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 .
Response to Arguments
Regarding the claim objection made to claim 1 in the Office action mailed July 28, 2026, the amendment made to claim 1, as noted on pages 5-6 of applicant’s remarks, in the amendment filed September 17, 2026 overcomes this objection. The objection is hereby withdrawn.
Regarding the arguments made about the 35 USC 112(f) interpretation of “a processing device”, the examiner does not find applicant’s arguments persuasive. While the examiner recognizes that the absence of the word “means” creates a rebuttable presumption that the claim is not to be interpreted under 35 USC 112(f), MPEP 2181 also states that a claim limitation will be interpreted under 35 USC 112(f) if it meets a 3-prong analysis. These prongs are that the claim limitation uses the term “means” or a generic placeholder that is a substitute for “means”, the generic placeholder is modified by functional language, and the generic placeholder is not modified by sufficient structure for performing the claimed function. In this instance, all three prongs are met.
First, the word “device” is used as a generic placeholder or substitute for the word “means”. The examiner notes that MPEP 2181 I. A. uses “device” as an example of a generic placeholder that can be used in the place of “means” that will overcome the rebuttable presumption. Next, the limitation is modified by functional language, in this case “to determine a direction of heading during inertial navigation”, with “to” being a transition word to link the generic placeholder to the functional language. Finally, the term is not modified by sufficient structure, as “processing” is not a structural modifier. While the examiner understands that the processing device is mounted on a packaging substrate, the packaging substrate does not provide structure for the claimed processing device; that is the structure on which the processing device is mounted, and it would not constitute sufficient structure for performing the claimed function as appears to be argued by applicant on page 6 of the remarks. The data that the processing device uses is not considered structure either.
Finally, the examiner notes that the term “processing device” does not appear to be found in the instant specification, and while the specification provides structure for the processing device in paragraph 0047, the examiner would not consider that to provide sufficient support for the processing device to be immediately recognized as a structural limitation to remove interpretation of the limitation under 35 USC 112(f).
Regarding the rejection of claims 4 and 5 under 35 USC 112(a), the examiner appreciates that applicant points to paragraphs 0013-0015 to provide support for the limitation in the written description, but the examiner is not persuaded. As noted in the previous Office action and as reiterated below, “The specification discloses using the earth’s rotation to calculate direction in paragraph 0010 and 0011, while stating that the rotation signal can be used to translate into a coarse heading in paragraph 0014. However, there appears to be nothing in the specification that directly ties calibrating the gyroscope by using the earth’s rotation to increase precision.” Nothing in the paragraphs cited in the remarks or the specific quotes provided therein would appear to obviate the issue. The examiner agrees that the Earth’s rotation is used to make measurements more accurate such as the quote given on page 7 of the remarks from paragraph 0015, but there does not appear to be anything that ties calibration specifically to the Earth’s rotation. The only places the specification appear to mention rotation are in paragraph 0012 (“Alternatively, the user can walk around in a specific pattern or in a circle to initially calibrate the apparatus”) and paragraph 0063 (“The user's body position may also vary during calibrating the gyroscope”). As a result, the rejection is maintained.
Regarding the 35 USC 112(b) and 35 USC 112(d) rejections made in the previous Office action, applicant’s amendments filed September 17, 2026 along with the remarks found on pages 7-10 of the response are sufficient to overcome these rejections. All 35 USC 112(b) rejections are hereby withdrawn.
Regarding the double patenting rejection argued on page 10 of the remarks, the examiner does not find applicant’s statement that “Applicant disagrees with the rejections” while asking to hold the rejections in abeyance pending resolution of remaining matters to be a sufficient response. As stated in MPEP 804 I.B.1, double patenting rejections should not be held in abeyance, and that only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. A complete response is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer. Such a response is required, and replies with such an omission can be treated as non-responsive as provided in MPEP 714.03.
However, in the interest of compact prosecution, the examiner is maintaining the non-statutory double patenting rejection as will further be discussed below as part of this Office action, and the examiner requests that applicant properly respond to the double patenting rejection in any response filed to this Office action in order to avoid treatment of a future response as non-responsive. Additionally, applicant is reminded that “The filing of a terminal disclaimer to obviate a rejection based on nonstatutory double patenting is not an admission of the propriety of the rejection. Quad Environmental Technologies Corp. v. Union Sanitary District, 946 F.2d 870, 20 USPQ2d 1392 (Fed. Cir. 1991). In Quad Environmental Technologies, the court indicated that the ‘filing of a terminal disclaimer simply serves the statutory function of removing the rejection of double patenting, and raises neither a presumption nor estoppel on the merits of the rejection.’” See MPEP 804.02 II.
Claim Interpretation
For the reasons given in the previous Office action mailed July 28, 2026, the following limitation remains interpreted under 35 USC 112(f): “A processing device . . . to determine a direction of heading during inertial navigation . . .” in claims 1-15.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4 and 5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As for claim 4, the claim recites calibrating the fiber optic gyroscope to use the earth’s rotation to increase precision of the first rotation data along the critical axis. However, no support appears to be present in the instant specification for this limitation. The only description in the specification for calibration appears to be in paragraph 0012, which discloses that the user can walk around in a specific pattern or in a circle to initially calibrate the apparatus, and paragraph 0063 mentions that the user’s body position can vary during calibration. Additionally, the specification discloses using the earth’s rotation to calculate direction in paragraph 0010 and 0011, while stating that the rotation signal can be used to translate into a coarse heading in paragraph 0014. However, there appears to be nothing in the specification that directly ties calibrating the gyroscope by using the earth’s rotation to increase precision. As a result, the claim is rejected for failing to comply with the written description requirement.
