DETAILED ACTION
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.
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 1-5 ,9, 10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of copending Application No. 18/891708 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed subject matter is directed towards the same concept. The only differences in the asserted subject matter are well known in the art or aesthetic choices.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The Examiner further notes that the double patenting rejection is a preliminary double patenting rejection. If the rejection is still applicable at the time of allowance and Applicant has not filed a terminal disclaimer then a detailed analysis will be provided at that time.
Examiner’s Note
The Examiner notes that the claims set forth functional limitations that are extremely broad. Specifically, the limitation “a pattern portion having a geometric pattern” is unclear as to what the geometric pattern is formed of or comprises, or if it performs any optical functions.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 9-10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Park (U.S. 2025/0075873, effectively filed 9/1/2023 as provisional 63/580,195).
Regarding claim 1, Park teaches a lighting device for a vehicle (see fig 1), comprising:
a housing (housing 120) having an opening;
a lens (functional layer 143) portion coupled to the housing and configured to cover the opening of the housing portion;
a light source (light source 110) housed at the housing and configured to emit light toward the lens portion;
a first layer (color layer 142) disposed on the lens and configured to allow the light emitted from the light source to pass through; and
a second layer (pattern layer 145) positioned between the light source and the lens (see fig. 1), spaced apart from the lens (spaced apart by protective layer 141) and configured to allow the light emitted from the light source to pass through (allows light through 145b),
wherein the second layer includes a pattern portion (openings 145a) having a geometric pattern (see p. 0053, can be formed of a specific shape, specifically geometric as shown in figure 3) and a light transmittance of the pattern portion is different from that of the first layer (first layer transmits colored light, pattern portion blocks non pattern light).
The Examiner notes that the limitation “lens” has been interpreted as “a transmissive optical device that focuses or disperses a light beam by means of refraction”.
Regarding claim 2, Park teaches that the first layer portion has a same color as a vehicle body of the vehicle (see p. 0055).
Regarding claim 3, Park teaches wherein: the lens has a first surface facing in a first direction toward the light source (inner surface) and a second surface facing in a second direction opposite to the first direction (outer surface), and the first layer is disposed on the first or second surface of the lens (outer surface).
Regarding claim 4, Park teaches that the first layer portion comprises a film attached to the lens portion (film 140).
Regarding claim 5, Park teaches that the first layer comprises a coating layer applied to the lens (forms a coating).
Regarding claim 9, Park teaches comprising a third layer coated on and covering the lens (first protective layer 141).
Regarding claim 10, Park teaches further comprising a grille disposed on a front portion of a vehicle body, wherein the housing is mounted to the grille (see fig. 3).
Claim Rejections - 35 USC § 103
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.
Claim 6, 8, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Hwang (U.S. 11,667,235).
Regarding claim 6, Park teaches that the pattern portion comprises: a first pattern portion (innermost columns of triangles) having a geometric pattern and a second pattern portion having a second geometric pattern (outermost columns of triangles).
Park does not teach a second pattern portion having a light transmittance lower than that of the first pattern portion.
Hwang teaches that the pattern portion comprises: a first pattern portion (fine pattern 44) configured to allow the light emitted from the light source portion to pass through; and a second pattern (diffusion paint portion 46)portion having a light transmittance lower than that of the first pattern portion (first pattern is transparent).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used a pattern layer as taught by Hwang to provide additional design features and elements, i.e. as a decorative element (see col. 1 lines 35-48 of Hwang).
Regarding claim 8, Hwang teaches that the pattern portion further comprises a third pattern portion (opaque pattern 42) formed with stripes, arranged across the first pattern portion and the second pattern portion, and having a light transmittance lower than that of the first pattern portion (opaque metal).
Regarding claim 9, Park does not teach further comprising a third layer portion coated on the lens portion and covering the lens portion.
Hwang teaches a third layer portion (clear paint portion 30) coated on the lens portion and covering the lens portion (covers rear of lens portion).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used the clear paint portion of Hwang on the rear of the lens of Glickman to protect the lens and provide an additional layer for aesthetic effects such as the black paint portion 20.
Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Hwang, further in view of McEwan (U.S. 2015/0194082).
Regarding claim 7, Glickman and Hwang does not teach that the second geometric pattern includes a gradient pattern.
McEwan teaches a pattern portion that includes a gradient pattern (gradient window 210, see p. 0029).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used a gradient pattern as taught by McEwan to form the second pattern portion of Glickman and Hwang to provide an aesthetic pattern.
The Examiner notes that the gradient pattern is a matter of design choice and aesthetics, and therefore cannot be relied upon to overcome the prior art.
Response to Arguments
Applicant’s arguments with respect to the claim(s) 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.
The Examiner notes that current amendments do not overcome the double patenting rejection as the recitation of a “geometric pattern” is an aesthetic limitation and does not have patentable weight.
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 MATTHEW J PEERCE whose telephone number is (571)272-6570. The examiner can normally be reached 8-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Greece can be reached on (571) 272-3711. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew J. Peerce/Primary Examiner, Art Unit 2875