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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objections
Claim 1 is objected to because of the following informalities. In line 13, ‘of other light adjustment panel” should be replaced with of “an other” or something similar in order to correct what appears to be a typographical error. Appropriate correction is required.
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 1-2 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. US 12,174,476. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the claims are correlated, as set forth below.
In regard to claim 1, US 12,174,476 claims
a light adjustment device comprising a panel unit including a plurality of light adjustment panels that are stacked (see e.g. claim 1, Column 12, lines 35-37), each light adjustment panel including a lower substrate and an upper substrate overlapping the lower substrate (see e.g. claim 1, Column 12, lines 37-39),
wherein the light adjustment panels each have (see e.g. claim 1, Column 12, line 41):
a first side (see e.g. claim 1, Column 12, line 41);
a second side adjacent to the first side (see e.g. claim 1, Column 12, lines 41-42);
a plurality of straight-line parts (see e.g. claim 1, Column 12, line 28 where it is noted that the shape is polygonal, thus having straight-line parts); and
a first corner at which the first side intersects the second side (see e.g. claim 1, Column 12, lines 42-43),
the first corner of one of the light adjustment panels is positioned inside an edge of other light adjustment panel (see e.g. claim 1, Column 12, lines 46-48), and
the first corner of the other light adjustment panel is positioned inside an edge of the one light adjustment panel (see e.g. claim 1, Column 12, lines 48-50),
an end part of the second side having a curved part, the first side intersecting the curved part so as to form the first corner (see e.g. claim 1, Column 12, lines 50-53).
In regard to claim 2, US 12,174,476 claims the limitations of claim 1 above, and
wherein the first side intersects the second side at an internal angle larger than 90° at the first corner of each light adjustment panel (see e.g. claim 2, Column 12, lines 54-57).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references are cited for disclosing related limitations of the applicant’s claimed and disclosed invention: Lin et al. (US 2022/0101810 A1), Fukuda (JP-WO2008111214) and Maeda (US 2008/0018557 A1) were cited in parent application 18/347586, no patent number US 12,174,476 as being the closest prior art references to the claimed subject matter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA M MERLIN whose telephone number is (571)270-3207. The examiner can normally be reached Monday-Thursday 7:00AM-5:00PM.
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/JESSICA M MERLIN/Primary Examiner, Art Unit 2871
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