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.
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Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,306,413. Although the claims at issue are not identical, they are not patentably distinct from each other because the same subject matter is claimed in both.
Detailed analysis for claim 1 is provided below.
Claim 1 of Application
Claim 1 of Patent ‘413
Comparison
A display comprising: a frame; an eyepiece coupled to the frame, wherein the eyepiece comprises: a light input region; and a light output region;
A display comprising: a frame; an eyepiece coupled to the frame, wherein the eyepiece comprises: a light input region; and a light output region;
Identical
a first adhesive bond disposed between the frame and the eyepiece, wherein the first adhesive bond is disposed along a first portion of a perimeter of the eyepiece,
a first adhesive bond disposed between the frame and the eyepiece, wherein the first adhesive bond is disposed along a first portion of a perimeter of the eyepiece,
Identical
wherein the first portion of the perimeter of the eyepiece borders the light input region such that the first adhesive bond is configured to limit in-plane expansion or contraction of the eyepiece relative to the frame,
wherein the first portion of the perimeter of the eyepiece borders the light input region such that the first adhesive bond is configured to maintain a position of the light input region relative to the frame,
Maintaining the relative position between the light input region and the frame is equivalent to limiting in-plane expansion or contraction of the eyepiece relative to the frame.
wherein the frame further comprises a second adhesive bond disposed between the frame and the eyepiece, wherein the second adhesive bond is disposed along a second portion of a perimeter of the eyepiece,
wherein the display further comprises a second adhesive bond disposed between the frame and the eyepiece, wherein the second adhesive bond is disposed along a second portion of the perimeter of the eyepiece,
The second adhesive bond is disposed along a second portion of the perimeter of the eyepiece of both.
wherein the second portion of the perimeter of the eyepiece borders the light output region, and wherein the second adhesive bond is configured to permit in-plane expansion or contraction of the eyepiece relative to the frame.
wherein the second portion of the perimeter of the eyepiece borders the light output region, and wherein the second adhesive bond is configured to permit in-plane expansion of the eyepiece relative to the frame.
Identical
As analyzed above, though claim 1 of the application and claim 1 of patent ‘413 are different, they both have the same subject matter. Therefore, it would have been obvious to modify claim 1 of ‘413 as claim 1 for the reason above.
Claim 2 corresponds to claim 2 of patent ‘413 regarding the first and second elastic moduli.
Claim 3 corresponds to claim 3 of patent ‘413 regarding the third adhesive bond.
Claim 4 corresponds to claim 4 of patent ‘413 regarding the first adhesive bond length.
Claim 5 corresponds to claim 5 of patent ‘413 regarding position of the first adhesive bond.
Claim 6 corresponds to claims 6 and 12 of patent ‘413 regarding the edge spacers and pillar spacers.
Claim 7 corresponds to claim 7 of the patent ‘413 regarding the coupling of spacers.
Claim 8 corresponds to claim 8 of the patent ‘413 regarding the layer of lubricant.
Claim 9 corresponds to claim 9 of the patent ‘413 regarding the integral formation.
Claim 10 corresponds to claim 10 of the patent ‘413 regarding the coefficients of friction.
Claim 11 corresponds to claim 11 of the patent ‘413 regarding the slot.
Claim 12 corresponds to claims 13 and 12 of patent ‘413 regarding the edge spacers and pillar spacers.
Claim 15 corresponds to claim 15 of the patent ‘413 regarding the steps.
Claim 16 corresponds to claim 16 of the patent ‘413 regarding the integral formation.
Claim 17 corresponds to claim 17 of the patent ‘413 regarding the layer of lubricant.
Claim 18 corresponds to claim 18 of the patent ‘413 regarding the slot.
Claim Rejections - 35 USC § 112
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.
Claim 19 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As for claim 19, it is unclear as to where the foam layer is to be located to allow one of ordinary skill in the art to make the display. Is the foam layer abutting the first eyepiece layer or is it abutting the second eyepiece layer or is it a layer between the first eyepiece layer and the second eyepiece layer?
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TOM V SHENG whose telephone number is (571)272-7684. The examiner can normally be reached Mon-Fri 9:30-6:30.
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/TOM V SHENG/ Primary Examiner, Art Unit 2628