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 .
The Information Disclosure Statements
The prior art cited in the information disclosure statements filed on 12/30/2025, has been considered.
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 2, 8-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3, 14 of U.S. Patent No. 11,624,651 B2 in view of Gratton et al. (US 2008/0009748 A1) [hereinafter Gratton]. Claim 14 Patent teaches all of claim 2 of the instant except wherein the resolution of the spectrometer is less than 10nm. However, Gratton, in the same field of endeavor, teaches spectrometer providing 1-2 resolution (paragraph 0089).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate a spectrometer with less than 10 nm resolution in optical apparatus in order to resolve close spectral lines/enhance spectral resolution.
Claims 3-7, 11-22, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,624,651 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because, for example, comparison of claims 3-7, 11-22, of the instant application to claims 1-18 of the US. Patent No. 11, 624,651 B2 reveals the claims of the instant application and the Patented claims define essentially the same invention in different language/wording. Thus, one of ordinary skill in the art would conclude that the invention defined in the claims at issue is an obvious variation of the invention defined in the claims in the Patented claims. Thus, examiner asserts the difference describe a subset of all possible conditions being monitored in the Patented. These differences are not sufficient to render the claim patentably distinct, and therefore a terminal disclaimer is required.
Instant claims correspond to the Patent claims as follows:
19/190,170
11,624,651
2, 8
14
9
2, 14
10
3, 14
Allowable Subject Matter
Claims 2-22 appear patentable once the DP rejection is overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Woodgate et al. (US 2004/0240777 A1) teaches optical switching apparatus with miniaturized spectrometer, diffusers, filter array, lens array, receiving detector (title, spec).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDULLAHI NUR whose telephone number is (571)270-1298. The examiner can normally be reached on M-F, 9am to 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel, can be reached on 571-272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABDULLAHI NUR/Primary Examiner, Art Unit 2886
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