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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,504,137. Although the claims at issue are not identical, they are not patentably distinct from each other because claims are directed to the same scope, with different terms referring to substantially similar structures.
Claims provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/691765 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims are directed to the same scope, with different terms referring to substantially similar structures .
Claims provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/692445 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims are directed to the same scope, with different terms referring to substantially similar structures .
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The Examiner notes that the double patenting rejections are preliminary double patenting rejections. If the claims are in condition for allowance and the Applicant has not filed a terminal disclaimer then a full double patenting rejection will be presented at that time.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the fastener of claim 11 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim11-18 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 recites “the thick wall and the reflector are coupled by a fastener, and the inner cover is arranged between the thick wall and the reflector”. As best understood, the thick wall is part 3 of the figures, and is a portion of the light guide. Such is set forth only in p. 0030.
There is support for a fastener between 511 and 512, however the Examiner is unclear what kind of fastener and the operation of such being used for the light guide. Figure 1 and 6 indicate that the thick wall does not contact the reflector, it is unclear how the fastener would operate or if it is an indirect coupling.
I.e. Applicant appears to set forth a fastener through the thick wall portion 3 of the light guide, however there is no indication of how this operates in the figures and the description does not add further clarity.
Claims 12-18 rejected as they are dependent from claim 11.
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(s) 1, 9, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over 799 (CN 113266799, included on IDS).
Regarding claim 1, 799 teaches a lamp, comprising:
a housing (see fig. 1);
an outer cover (outer cover, not numbered),
the housing and the outer cover defining a light chamber (see fig. 1); and
a light guide structure (guiding structure in figure 1) arranged in the light chamber and comprising a thick wall (light guide portion 10),
wherein the light guide structure further comprises a light source (light source 42), an inner cover (light homogenizing sheet 40) and a reflector (portion 41),
the reflector is coupled to the housing (coupled within housing) and configured to reflect the light emitted from the light source to the inner cover, and emit the light through the inner cover and the thick wall in sequence (see fig. 1).
Regarding claim 9, 711 teaches that the light guide structure is coupled to the housing (held in place via pressing portion 20); and an upper decoration frame (20) is arranged above the thick wall, and a lower decoration frame (see annotated figure 1) is arranged below the thick wall.
The Examiner notes that “decoration” has been interpreted as a functional limitation directed towards the aesthetics of the structure. The limitation does not explicitly or implicitly set forth any structure.
Regarding claim 20, 799 teaches a vehicle, comprising: a lamp, comprising:
a housing (see fig. 1);
an outer cover, the housing and the outer cover defining a light chamber; and
a light guide structure arranged in the light chamber and comprising a thick wall, wherein the light guide structure further comprises a light source, an inner cover and a reflector, the reflector is coupled to the housing and configured to reflect the light emitted from the light source to the inner cover, and emit the light through the inner cover and the thick wall in sequence (see fig. 1).
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(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over 799 in view of US 11,499,689
Regarding claim 10, 799 teaches a main decoration frame and that the main decoration frame is coupled to the lower decoration frame (see annotated figure 1).
799 does not teach the main decoration frame is coated with a coating is arranged below the thick wall.
11,499,689 teaches the main decoration frame is coated with a coating is arranged below the thick wall (reflector 72, aluminum coated polymer, see col. 6 lines 12-22).
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 reflective coating as taught by 689 on the main decoration frame of 799 to reflect any stray light and increase the optical efficiency of the structure.
Claim(s) 11-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over 799 in view of Natsume (US 7946743)
Regarding claim 11, 799 does not teach that the thick wall and the reflector are coupled by a fastener, and the inner cover is arranged between the thick wall and the reflector.
Natsume teaches that the thick wall and the reflector are coupled by a fastener, and the inner cover is arranged between the thick wall and the reflector (boss of 30a extends through 42a, see fig. 4).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have used fasteners as taught by Natsume to secure the thick wall and reflector of 799 together to enable proper alignment and prevent vibration issues.
Regarding claim 12, 799 teaches that the upper decoration frame and the lower decoration frame are coupled to the reflector and configured to reflect the light to the thick wall (fig. 1 shows reflections on 20, 30, 20 presses on thick wall).
Regarding claim 13, 799 teaches that the inner cover comprises a first light entrance surface and a first light exit surface, and the thick wall comprises a second light entrance surface and a second light exit surface; and a distance L1 from the first light exit surface to the second light entrance surface satisfies: 0 <_L1<_1 mm (see fig. 1, L1 appears to be 0).
Regarding claim 14, 799 teaches that along a height direction of the extension direction of the thick wall, the thick wall comprises a top surface and a bottom surface, the bottom surface is provided with a first protruding part, the top surface is provided with a second protruding part, and the first protruding part and the second protruding part extend along the extension direction of the thick wall (portion 11 extends along top and bottom).
Regarding claim 15, 799 does not specifically teach that along the height direction of the thick wall, a height H1 of the first protruding part satisfies: 2 mm<H 20 mm, and a height H2 of the second protruding part satisfies: 2 mm <H2< 20mm.
It would have been obvious to a person having ordinary skill in the art at the time that the invention was made to have optimized the height of the first protruding part and second part to optimize the space required while insuring structural stability. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F. 2d 454, 456.
Regarding claim 16, 799 teaches that along a direction from the second light entrance surface to the second light exit surface, a thickness T1 of the first protruding part satisfies: 2 mm Ti<10mm, and a thickness T2 of the second protruding part satisfies: 2 mm <T2_10 mm (799 specifically teaches that the thickness of the limiting part 11 “is usually selected between 2mm and 5mm”).
Regarding claim 17, 799 teaches that each of the second light entrance surface, the second light exit surface, the top surface and the bottom surface is a smooth surface (see abstract, “smooth planes”).
Regarding claim 18, 799 teaches that the outer cover comprises a third light exit surface, and the third light exit surface is parallel to the second light exit surface. (see fig. 1)
Conclusion
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.
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, 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
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