-mail 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 .
Drawings
The drawings filed 5-13-25 have been accepted by the examiner.
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 1-20 of U.S. Patent No. 12,333,092. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 12,333,092 encompasses all the claim limitations of pending claims 1-20 of the Instant Application.
Pending Claim 1 of the Instant Application
Claim 1 of U.S. Patent No. 12,333,092
A stylus, comprising:
A stylus, comprising:
an elongated housing having a first end and a second end along an axial direction;
an elongated housing having a tip end and a tail end along an axial direction;
an optical sensor configured to receive incoming light incident on the first end;
an optical sensor configured to receive incoming light incident on the tip end;
a memory configured to store color information of the incoming light captured by the optical sensor;
a memory configured to store color information of the incoming light captured by the optical sensor;
a light emitter provided adjacent to the first end and configured to emit color light corresponding to the color information stored in the memory;
a light emitter provided adjacent to the tip end and configured to emit color light corresponding to the color information stored in the memory;
a light blocker interposed between the optical sensor and the light emitter, the light blocker having a first surface facing the light emitter and configured to reflect the color light emitted from the light emitter; and
a light blocker interposed between the optical sensor and the light emitter, the light blocker having a first surface facing the light emitter, and the first surface being mirror-finished to reflect the color light emitted from the color light emitter;
a transmitter configured to transmit, from the tip end, a position signal; and
a control circuit configured to control the optical sensor and the light emitter.
a control circuit configured to control the optical sensor, the light emitter, and the transmitter.
Pending Claim 13 of the Instant Application
Claim 13 of U.S. Patent No. 12,333,092
A color module configured to be housed in a first end side of an elongated housing, which has a first end and a second end along an axial direction, the color module comprising:
A color module configured to be housed in a tip end side of an elongated housing, which has a tip end and a tail end along an axial direction, the color module comprising:
an optical sensor configured to receive incoming light incident on the first end;
an optical sensor configured to receive incoming light incident on the tip end;
a memory configured to store color information of the incoming light captured by the optical sensor;
a memory configured to store color information of the incoming light captured by the optical sensor;
a light emitter provided adjacent to the first end and configured to emit color light corresponding to the color information stored in the memory; and
a light emitter provided adjacent to the tip end and configured to emit color light corresponding to the color information stored in the memory; and
a light blocker interposed between the optical sensor and the light emitter, the light blocker having a first surface facing the light emitter and configured to reflect the color light emitted from the light emitter.
a light blocker interposed between the optical sensor and the light emitter, the light blocker having a first surface facing the light emitter, and the first surface being mirror-finished to reflect the color light emitted from the light emitter.
Additionally, claims 2-12 and 14-20 of the instant application are rejected as being recited similarly to claims 2-12 and 14-20 of U.S. Patent No. 12,333,092.
Allowable Subject Matter
Claims 1-20 would be allowable if a terminal disclaimer were filed or if they were rewritten or amended to overcome the double patenting rejection set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, Lapstun et al. (US 2003/0063943) discloses (Fig. 9 and 26) a stylus (called a “pen,” for example in [0108]), comprising:
an elongated housing (1204) having a first end (the bottom left end in Fig. 9) and a second end (the top right end in Fig. 9) along an axial direction (eg. corresponding to the long axis of the stylus);
an optical sensor (1216) configured to receive incoming light incident on the first end (eg. corresponding to light from the “substrate,” and then “Light received by the lens is guided by the optics molding 1214 to the image sensor device 1216” as discussed in [0425]);
a memory configured to store color information of the incoming light captured by the optical sensor (“non volatile memory in which is stored a plurality of different color values” discussed in [0142]);
a light emitter (1224) provided adjacent to the first end (seen in the bottom left of Fig. 9) and configured to emit color light corresponding to the color information stored in the memory (called “display LEDs 1224” in [0109], with “displays a color corresponding to the settings” and “organic light emitting diode (OLED) display capable of displaying the required colors” both discussed in [0139], and “selected color is displayed on the color display” discussed in [0170]);
a light blocker (1214) interposed between the optical sensor and the light emitter (seen best in Fig. 9 and 10, 1214 is in between the light emitters 1224, but blocks light for the sensor 1216 except through the aperture 1233 as discussed in [0111]), the light blocker having a first surface facing the light emitter (eg. the outside surface, see Fig. 9 and 10 which shows the light emitter 1224 outside of 1214, compared to the sensor 1216 which is “inside” 1214); and
a control circuit (1220) configured to control the optical sensor (“pen processor adapted to: (i) receive sensed coded data from the sensor” discussed in claim 22) and the light emitter (“controller chip then sets the color to be… displayed to the sampled color” discussed in [0170]).
However, while Lapstun teaches the light blocker “includes beam combiners” (see [0111]), which reflect light, the light blocker is for directing light from light sources 1218 instead of light emitters 1224 (eg. “light emitted by the light source device 1218 is guided by the optics molding 1214” discussed in [0111]), and so Lapstun fails to teach or suggest the first surface of the light blocker “configured to reflect the color light emitted from the light emitter.”
Craft (US 2015/0268755) discloses a stylus which includes a surface to reflect light (32) as part of the tip (eg. as seen in Fig. 3), however fails to teach or suggest the surface is facing the light emitter or used to reflect the color light (seen in Fig. 3, 32 is in a completely different cavity than the emitter 34 or 35).
Gruhlke et al. (US 2015/0286293) and Skillman et al. (US 2008/0100593) disclose stylus which include a surface to reflect light (eg. 805 of Gruhlke, seen in Fig. 8, and 970 of Skillman, seen in Fig. 9B), but each are directed towards optical stylus, and so fail to teach or suggest the mirror is facing the light emitter or used to reflect the color light.
Therefore, each of the currently cited references of record fails to teach or suggest “the light blocker having a first surface facing the light emitter and configured to reflect the color light emitted from the light emitter” when combined with each of the other current recited claim limitations.
Claim 13 is directed towards a color module instead of a stylus, but otherwise recites claim limitations substantially identical to those of claim 1, and so would be allowable for the same reasons as discussed above.
Claims 2-12 and 14-20 are dependent upon claims 1 and 13, and so would be allowable for the same reasons as discussed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN M BLANCHA whose telephone number is (571)270-5890. The examiner can normally be reached Monday to Friday, 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chanh Nguyen can be reached at 5712727772. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN M BLANCHA/Primary Examiner, Art Unit 2623
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