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.
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Claims 1-4, 8-11, 13, 17, 21, 23-26, 30-32, 45-46 and 59-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 12158255. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘255 teaches a method for applying conductive traces comprising conductive ink to a lens using an applicator assembly where a control circuit automatically adjusts operation of the applicator based on linear mass density which is tied to the material conductivity of the ink and curing the ink after application this anticipates claim 1. Claims 2-4, 8-11, 13, 17, 21, 23-26, 30-32, 45-46 and 59-60 depend from claim 1 and recite additional limitations directed to operating parameters, deposition variables, pattern characteristics and curing techniques. These limitations are also anticipated by the dependent claims of ‘255.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 8-11, 13, 17, 21, 23-26, 30-32, 45-46 and 59-60 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the LMD" in line 13. There is insufficient antecedent basis for this limitation in the claim.
Claims 3-4, 8-11, 13, 17, 21, 23-26, 30-32, 45-46 and 59-60 are included in the rejection since they depend from claim 1.
Claim 2 recites the limitation “automatically adjusts operational aspects of the applicator assembly” the term “operational aspects” is vague and fails to provide clear boundaries of the claimed subject matter. The claim does not specify which operation aspects of the applicator assembly are adjusted, rendering the scop of the claim unclear.
Conclusion
There are no prior art rejections over the claims.
Brooks et al. (US 2020/0205238) discloses a process for applying conductive ink to a lens using a spray nozzle without the nozzle contacting the lens (see 0029). The process comprises programing a control circuit to control the applicator to form a pattern of the conductive traces by applying the ink onto the surface and the circuit adjusts operational parameters to form the pattern (see 0041), and the ink is cured (see 0029).
Marley (US 8459848) discloses a vehicle headlamp that has electrically conductive heating elements within the lens that helps remove ice/snow (see abstract, col. 3, lines 54-65).
Kozee et al. (US 20120075385) discloses a non-contact process for applying an electrically conductive material onto a substrate in the form of a pattern (see abstract). Kozee et al. teaches the flow rate of the material and relative speed controls the amount of material deposited which can maximize throughput and control line features (See 0042).
The cited prior art fails to teach or suggest a control strategy in which material conductivity is used to determine or modify the amount of conductive ink deposited per unit length on a lens. The claimed method integrates material property based control (conductivity) with automatic line mass density adjustment during patterned, non-contact application on a lens, which is not taught or suggested by the cited references.
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/CACHET I. PROCTOR/
Examiner
Art Unit 1715
/CACHET I PROCTOR/ Primary Examiner, Art Unit 1715