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, 2, 4-7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 4-7 of U.S. Patent No. 12,164,170. Although the claims at issue are not identical, they are not patentably distinct from each other because as follows.
Current Application 18/941,687
Patent 12,164,170
1. A spacer, comprising:
an opening through which light passes;
an inner side surface forming the opening;
and
a protruding portion protruding from the inner side surface,
wherein the protruding portion includes a first protruding portion disposed on one side of a first axis and a second protruding portion disposed on another side of the first axis, the first axis intersecting a central axis of the opening and being perpendicular to the central axis of the opening,
wherein the first protruding portion and the second protruding portion each include a plurality of protrusions,
wherein a center of a first circle having an arc as a curve connecting vertices of the protrusions included in the first protruding portion, and a center of a second circle having an arc as a curve connecting vertices of the protrusions included in the second protruding portion, are spaced apart from each other.
1. A spacer, comprising:
an opening through which light passes;
an inner side surface forming the opening; and
a protruding portion including a plurality of protrusions protruding from the inner side surface,
wherein lengths of the plurality of protrusions vary in a circumferential direction of the protruding portion, and wherein a region in which lengths of protrusions, among the plurality of protrusions, increase in the circumferential direction and another region in which lengths of other protrusions, among the plurality of protrusions, decrease in the circumferential direction are alternately and repeatedly disposed along the circumferential direction.
3. The spacer of claim 1,
wherein the protruding portion further includes a first protruding portion disposed on one side of a first axis and a second protruding portion disposed on another side of the first axis, the first axis intersecting a central axis of the opening and being perpendicular to the central axis of the opening, and
wherein lengths of protrusions, among the plurality of protrusions, included in the first protruding portion and lengths of protrusions, among the plurality of protrusions, included in the second protruding portion increase and then decrease in the circumferential direction.
4. The spacer of claim 3, wherein a center of a first circle having an arc as a curve connecting vertices of the protrusions included in the first protruding portion, and a center of a second circle having an arc as a curve connecting vertices of the protrusions included in the second protruding portion, are spaced apart from each other.
2. The spacer of claim 1, wherein a center of the opening is disposed between the center of the first circle and the center of the second circle.
5. The spacer of claim 4, wherein a center of the opening is disposed between the center of the first circle and the center of the second circle.
4. The spacer of claim 1, wherein the first circle and the second circle have an intersection point, wherein the first protruding portion is disposed in a space between an outer side of the first circle and an inner side of the second circle, and wherein the second protruding portion is disposed in a space between an inner side of the first circle and an outer side of the second circle.
6. The spacer of claim 4, wherein the first circle and the second circle have an intersection point, wherein the first protruding portion is disposed in a space between an outer side of the first circle and an inner side of the second circle, and wherein the second protruding portion is disposed in a space between an inner side of the first circle and an outer side of the second circle.
5. The spacer of claim 1, wherein a diameter of the first circle and a diameter of the second circle are equal.
7. The spacer of claim 4, wherein a diameter of the first circle and a diameter of the second circle are equal.
6. The spacer of claim 1, wherein lengths of protrusions included in the first protruding portion and lengths of protrusions included in the second protruding portion increase and then decrease in a circumferential direction.
Patented claims 1 + 3 + 4
7. The spacer of claim 1, wherein a region in which lengths of protrusions increase in a circumferential direction and another region in which lengths of other protrusions decrease in the circumferential direction are alternately and repeatedly disposed along the circumferential direction.
Patented claim 1 + 3 + 4
Allowable Subject Matter
Claims 1-8 would be allowable if rewritten or amended to overcome the rejection(s) under double patenting, set forth in this Office action.
Closest Prior art is/are: Liang US 2016/0170204
Regarding claim 1, Liang teaches a spacer (Fig. 2: 11), comprising: an opening through which light passes (see Fig. 2 and Figs. 3A-3D: the central opening);
an inner side surface forming the opening (see Fig. 3A-3D); and
a protruding portion including a plurality of protrusions protruding from the inner side surface (112a-112c),
wherein the protruding portion includes a first protruding portion disposed on one side of a first axis and a second protruding portion disposed on another side of the first axis, the first axis intersecting a central axis of the opening and being perpendicular to the central axis of the opening (see annotated figure below),
[AltContent: textbox (Central axis of opening )][AltContent: arrow][AltContent: connector][AltContent: connector][AltContent: textbox (2nd protruding portion)][AltContent: arrow][AltContent: textbox (1st protruding portion)][AltContent: arrow][AltContent: connector]
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wherein the first protruding portion and the second protruding portion each include a plurality of protrusions (see Figs. 3A-3D: 112a-112c).
Liang fails to teach: wherein a center of a first circle having an arc as a curve connecting vertices of the protrusions included in the first protruding portion, and a center of a second circle having an arc as a curve connecting vertices of the protrusions included in the second protruding portion, are spaced apart from each other.
Claims 9-12 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 9, Liang teaches a lens assembly (Fig. 1), comprising:
a lens barrel (see reproduced figure below);
a first lens (12) and a second lens disposed along an optical axis inside of the lens barrel (see figure below); and a spacer (11) disposed between the first lens and the second lens (as shown in reproduced figure spacer 11 disposed between two lenses), and having an opening (see Fig. 2 and Figs. 3A-3D: the central opening);
wherein a protruding portion including a plurality of protrusions (112a-112c) protruding toward a center of the opening is disposed on an inner side surface of the spacer forming the opening (Fig. 3D and para [0025]: teaches that the notches on the inner rim surface are uneven),
[AltContent: textbox (lens barrels)][AltContent: textbox (Spacer)][AltContent: arrow][AltContent: textbox (First lens)][AltContent: arrow][AltContent: textbox (Second lens)][AltContent: arrow][AltContent: arrow]
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wherein the protruding portion includes a first protruding portion, a second protruding portion, a third protruding portion, and a fourth protruding portion disposed in a sequence in the circumferential direction (see annotated figure below),
[AltContent: textbox (4th protruding portion)][AltContent: arrow][AltContent: textbox (3rd protruding portion)][AltContent: arrow][AltContent: textbox (2nd protruding portion)][AltContent: arrow][AltContent: textbox (1st protruding portion)][AltContent: arrow][AltContent: connector][AltContent: connector]
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Liang fails to teach wherein lengths of protrusions included in each of the first to fourth protruding portions increase and then decrease in the circumferential direction, and
wherein a center of a first circle having an arc as a curve connecting vertices of the protrusions included in the first protruding portion, a center of a second circle having an arc as a curve connecting vertices of the protrusions included in the third protruding portion, a center of a third circle having an arc as a curve connecting vertices of the protrusions included in the second protruding portion, and a center of a fourth circle having an arc as a curve connecting vertices of the protrusions included in the fourth protruding portion, are spaced apart from each other.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EPHREM ZERU MEBRAHTU whose telephone number is (571)272-8386. The examiner can normally be reached 10 am -6 pm (M-F).
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/EPHREM Z MEBRAHTU/ Primary Examiner, Art Unit 2872
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