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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-20 of U.S. Patent No. 12,361,636. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are broader in every way than the patent claims.
Claim 1 of the application corresponds to claim 1 of the patent as follows:
Application
Patent
An imaging system comprising:
a processing unit configured to execute instructions to cause the system to:
capture a three-dimensional (3D) scan of a 3D object by
An imaging system comprising:
a processing unit configured to execute instructions to cause the system to:
capture a three-dimensional (3D) scan of a 3D object
obtaining 3D data points corresponding to a particular perspective of the 3D object, the obtained 3D data points including a number of new 3D data points that are non-overlapping with 3D data points previously obtained and stored in a set of 3D scanning data
obtaining 3D data points corresponding to a particular perspective of the 3D object… the new 3D data points being obtained 3D data points that are non-overlapping with 3D data points already stored in a set of 3D scanning data
responsive to determining that the number of new 3D data points exceeds a predetermined threshold, automatically capturing a two-dimensional (2D) image corresponding to the particular perspective of the 3D object
responsive to determining that the number of new 3D data points exceeds a predetermined threshold, automatically capturing a 2D image corresponding to the particular perspective of the 3D object
storing the new 3D data points corresponding to the particular perspective of the 3D object in the set of 3D scanning data and storing the 2D image in association with the stored new 3D data points
storing the new 3D data points corresponding to the particular perspective of the 3D object in the set of 3D scanning data and storing the 2D image in association with the stored new 3D data points
The application claims correspond to the patent claims as follows:
App
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
Pat
1
2
3
4
8
18
5
6
7
16
19
9
10
3
12
17
13
14
15
20
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON M RICHER whose telephone number is (571)272-7790. The examiner can normally be reached 9AM-5PM.
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, King Poon can be reached at (571)272-7440. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON M RICHER/Primary Examiner, Art Unit 2617
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