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 .
DETAILED ACTION
The preliminary amendment filed 4 March 2025 has been entered. Currently Claims 1-8, 10-19, 21 and 23 are pending.
Claim Objections
Claims 1 and 4 are objected to because of the following informalities: Claim 1’s recitation of “a surface” twice on line 2 and line 6. It is suggested to distinguish the two for example rephrasing the second recitation as –an emission surface—of the flexible light guide sheet.
Claim 4 is objected to because “the surface” is ambiguous as to which element it is referring to.
Appropriate correction is required.
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, 5-6, 10-19, 21 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-11, 14 and 18 of U.S. Patent No. 12,625,316. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are drawn to the same invention despite minor claim scope differences.
Instant application 19108634
US Patent 12,625,316
Reasons or description of equivalency
1
1
Instant Claim 1 is broader in scope as it only claims one light injection element and a first pattern. Instant claim recites in preamble a device for Automotive lamp which is not patentably distinguishable from the luminous module of issued Claim
5
1
Instant Claim 1 is broader in scope as it only claims one light injection element and a first pattern
6
1
Instant Claim 1 is broader in scope as it only claims one light injection element and a first pattern
10
1
Instant Claim 1 is broader in scope as it only claims one light injection element and a first pattern
11
1
It would be obvious for the pattern to be configured to generate a symbol recited
12
1
Both claims recite first and second injection elements for emitting first and second pattern
13
3
Identical claim language other than preamble
14
7
Identical claim language other than preamble
15
8
Identical claim language other than preamble
16
9
Identical claim language other than preamble
17
10
Identical claim language other than preamble
18
11
Identical claim language other than preamble
19
14
Identical claim language other than preamble
21
17-18
Identical claim language other than preamble
23
2
Identical claim language other than preamble
Claim Rejections - 35 USC § 102
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, would11 be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis fo13r 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, 17on sale, or otherwise available to the public before the effective filing date of the claimed18 invention.
The applicant is respectfully advised that in examining a pending application, the claims are interpreted as broadly as their terms reasonably convey. In re American Academy of Science Tech Center, 70 USPQ2d. 1827, 1834 (Fed. Cir. May 13, 2004). MPEP § 2111.01.
Claim(s) 1, 5-6, 10-15, 17-19, 21 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nichol (U.S. Patent No. 11,256,025).
Regarding Claim 1, Nichols discloses in Figures 1-5 and 101-102, an external rear device for an automotive vehicle 10102, the device comprising a surface, on which at least one luminous module 100 is arranged, with each luminous module including: an assembly of at least one flexible guide sheet 107, with each flexible guide sheet 107 of the assembly being able to receive light rays via at least one edge of the flexible guide sheet 107 and to reflect the light rays in a direction substantially normal to a surface of the flexible guide sheet in at least one pattern 1001 etched into the flexible guide sheet; at least one light injection element (input coupler 101) able to receive light and to distribute the light in the assembly of at least one flexible guide sheet 107; and at least one light source 102 able to inject light into the at least one light injection element 101.
Regarding Claim 5, Nichol discloses in Figures 1-5 and 101-102, the external rear device as claimed in claim 1,wherein the surface is a rigid panel with a given appearance, with the device having the appearance when each light source 102 is disabled, and wherein the pattern of the at least one flexible guide sheet 107 changes the appearance of the surface when at least one light source is activated.(Col 210, lines 5-15).
Regarding Claim 6, Nichol discloses in Figures 15- and 101-102, the external rear device as claimed in Claim 1, wherein the device includes a tail light for an automotive vehicle, and wherein at least one flexible guide sheet at least partially covers the tail light for an automotive vehicle (Col 147, lines 45-50).
Regarding Claim 10, Nichol discloses in Figures 1-5 and 101-102, the external rear device as claimed in claim1,wherein at least one luminous module is able to display at least one symbol 1001 in a given area of the luminous module based on the pattern of the at least one flexible guide sheet 107 of the assembly.
Regarding Claim 11, Nichol discloses in Figures 101-1102 the external rear device as claimed in claim 1 wherein at least one luminous module is able to display at least one first symbol 1001 in a given first area of the luminous module and at least one second symbol in a given second area of the luminous module based on the pattern of the at least one flexible guide sheet of the assembly.
Regarding Claim 12, Nichol discloses in Figures 3 the external rear device as claimed in claim 1,wherein, for at least one luminous module 100 , the luminous module comprise-s-includes first injection element and a second injection element 1001, the at least one source 102 is able to selectively inject light into the first injection element 101 and into the second injection element, and the first light injection element and the assembly of at least one flexible guide sheet 107 are arranged so as to project light according to a first pattern and wherein the second light injection element and the assembly of at least one flexible guide sheet are arranged so as to project light according to a second pattern.
Regarding Claim 13, Nichol discloses in Figures 1-5, the external rear device as claimed in claim 12, wherein the luminous module 100 comprise a first light source 102 able to inject light into the first light injection element 101 and a second light source 102 able to inject light into the second light injection element 101.
