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 Arguments
Applicant’s arguments with respect to claims 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,162,405 in view of Osterhout et al. (US 2016/0116745).
Below is a comparison between present claim 1 and patented claim 1:
Present claim 1
Patented claim 1
A display system comprising:
A digital license plate comprising
a dynamic display for showing a designated information;
a dynamic display system configured to show a designated information using visible light;
a lighting system comprising:
a lighting system comprising:
a first light source for generating a first light within a first optical spectrum;
at least one visible light source for generating the visible light of a broadband spectrum and
a second light source for generating a second light within a second optical spectrum;
a plurality of narrowband light sources for generating narrowband light of different wavelength than that of the at least one visible light source;
a first sensor activated when detecting light within the first optical spectrum;
a second sensor having an infrared window to ignore natural lighting, the second sensor activated when detecting light within the second optical spectrum;
a plurality of sensors respectively activates in response to a trigger signal of a particular wavelength;
a controller connected to the first light source, the second light source, the first sensor, and the second sensor, the controller selectively activate one or more of the first light source and the second light source based on a combination of the first sensor and the second sensor activated; and
a controller connected to the sensors to receive the trigger signal and configured to activate the narrowband light source to generate narrowband light based on a combination of the sensors activated by the trigger signal; and
a light redistribution element configured and positioned to receive the first light and the second light and directs the first light and the second light toward the display, a showing of the designated information is not disrupted by the second light.
a light redistribution element configured and positioned to receive the visible light from the visible light source and the narrowband light from the narrowband light source, the light redistribution element directs the visible and narrowband light toward the display system, a showing of the designated information is not disrupted by the narrowband light.
As shown above, besides wording, the main difference between the claims is that present claim 1 recites “first light within a first optical spectrum” and “second light within a second optical spectrum” whereas patented claim 1 recites “visible light of a broadband spectrum” and “narrowband light.” Thus, present claim 1 is merely a broader version of patented claim 1 except for the limitation that the second sensor “second sensor having an infrared window to ignore natural lighting.”
However, Osterhout et al. disclose a sensor having an infrared window to ignore natural lighting (Paragraph [0434]: “In these embodiments, the absorptive polarizer 6737 functions as a light trap for the escaping image light 6750 and thereby blocking the image light 6750 that is in the visible wavelengths from the camera 6739 while simultaneously acting as a window for infrared wavelength light from the environment 6770 for the camera 6739.”).
Therefore, it would have been obvious to “one of ordinary skill” in the art before the effective filing date of the claimed invention for patented claim 1 of U.S. Patent No. 12,162,405 to claim that the second sensor has “an infrared window to ignore natural lighting” as taught by Osterhout et al. The motivation to combine would have been in order to increase the percentage of infrared light captured by the second sensor (See paragraph [0434] of Osterhout et al.).
Claims 2-20 are similarly rejected as above over claims 1-20 of U.S. Patent No. 12,162,405.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,801,787 in view of Osterhout et al. (US 2016/0116745).
Below is a comparison between present claim 1 and patented claim 1:
Present claim 1
Patented claim 1
A display system comprising:
A digital license plate comprising:
a dynamic display for showing a designated information;
a dynamic display system configured to show a designated information using visible light;
a lighting system comprising:
a lighting system comprising:
a first light source for generating a first light within a first optical spectrum;
at least one visible light source for generating the visible light and
a second light source for generating a second light within a second optical spectrum;
one non-visible light source for generating non-visible light;
a first sensor activated when detecting light within the first optical spectrum;
a second sensor having an infrared window to ignore natural lighting, the second sensor activated when detecting light within the second optical spectrum;
at least one sensor configured to detect or receive a trigger signal;
a controller connected to the first light source, the second light source, the first sensor, and the second sensor, the controller selectively activate one or more of the first light source and the second light source based on a combination of the first sensor and the second sensor activated; and
a controller connected to the sensor to receive the trigger signal and configured to activate the non-visible light source to generate non-visible light whose property is based on at least the trigger signal detected; and
a light redistribution element configured and positioned to receive the first light and the second light and directs the first light and the second light toward the display, a showing of the designated information is not disrupted by the second light.
a light redistribution element configured and positioned to receive the visible light from the visible light source and the non-visible light from the non-visible light source, the light redistribution element directs the visible and non-visible light toward the display system, a showing of the designated information is not disrupted by the non-visible light.
