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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,160,957 B2. This is a statutory double patenting rejection.
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 7-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,160,957 B2.
Regarding claim 7 of this application, claim 1 of U.S. Patent No. 12,160,957 B2 recites all the limitations of claim 1 above, except for providing the claimed wherein the outer case has a length on the order of 1 foot in length, or less. It is well settled that changing the size is considered to be obvious to one of ordinary skill in the art. See In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 8 of this application, claim 1 of U.S. Patent No. 12,160,957 B2 recites all the limitations of claim 1 above, except for providing the claimed wherein a linear distance between the image capture component and the light plane generator is at least a half a foot. It is well settled that changing the size is considered to be obvious to one of ordinary skill in the art. See In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 9 of this application, claim 1 of U.S. Patent No. 12,160,957 B2 recites all the limitations of claims 1 and 8 above, except for providing the claimed wherein the linear distance is less than one-and-one half feet. It is well settled that changing the size is considered to be obvious to one of ordinary skill in the art. See In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 10 of this application, claim 1 of U.S. Patent No. 12,160,957 B2 recites all the limitations of claim 1 above, except for providing the claimed wherein a linear distance between a lens of the image capture component and the light plane generator is about seven inches. It is well settled that changing the size is considered to be obvious to one of ordinary skill in the art. See In re Rose, 105 USPQ 237 (CCPA 1955).
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,160,957 B2 in view of Moor et al. (US Patent No. 11,378,523 B2).
Regarding claim 6 of this application, claim 1 of U.S. Patent No. 12,160,957 B2 recites all the limitations of claim 1 above, except for providing the claimed wherein the image capture component comprises a high definition charge coupled device (CCD) camera including a fisheye lens. Moor et al. teaches that In certain examples, the blemish detection system may perform initial modifications to the image at this stage, for example, if a lens of the optical sensor has a focal length that is below a threshold causing a wide angle view, for example, a fisheye lens, the system may remove parts of the image that correspond to areas outside of the field of view of the lens (Fig. 5A, col. 8, line 66 to col. 9, line 16). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the high definition charge coupled device (CCD) camera including a fisheye lens as taught by Moor et al. into claim 1 of U.S. Patent No. 12,160,957 B2’s system in order to increase the quality of the video signal.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,160,957 B2 in view of Schoen et al. (US 2020/0130005 A1).
Regarding claim 11 of this application, claim 1 of U.S. Patent No. 12,160,957 B2 recites all the limitations of claim 1 above, except for providing the claimed wherein the carrier frame structure comprises a printed circuit board. Schoen et al. teach that referring still to FIGS. 1A and 1B, embodiments of the dispensing control system 100 may include a dispenser 20, embodiments of the dispenser 20 may be in fluid communication with the fluid supply 12, the dispenser 20 may include a nozzle for dispensing a liquid onto a substrate, such as a printed circuit board (Figs. 1A-1B, paragraph #0019-#0020). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the printed circuit board as taught by Schoen et al. into claim 1 of U.S. Patent No. 12,160,957 B2’s system in order to reduce the size of the apparatus with a printed circuit board.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cesak (US Patent No. 7,182,271 B2) discloses apparatus and method for detecting liquid flow from a spray device.
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October 28, 2025
/TRANG U TRAN/Primary Examiner, Art Unit 2422