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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,159,891. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claim 1 of application 18/950,744 is directed to a darkening filter that is broader than that of US Patent 12,159,891.
Claim of Instant App 18/950,744
Corresponding Claim of US Patent 12,159,891
1
1
2
2
3
3
4
4
5
5
6
6
7
7
8
8
9
9
10
10
11
11
Allowable Subject Matter
Claims 1-11 would be allowable if the double patenting rejection were overcome.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding independent claim 1, the prior art of record does not teach or suggest a darkening filter mounted in a forward-facing optically transmissive window, the filter comprises a pattern of switchable shutters that are each capable of being switched between at least a dark state and a light state, and a shutter control system that is connected to each shutter, wherein the pattern of shutters is a predetermined non-uniform pattern, wherein the filter further comprises at least one image acquisition device, wherein the shutter control system is receivably connected to the image acquisition device wherein the shutter control system is configured to receive light intensity mapping information from the at least one image acquisition device, and is configured to use the received light intensity mapping information to choose states to which the shutters are switched, in combination with the remaining features recited in the claim.
The prior art of Magnusson (US 2017/0367891 A1) discloses a darkening filter mounted in a forward-facing optically transmissive window comprising a switchable shutter that is capable of being switched between a dark and light state, and a shutter control system (Magnusson, Figures 1-3). However, Magnusson fails to disclose a plurality of shutters where each is connected to the shutter control system, wherein the predetermined pattern of the shutters is non-uniform. The prior art of Coulter (US 2008/0055541 A1) discloses a plurality of shutters connected to a shutter control system that is configured to receive light intensity mapping information from the at least one image acquisition device to choose states to which the shutters are switched (Coulter, Paragraphs 0031-0032; Paragraph 0040). However, Coulter aims to intentionally block the field of view of a user, whereas the disclosure of Magnusson is meant to achieve clarity in the field of view of the user. Therefore, the combination of Magnusson and Coulter is improper as they teach away from one another.
Therefore, Claim 1 would be allowable if the double patenting rejection were overcome. Claims 2-11 would be allowable by virtue of their dependence on the allowed independent claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIAM QURESHI whose telephone number is (571)272-4434. The examiner can normally be reached 9AM-5PM EST M-F.
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, Michael Caley can be reached at 571-272-2286. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARIAM QURESHI/Examiner, Art Unit 2871
Prosecution Insights