DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
The numbering of claims is incorrect. There is no claim 19. Claim 20 should be renumbered as claim 19. Corrected listing of claims is required.
The preamble of claims 9 and 10 recites “an energy harvesting system of claim 1” however claim 1 is directed to “an image capturing system” – appropriate correction is required.
Claims 1-19 are pending and under consideration.
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.
3. Claims 1-19 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-19 of prior U.S. Patent No. 11,740393 B2. This is a statutory double patenting rejection.
All claims in the instant application are identical to claims 1-19 of U.S. Patent No. 11,740393 B2.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
4. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10859737.
Claim 1 of U.S. Patent No. 10859737 recites an energy harvesting system, comprising: an energy transmissive layer arranged over a photovoltaic layer, said energy transmissive layer comprising: a plurality of substantially transparent particles, each particle comprising: a spherical core comprised of a first transparent dielectric material, the spherical core having a value of a physical diameter equal to a half wavelength of a first selected color of light component to be reflected by the particle modified by a refractive index of the first transparent dielectric material; a plurality of material layers disposed radially outwardly from the spherical core, each of the plurality of material layers being comprised of at least a second transparent dielectric material, and having a value of a physical thickness equal to a quarter wavelength of at least a second selected color of light component to be reflected by the particle modified by a refractive index of the at least the second transparent dielectric material; and an outer coating comprised of another transparent dielectric material having a selected index of refraction of 2 or less, the outer coating having a thickness that substantially eliminates reflective interference between the colors reflected by adjacent particles when in contact with one another; wherein said plurality of substantially transparent particles are suspended in a substantially transparent binder material forming said energy transmissive layer; and wherein said photovoltaic layer is disposed in a shadow of said energy transmissive layer such that energy illuminating said energy transmissive layer that is not of said first selected color of light or said second selected color of light passes through said energy transmissive layer and impinges on said photovoltaic layer.
Claim 1 of the instant application recites an image capturing system, comprising: an energy transmissive layer arranged over an imaging device, said energy transmissive layer comprising: a plurality of substantially transparent particles, each particle comprising: a spherical core comprised of a first transparent dielectric material, the spherical core having a value of a physical diameter equal to a half wavelength of a first selected color of light component to be reflected by the particle modified by a refractive index of the first transparent dielectric material; a plurality of material layers disposed radially outwardly from the spherical core, each of the plurality of material layers being comprised of at least a second transparent dielectric material, and having a value of a physical thickness equal to a quarter wavelength of at least a second selected color of light component to be reflected by the particle modified by a refractive index of the at least the second transparent dielectric material; and an outer coating comprised of another transparent dielectric material having a selected index of refraction of 2 or less, the outer coating having a thickness that substantially eliminates reflective interference between the colors reflected by adjacent particles when in contact with one another; wherein said plurality of substantially transparent particles are suspended in a substantially transparent binder material forming said energy transmissive layer; and wherein said imaging device is disposed in a shadow of said energy transmissive layer such that energy illuminating said energy transmissive layer that is not of said first selected color of light or said second selected color of light passes through said energy transmissive layer and impinges on said imaging device.
Although the claims at issue are not identical, they are not patentably distinct from each other because the entire scope of the reference claims falls within the scope of the instant claims and a patent to the claimed invention would improperly extend the right to exclude granted by the already issued patent.
5. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10247861.
Claim 1 in U.S. Patent No. 10247861 recites a method for forming multi-layered transparent particles, comprising: forming a spherical core component of a first transparent dielectric material, the spherical core component, when formed, having a value of a physical diameter equal to a half wavelength of a first selected color of light component to be reflected by formed multi-layered transparent particles modified by a refractive index of the first transparent dielectric material; sequentially applying to the spherical core component a plurality of material layers, each of the plurality of material layers being formed of at least a second transparent dielectric material, and when formed, having a value of a physical thickness equal to a quarter wavelength of at least a second selected color of light component to be reflected by the formed multi-layered transparent particles modified by a refractive index of the at least the second transparent dielectric material; and applying a spherical outer coating comprised of another transparent dielectric material having a selected index of refraction of 2 or less, the spherical outer coating being applied to have a thickness selected to achieve a desired spacing between the material layers of adjacent multi-layered transparent particles so as to substantially eliminate reflective interference between the colors of light reflected by adjacent formed multi-layered transparent particles when the spherical outer coatings of said adjacent multi-layered transparent particles are in contact with one another.
Claim 1 of the instant application recites an image capturing system, comprising: an energy transmissive layer arranged over an imaging device, said energy transmissive layer comprising: a plurality of substantially transparent particles, each particle comprising: a spherical core comprised of a first transparent dielectric material, the spherical core having a value of a physical diameter equal to a half wavelength of a first selected color of light component to be reflected by the particle modified by a refractive index of the first transparent dielectric material; a plurality of material layers disposed radially outwardly from the spherical core, each of the plurality of material layers being comprised of at least a second transparent dielectric material, and having a value of a physical thickness equal to a quarter wavelength of at least a second selected color of light component to be reflected by the particle modified by a refractive index of the at least the second transparent dielectric material; and an outer coating comprised of another transparent dielectric material having a selected index of refraction of 2 or less, the outer coating having a thickness that substantially eliminates reflective interference between the colors reflected by adjacent particles when in contact with one another; wherein said plurality of substantially transparent particles are suspended in a substantially transparent binder material forming said energy transmissive layer; and wherein said imaging device is disposed in a shadow of said energy transmissive layer such that energy illuminating said energy transmissive layer that is not of said first selected color of light or said second selected color of light passes through said energy transmissive layer and impinges on said imaging device.
Although the claims at issue are not identical, they are not patentably distinct from each other because the entire scope of the reference claims falls within the scope of the instant claims and a patent to the claimed invention would improperly extend the right to exclude granted by the already issued patent.
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CALLIE SHOSHO can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787
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