As shown above, besides wording, the main difference between the claims is that:
(i) Present claim 1 recites “first light within a first optical spectrum” and “second light within a second optical spectrum” whereas patented claim 1 recites “visible light” and “non-visible light” which makes present claim 1 merely a broader version of patented claim 1 with this respect; and
(ii) Patented claim 1 only recites “at least one sensor” whereas present claim 1 more specifically recites “a first sensor activated when detecting light within the first optical spectrum; a second sensor activated when detecting light within the second optical spectrum.” However, since “at least one” language is being used, it would have been obvious for patented claim 1 to claim a sensor for each of the visible and non-visible light because these sensors are used in the same invention being claimed by both the present application and the parent application. MPEP § 804 II.B.1 recites:
Further, those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized "that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim," but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. According to the court, one must first "determine how much of the patent disclosure pertains to the invention claimed in the patent" because only "[t]his portion of the specification supports the patent claims and may be considered." The court pointed out that "this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined." In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014), the court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
Thus, present claim 1 is an obvious version of patented claim 1 except for the limitation that the second sensor “second sensor having an infrared window to ignore natural lighting.”
However, Osterhout et al. disclose a sensor having an infrared window to ignore natural lighting (Paragraph [0434]: “In these embodiments, the absorptive polarizer 6737 functions as a light trap for the escaping image light 6750 and thereby blocking the image light 6750 that is in the visible wavelengths from the camera 6739 while simultaneously acting as a window for infrared wavelength light from the environment 6770 for the camera 6739.”).
Therefore, it would have been obvious to “one of ordinary skill” in the art before the effective filing date of the claimed invention for patented claim 1 of U.S. Patent No. 11,801,787 to claim that the second sensor has “an infrared window to ignore natural lighting” as taught by Osterhout et al. The motivation to combine would have been in order to increase the percentage of infrared light captured by the second sensor (See paragraph [0434] of Osterhout et al.).
Claims 2-20 are similarly rejected as above over claims 1-30 of U.S. Patent No. 11,801,787.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 5-6, 9, 11, 13, 15-16, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Pfeiffer (US 2023/0044071) in view of Osterhout et al. (US 2016/0116745).
Regarding claim 1, Pfeiffer discloses a display system (Figures 9-10) comprising:
a dynamic display for showing a designated information (Figures 9-10, 800);
a lighting system comprising:
a first light source for generating a first light within a first optical spectrum (Figures 9-10, 915 is a first light source for generating a first light within a first optical spectrum [visible light].);
a second light source for generating a second light within a second optical spectrum (Figures 9-10, 515 is a second light source for generating a second light within a second optical spectrum [IR].);
a first sensor activated when detecting light within the first optical spectrum (Figures 9-10, 960 is a first sensor activated when detecting light within the first optical spectrum.);
a second sensor activated when detecting light within the second optical spectrum (Figures 9-10, 955 is a second sensor activated when detecting light within the second optical spectrum.);
a controller (Figure 9, 1040 is a controller.) connected to the first light source, the second light source, the first sensor, and the second sensor (Figure 10), the controller selectively activate one or more of the first light source and the second light source based on a combination of the first sensor and the second sensor activated (Paragraphs [0115] and [0126].); and
a light redistribution element (Figure 9, 820 is a light redistribution element.) configured and positioned to receive the first light and the second light and directs the first light and the second light toward the display, a showing of the designated information is not disrupted by the second light (Paragraphs [0113] and [0126], and further since [0128] says the observer will see the display and the IR is not visible then a showing of the designated information is not disrupted by the second light.).
Pfeiffer fails to teach wherein the second sensor has an infrared window to ignore natural lighting.
Osterhout et al. disclose a sensor having an infrared window to ignore natural lighting (Paragraph [0434]: “In these embodiments, the absorptive polarizer 6737 functions as a light trap for the escaping image light 6750 and thereby blocking the image light 6750 that is in the visible wavelengths from the camera 6739 while simultaneously acting as a window for infrared wavelength light from the environment 6770 for the camera 6739.”).
Therefore, it would have been obvious to “one of ordinary skill” in the art before the effective filing date of the claimed invention to use the window teachings of Osterhout et al. such that the second sensor of Pfeiffer has an infrared window to ignore natural lighting. The motivation to combine would have been in order to increase the percentage of infrared light captured by the second sensor (See paragraph [0434] of Osterhout et al.).