Claim 5 is rejected by virtue of its dependency on claim 4, thereby containing all the limitations of the claim on which it depends.
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 1-3 and 6-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-7, 9, 10, and 16-19 of U.S. Patent No. 12,287,208. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of inertial navigation using a gyrocompass apparatus disclosed by the ‘208 patent would inherently require forming the gyrocompass apparatus, as the limitations from the ‘208 patent disclose the limitations of the instant application as follows.
Regarding claim 1, the combination of claims 1 and 5-7 of the ‘208 patent claims a method of forming and operating a gyrocompass apparatus with a portable form factor (as noted above, the method of inertial navigation using a gyrocompass apparatus disclosed in the ‘208 patent would inherently require forming the gyrocompass apparatus of the instant claim), the method comprising providing an encasement that serves as an outer housing of the gyrocompass apparatus (see claim 5 of the ‘208 patent); wrapping a fiber coil around a rigid frame, wherein the fiber coil is used as a rotation sensing element for a fiber optical gyroscope that is part of the gyrocompass apparatus (see lines 5-9 of claim 1 of the ‘208 patent); inserting the rigid frame wrapped with the fiber coil within the encasement; inserting a packaging substrate within the encasement (see claim 5 of the ‘208 patent), wherein the packaging substrate supports a first front-end chip that is coupled to the fiber coil, wherein the first front-end chip and the fiber coil are part of the fiber optical gyroscope that provides a first rotation data along a first axis, the first rotation data being detected at the front-end chip (see lines 10-19 of claim 1 of the ‘208 patent); mounting a first modularized integrated photonics optical gyroscope within the encasement, such that the first modularized integrated photonics optical gyroscope provides a second rotation data along a second axis (see claim 6 of the ‘208 patent); mounting a second modularized integrated photonics optical gyroscope within the encasement, such that the second modularized integrated photonics optical gyroscope provides a third rotation data along a third axis, wherein the first axis, the second axis and the third axis are mutually orthogonal to each other (see claim 7 of the ‘208 patent; note that claims 6 and 7 also provide the orthogonality of the axes); and mounting a processing device on the packaging substrate, wherein the processing device uses one or more of the first rotation data, the second rotation data and the third rotation data as inputs to determine a direction of heading during inertial navigation in an environment that has weak or non- existent data for satellite-based navigation (see lines 20-24 of claim 1 of the ‘208 patent; the processing device of the instant claim is inherent to the ‘208 patent claim, as a processing device is needed to perform the function set forth therein).
Further claim correspondence is as follows:
Claim 2 of the instant application with claims 1 and 5-7 of the ‘208 patent (the examiner notes that the orientation step found in lines 14-19 of claim 1 of the ‘208 patent covers orienting the first axis with a critical axis, and as the second and third axes are perpendicular to the first axis, they would inherently be considered, in the best understanding of the examiner, non-critical axes).
Claim 3 of the instant application with claims 1 and 5-7 of the ‘208 patent, as a gyrocompass is inherently a north-seeking device.
Claim 6 of the instant application with claim 3 of the ‘208 patent.
Claim 7 of the instant application with claim 4 of the ‘208 patent.
Claims 8 and 9 of the instant application with claim 9 or 19 of the ‘208 patent.
Claim 10 of the instant application with claim 10 of the ‘208 patent.
Claim 11 of the instant application with claim 16 of the ‘208 patent.
Claim 12 of the instant application with claim 17 of the ‘208 patent.
Claim 13 of the instant application with claim 18 of the ‘208 patent.
Claim 14 of the instant application with claim 9 of the ‘208 patent.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-7 of U.S. Patent No. 12,287,208 in view of Yao (2019/0234739).
As for claim 4, the combination of claims 1 and 5-7 of the ‘208 patent claims the invention as set forth above regarding claim 3, but fails to disclose calibrating the gyroscope to use the earth’s rotation to increase precision of the first rotation data along the critical axis.
Yao, in an optical gyroscope, discloses calibrating a gyroscope with a fixed rotation rate such as the rotation of the earth (see paragraph 0107).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to calibrate the gyroscope of the ‘208 patent by using the earth’s rotation as taught by Yao, the motivation being to precisely determine the measurement of rotation while having the measurement be free of external effects due to proper calibration (see paragraph 0107).
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-7 of U.S. Patent No. 12,287,208 in view of Paniccia et al (2020/0386944).
As for claim 15, the combination of claims 1 and 5-7 of the ’208 patent claim the invention as set forth above regarding 1, but fails to disclose including an accelerometer within the encasement.
Paniccia, in a device for integrated photonics optical gyroscopes, discloses incorporating accelerometers into the inertial measurement unit package of the device (see paragraph 0037).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add an accelerometer to the gyrocompass of the ’208 patent as taught by Paniccia, the motivation being to increase the functionality of the gyrocompass by allowing it to measure more data, thereby allowing it to be used in additional applications (see paragraph 0037).
Allowable Subject Matter
Claims 1-3 and 6-15 would be allowable in view of the prior art should the double patenting rejections set forth above be properly overcome.
The examiner notes claims 4 and 5 would allowable in view of the prior art for the same reason as claim 1 as will be set forth below should the 35 USC 112(a) rejection set forth above be properly overcome.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 1, the prior art of record, taken either alone or in combination, fails to disclose or render obvious a method of forming and operating a gyrocompass apparatus with a portable form factor, the method being allowable for the reasons given in the previous Office action of record mailed July 28, 2026, in combination with the rest of the limitations of the above claim.
Conclusion
THIS ACTION IS MADE FINAL. 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 Michael A. Lyons whose telephone number is (571)272-2420. The examiner can normally be reached Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at 571-270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael A Lyons/Primary Examiner, Art Unit 2877 October 2, 2026