Regarding Claim 14, Nichol discloses in Figures 1-5, the external rear device as claimed in claim 12 wherein the first injection element 101 is arranged so as to inject light into a first section of the edge of the guide sheet 107 of the assembly, and wherein the second injection 101 is arranged so as to inject light into a second section of the edge of the flexible guide sheet, with a first portion of the flexible guide sheet107 located facing the first section of the edge being etched according to the first pattern 1001, and a second portion of the flexible guide sheet 107 located facing the second section of the edge being etched according to the second pattern.
Regarding Claim 15, Nichol discloses in Figures 1-5 and 101-102, the external rear device as claimed-in claim 12,wherein the assembly includes at least one first and one second flexible guide sheet 107, with the first pattern being etched into the first flexible guide sheet and the second pattern being etched into the second flexible guide sheet, the first injection element being arranged so as to inject light into an edge of the first flexible guide sheet and the second injection element being arranged so as to inject light into an edge of the second flexible guide sheet 107 (Col 152, lines 35-45 and Col 175, lines 10-15 the extraction features can be etched into the surface to create the pattern or symbol).
Regarding Claim 17, Nichol discloses in Figures 1-5, the external rear device as claimed in claim 15, wherein the first and second flexible guide sheets 107 are placed next to each other so as to project the first and second patterns at distinct positions.
Regarding Claim 18, Nichol discloses in Figures 1-5, the external rear device as claimed in claim 1,wherein the assembly includes more than two flexible guide sheets 107 placed next to each other so as to form a matrix of flexible guide sheets, with each flexible guide sheet being associated with a light injection element 101 able to inject light into an edge of the flexible guide sheet and each flexible guide sheet having at least one pattern etched into the sheet 107.
Regarding Claim 19, Nichol discloses in Figures 1-5, the external rear device as claimed in claim1, further comprising a control element, with the control element being able to control the at least one source to selectively project light according pattern and according to the-a second pattern (Col lines 60-67, Col 182, lines 35-50).
Regarding Claim 21, Nichol discloses in Figures 1-5, the external rear device as claimed in claim 1,wherein each flexible guide sheet 107 includes a film comprising including microstructures , and a surface density of microstructures decreases with the distance from the edge of the guide sheet into which the light is injected.
Regarding the wherein each pattern is etched by ultra-violet printing the microstructures of the film, the applicant is advised that, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 227 USPQ 964, (Fed. Cir. 1985). In this case, the cited limitations failed to distinguish the claimed structure from the patented light guide sheet of Nichol. See MPEP § 2113.
Regarding Claim 23, Nichol discloses in Figures 1-5 the external rear device as claimed in Claim 21, wherein each injection element includes a plurality of injection guides 104 , with each injection guide 104 being able to receive light from one end of the guide and to guide the light to a given longitudinal position of the injection element 101, with the longitudinal positions of the injection guides all being different so as to longitudinally distribute the light in the injection element.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 applicant is respectfully advised that in examining a pending application, the claims are interpreted as broadly as their terms reasonably convey. In re American Academy of Science Tech Center, 70 USPQ2d. 1827, 1834 (Fed. Cir. May 13, 2004). MPEP § 2111.01.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Nichol (U.S. Patent No .11,256,025) in view of Richard (U.S. Patent No. 9,403,477).
Nichol does not disclose a protective layer arranged on the at least one luminous module, with the luminous module being included between the surface and the protective layer wherein the protective layer is transparent and is able to filter ultraviolet rays and wherein the protective layer is an encapsulation layer able to encapsulate the luminous module between the surface and the encapsulation layer.
Richards discloses an encapsulating layer or element that protects a light module from UV for a motor vehicle (Col 8,lines 35-45).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate a protective layer or sheet over the module to protect the module form UV as well as moisture.
Claims 16 is rejected under 35 U.S.C. 103 as being unpatentable over Nichol (U.S. Patent No .11,256,025) in view of Sawada (U.S. PG Publication No. 2009/0219734).
Nichol does not disclose the external rear device as claimed in claim 15, wherein the first and second guide sheets 107 are overlaid in the luminous module, in order to project the first and second patterns into a common area of the luminous module .
Sawada discloses a luminous module with light guide sheets superimposed to project two patters into a common area of the luminous module (Figures 1-3b) for creating a dynamic image (PARA 0002).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have two patters on two superimposed light guide plates to alter the displayed pattern by activating both sheets or one displaying the combined patterns or one on the common area displayed.
Allowable Subject Matter
Claims 7-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art does not teach or suggest alone or in combination the device including a right tail light and left tail light for an automotive vehicle having a first luminous module arranged in a central position between the right tail light and the left tail light, a second luminous module arranged on the left tail light, and a third luminous module arranged on the right tail light.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J MAY whose telephone number is (571)272-5919. The examiner can normally be reached M-F 10AM-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached at 571-272-7044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J MAY/Primary Examiner, Art Unit 2875
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