Regarding claim 3, Pfeiffer and Osterhout et al. disclose the display system of claim 1, wherein the first light is a visible light and having an electromagnetic spectrum that the human eye can view (Pfeiffer: See claim 1 above, where the light from 915 is visible light, which has an electromagnetic spectrum that the human eye can view.).
Regarding claim 5, Pfeiffer and Osterhout et al. disclose the display system of claim 1.
Pfeiffer and Osterhout et al. fail to teach wherein the second light source is located between the light redistribution element and the display. However, it would have been an obvious design choice before the effective filing date of the claimed invention to relocate the second light source of Pfeiffer such that it is located between the light redistribution element and the display since it has been held that a mere rearrangement of parts is unpatentable when the changing of the position would not have modified the operation of the device. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Regarding claim 6, Pfeiffer and Osterhout et al. disclose the display system of claim 1, wherein the second light source activates in response to a light sensor signal (Pfeiffer: Paragraph [0115].).
Regarding claim 9, Pfeiffer and Osterhout et al. disclose the display system of claim 1, wherein the second light source is activated in response to the license plate entering a predetermined location (Pfeiffer: Figures 9-10, location where 975 is located is “a predetermined location,” see paragraph [0113].).
Regarding claim 11, this claim is rejected under the same rationale as claim 1.
Regarding claim 13, this claim is rejected under the same rationale as claim 3.
Regarding claim 15, this claim is rejected under the same rationale as claim 5.
Regarding claim 16, this claim is rejected under the same rationale as claim 6.
Regarding claim 18, this claim is rejected under the same rationale as claim 9.
Regarding claim 20, Pfeiffer discloses the method of operating the display system of claim 11, wherein the light redistribution element includes a diffuser configured to spread light over a defined illumination area (Paragraph [0024].).
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Pfeiffer (US 2023/0044071) in view of Osterhout et al. (US 2016/0116745) and further in view of Taniguchi et al. (WO 2017/022270 A1).
Regarding claim 2, Pfeiffer and Osterhout et al. disclose the display system of claim 1.
Pfeiffer and Osterhout et al. fail to teach wherein the second light source includes the first light source and a first optical filter configured to receive the first light and output the second light.
Taniguchi et al. disclose wherein a second light source includes a first light source and a first optical filter configured to receive first light and output second light (See page 84 of the provided document, section (G), which recites “In the above embodiment, the normal display lamp 521 is turned on during normal display and the violation display lamp 522 is turned on during violation display. However, the present invention is not limited to this configuration. For example, a filter that changes color may be arranged in front of one light source, and the display may be changed between normal display and violation display by switching the filter. Further, a violation display and a normal display may be performed by characters, colors, etc. using a liquid crystal screen or the like. In short, it is only necessary to be able to distinguish between a normal indication that has not been violated and a violation indication that has been violated.).
Therefore, it would have been obvious to “one of ordinary skill” in the art before the effective filing date of the claimed invention to use the single light source and filter teachings of Taniguchi et al. in the display system taught by the combination of Pfeiffer and Osterhout et al.. The motivation to combine would have been in order to allow for the reduction of the number of light sources, which would reduce cost and size of the display system.
Regarding claim 12, this claim is rejected under the same rationale as claim 2.
Claims 4, 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Pfeiffer (US 2023/0044071) in view of Osterhout et al. (US 2016/0116745) and further in view of Salter et al. (US 9,688,189).
Regarding claim 4, Pfeiffer and Osterhout et al. disclose the display system of claim 1, wherein the controller activates the second light source based on a combination of the sensors activated by a trigger optical signal (Pfeiffer: Paragraphs [0115] and [0126]).
Pfeiffer and Osterhout et al. fail to teach wherein the lighting system further includes a third sensor for detecting a third light having a third spectrum.
Salter et al. disclose wherein a lighting system includes a sensor for detecting a light having a third spectrum, and a controller activates a second light source based on the sensor activated by a trigger optical signal (Column 6, lines 17-29 state that the light sensor 46 detects light from the phosphorescent material [third spectrum], and the light source may be activated in response to a trigger optical signal from the sensor.).
Therefore, it would have been obvious to “one of ordinary skill” in the art before the effective filing date of the claimed invention to use the teachings of Salter et al. in the display system taught by the combination of Pfeiffer and Osterhout et al. such that the system will have sensors for three light spectrums. The motivation to combine would have been in order to further improve the illumination and thus visibility of the license plate.
