the fifth surface of the member extends to an outer edge of the member when viewed from the first direction (see claims 1 and 6).
Regarding claim 6, Suzuki discloses a mirror unit comprising: a mirror device that includes a base including a first surface and a second surface opposite to the first surface, and a movable mirror supported in the base to be movable along a first direction that intersects the first surface; and a member including a third surface that faces the second surface, a fourth surface opposite to the third surface, and a fifth surface that is separated from the mirror device in a region where the fifth surface faces at least the movable mirror, wherein the second surface of the base and the third surface of the member are joined to each other, and the fifth surface of the member extends to an outer edge of the base when viewed from the first direction (see claims 1 and 6).
Regarding claims 2-5 and 7-10, Suzuki discloses the limitations therein (see claims 2-5 7, 8).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES JONES whose telephone number is (571)270-1278. The examiner can normally be reached 7:00 am - 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached at (571) 270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C. JONES/Primary Examiner, Art Unit 2872
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