DETAILED ACTION
1. This is the first action on the merits relating to U.S. Application Serial No. 19/211,703 filed on May 19, 2025.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
3. Applicant’s disclosure of related application information as described in paragraph [0001] of the specification is acknowledged. Applicant may update the information. Applicant’s claiming benefit of US provisional applications via PCT applications is also acknowledged.
Preliminary Amendment
4. Receipt is acknowledged of the preliminary amendment filed on October 3, 2025. In the amendment claims 2-42 were canceled. Currently claim 1 remains in the examination.
Drawings
5. Receipt is acknowledged of the replacement drawings filed on October 3, 2035. The originally filed drawings and replacement drawings are approved.
Statutory Double Patenting
6. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
7. Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,307,323 B2 issued to Applicant (hereinafter “323 patent”). This is a statutory double patenting rejection.
Instant Application
323 patent
Claim 1
A method of identifying a test pattern, the method comprising:
positioning a test pattern in the field of view of a first imaging device, wherein the test pattern is on a first substrate and comprises a first multiplicity of particles that reflect or emit light;
illuminating the test pattern with light from a first light source, wherein the light from the first light source defines a first test angle of incidence with respect to the first substrate and a first test azimuthal angle with respect to an optical axis of the first imaging device;
obtaining, with the first imaging device, a first test image of light reflected by the first multiplicity of particles, wherein the first test image comprises first indicia associated with the first test angle of incidence and the first test azimuthal angle; and
comparing the first test image with a first reference image of a reference pattern obtained by a second imaging device, wherein the reference pattern is on a second substrate and comprises a second multiplicity of particles that reflect light, and the first reference image comprises second indicia associated with the second alignment feature and is obtained by illuminating the reference pattern with light from a reference light source that defines a first reference angle of incidence with respect to the second substrate and a first reference azimuthal angle with respect to an optical axis of the second imaging device.
Claim 1
A method of identifying a test pattern, the method comprising:
positioning a test pattern in the field of view of a first imaging device, wherein the test pattern is on a first substrate and comprises a first multiplicity of particles that reflect or emit light;
illuminating the test pattern with light from a first light source, wherein the light from the first light source defines a first test angle of incidence with respect to the first substrate and a first test azimuthal angle with respect to an optical axis of the first imaging device;
obtaining, with the first imaging device, a first test image of light reflected by the first multiplicity of particles, wherein the first test image comprises first indicia associated with the first test angle of incidence and the first test azimuthal angle; and
comparing the first test image with a first reference image of a reference pattern obtained by a second imaging device, wherein the reference pattern is on a second substrate and comprises a second multiplicity of particles that reflect light, and the first reference image comprises second indicia associated with the second alignment feature and is obtained by illuminating the reference pattern with light from a reference light source that defines a first reference angle of incidence with respect to the second substrate and a first reference azimuthal angle with respect to an optical axis of the second imaging device.
As shown in the claims comparison above, claim 1 of the instant application is verbatim identical to claim 1 of 323 patent.
This is a statutory double patenting rejection, and filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Conclusion
The pertinent prior arts made of record but not relied are listed in the attached form PTO-892. These are considered pertinent to Applicant's disclosure. Applicant is respectfully suggested to carefully review these references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ahshik Kim whose telephone number is (571)272-2393. The examiner can normally be reached between the hours of 8:00 AM to 5:00 PM Monday thru Friday. Examiner’s fax phone number is (571)273-2393.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael G. Lee, can be reached on (571)272-2398. The fax phone number for this Group is (571)273-8300.
Communications via Internet e-mail regarding this application, other than those under 35 U.S.C. 132 or which otherwise require a signature, may be used by the applicant and should be addressed to [ahshik.kim@uspto.gov].
PTO employees do not engage in Internet communications where there exists a possibility that sensitive information could be identified or exchanged unless the record includes a properly signed express waiver of the confidentiality requirements of 35 U.S.C. 122. This is more clearly set forth in the Interim Internet Usage Policy published in the Official Gazette of the Patent and Trademark on February 25, 1997 at 1195 OG 89.
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/AHSHIK KIM/Primary Examiner, Art Unit 2876
January 21, 2026
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