Regarding claim 7, please refer to the rejection of claim 4, where Salter et al. disclose that the light source [a second light source] is an ultraviolet light source [narrowband] (See column 2, line 65 to column 3, line 8) and is activated in response to a light signal from the sensor, which will thus be a “narrowband light sensor signal” as claimed.
Regarding claim 14, this claim is rejected under the same rationale as claim 4, and furthermore Pfeiffer, Osterhout et al. and Salter et al., in combination, disclose activating the second light source based on a combination of the sensors activated by a trigger optical signal, i.e. the narrowband light source will be triggered dependent upon signals from the varying sensors.
Claims 8, 10, 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Pfeiffer (US 2023/0044071) in view of Osterhout et al. (US 2016/0116745) and further in view of Marchetti et al. (FR 2956627 A1).
Regarding claim 8, Pfeiffer and Osterhout et al. disclose the display system of claim 1.
Pfeiffer and Osterhout et al. fail to teach wherein the second light source is activated in response to a radio signal.
Marchetti et al. disclose wherein a light source is activated in response to a radio signal (See page 13 of the provided document, second paragraph, which state: “The proposed invention consists in integrating one or more active signaling devices, that is to say, emitting light when they are supplied with electrical energy, on any area of a vehicle, for example bodywork parts, moving parts such as rims, equipment such as roof racks, etc. The invention proposes, for this purpose, an autonomous signaling system of a motor vehicle comprising at least one light source and at least one photovoltaic cell supplying said at least one light source. The autonomous signaling system according to the invention furthermore comprises a radio frequency control circuit for deactivating said at least one light source when the remote control for locking the vehicle has been activated to lock the vehicle and to reactivate again said at least one light source. after disabling the vehicle lock. The autonomous signaling system according to the invention is always activated if the car is not parked and locked. According to another characteristic of the invention, said at least one light source comprises at least one light emitting diode (LED).”).
Therefore, it would have been obvious to “one of ordinary skill” in the art before the effective filing date of the claimed invention to use the teachings of Marchetti et al. in the display system taught by the combination of Pfeiffer and Osterhout et al. such that the light sources [including the second light source] are activated and deactivated based on a radio signal that unlocks/locks the vehicle. The motivation to combine would have been to ensure the lights are off when the vehicle is not in use, thus preventing power drain from the battery.
Regarding claim 10, Pfeiffer and Osterhout et al. disclose the display system of claim 1.
Pfeiffer and Osterhout et al. fail to teach wherein the second light source is deactivated some duration after activating in response to a light, infrared, radio signal, or location.
Marchetti et al. disclose wherein a light source is deactivated some duration after activating in response to a light, infrared, radio signal, or location (See page 13 of the provided document, second paragraph, which state: “The proposed invention consists in integrating one or more active signaling devices, that is to say, emitting light when they are supplied with electrical energy, on any area of a vehicle, for example bodywork parts, moving parts such as rims, equipment such as roof racks, etc. The invention proposes, for this purpose, an autonomous signaling system of a motor vehicle comprising at least one light source and at least one photovoltaic cell supplying said at least one light source. The autonomous signaling system according to the invention furthermore comprises a radio frequency control circuit for deactivating said at least one light source when the remote control for locking the vehicle has been activated to lock the vehicle and to reactivate again said at least one light source. after disabling the vehicle lock. The autonomous signaling system according to the invention is always activated if the car is not parked and locked. According to another characteristic of the invention, said at least one light source comprises at least one light emitting diode (LED).”).
Therefore, it would have been obvious to “one of ordinary skill” in the art before the effective filing date of the claimed invention to use the teachings of Marchetti et al. in the display system taught by the combination of Pfeiffer and Osterhout et al. such that the light sources [including the second light source] are activated and deactivated based on a radio signal that unlocks/locks the vehicle. The motivation to combine would have been to ensure the lights are off when the vehicle is not in use, thus preventing power drain from the battery.
Regarding claim 17, this claim is rejected under the same rationale as claim 8.
Regarding claim 19, this claim is rejected under the same rationale as claim 10.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN G SHERMAN whose telephone number is (571)272-2941. The examiner can normally be reached Monday - Friday, 8:00am - 4pm ET.
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/STEPHEN G SHERMAN/Primary Examiner, Art Unit 2621
29 July 2026
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