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 .
Response to Pre-amendment
The present office action is made in response to the pre-amendment filed by applicant on 12/05/2024. It is noted that in the pre-amendment, applicant has made change to the claims. There was not any change being made to the abstract, the drawings and the specification.
Regarding to the claims, applicant has amended claims 1, 3 and 9 and added a new set of claims, i.e., claims 11-17, into the application.
Response to Arguments
The application with the specification and a set of five replacement sheets contained figures 1, 4, 8A-8C, 9A-9C and 10 as filed by applicant on 11/25/2024; the Pre-amendment which contained a list of claims and a drawings contained ten sheets of figures 1-7, 8A-8C, 9A-9C and 10 as filed by applicant on 12/05/2024; and the set of 5 new sheets contained figures 2-3 and 5-7 as filed by applicant on 12/13/2024 have been considered and resulted the following conclusions.
The Pre-amendment with the list of claims and the drawings contained ten sheets of figures 1-7,8A-8C, 9A-9C and 10 as filed by applicant on 12/05/2024 has been entered.
A) Regarding the claims, because applicant has added a new set of claims, i.e., claims 11-17, into the application and has not canceled any claim from the application, thus the pending claims are claims 1-17 which claims are examined in the present office action.
B) Regarding the drawings, the set of contain ten sheets of figures 1-7, 8A-8C, 9A-9C and 10 as filed in the pre-amendment of 12/05/2024 has been entered and used to examine in the present office action. The set of five replacement sheets contained figures 1, 4, 8A-8C, 9A-9C and 10 as filed by applicant on 11/25/2024 and the set of 5 new sheets contained figures 2-3 and 5-7 as filed by applicant on 12/13/2024 both have not been entered because they are in combination identical/same to the ten sheets of figures 1-7, 8A-8C, 9A-9C and 10 as filed in the pre-amendment of 12/05/2024.
C) Regarding the specification filed on 11/25/2024, the specification is objected to as set forth in the office action because the mentioned specification contains changes to the specification, see pages 10 and 16. Applicant need to provide a specification without any change being made. Any change to the specification needs to request via a (Pre-) amendment.
Drawings
The drawings contain ten sheets of figures 1-7, 8A-8C, 9A-9C and 10 were received on 12/05/2024. These drawings are objected by the examiner for the following reason(s).
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the flowing claimed features must be shown or the features canceled from the claims. No new matter should be entered.
First, the feature regarding a lock affixed to the compound collimator to lock the compound collimator as recited in each of claims 2 and 12. See Note below.
Second, the feature regarding a motor for controlling the movement of the compound collimator as recited in each of claims 10 and 17.
Note: It is noted that while figures 1 and 2 show a positioning mechanism (150 in fig. 1 and 208 in fig. 2) and the positioning mechanism (208) shown in fig. 2 comprises detents (210) for holding the collimator (204) in a first (212) or second (214) or third position (216); however, that positioning mechanism is applied to an embodiment in which the collimator is NOT in a fixed distance from the light emitters. Applicant is respectfully invited to review present claim 1 on lines 11-12. See also specification in paragraphs [0051]-[0052] and fig. 2.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The specification is objected to because it contains marked-up changes, see pages 10 and 16. A clean specification needs to be provided in response to the present office action.
Claim Objections
Claim 9 is objected to because of the following informalities. Appropriate correction is required.
Claim 9 is objected to by the feature thereof “the first light emitter the visible light if the compound collimator is in the first position” (lines 1-2). What does applicant mean by the mentioned feature? Should “light emitter the visible light” ne changed to --light emitter emits the visible light--?
Claim 9 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant should note that all features recited in claim 9 are read from the features thereof “the first light emitter generates … the third position” recited in its base claim 1 on lines 22-27.
Claim Rejections - 35 USC § 112
12. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
13. Claims 11-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the following reasons.
a) Claim 11 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claim is rejected because the disclosure does not provide support for an aiming device having at least two separate light emitters and a compound collimator having the feature thereof “the light emitters and the compound collimator are adapted such that the first emitters each generates the light if the compound collimator is in position to collimate the light” as recited in the claim on lines 17-18.
b) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
14. 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.
15. Claims 4-9 and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a) Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because each of the features thereof “the first solid-state emitter” (line 3), “the second solid-state emitter” (line 4) and “the third solid-state emitter” (line 5) lacks a proper antecedent basis.
b) Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the laser diode” (each of lines 2-4) lacks a proper antecedent basis.
c) Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element a) above.
d) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Double Patenting
16. 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.
17. Claims 1-17, as best as understood, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,152,858. Although the claims at issue are not identical, they are not patentably distinct from each other because all features recite din present claims 1-17 are read from features recited in Patent claims 1-6.
Conclusion
18. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571)272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
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