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 .
Priority
Acknowledgment is made of this application’s status as a continuation of application 18/454,320 now patent 12,358,423 filed on 08/23/2023, which is a continuation of application 17/122,629 now patent 11,780,365 filed on 12/15/2020, which is a continuation of application 16/817,214 now patent 10,894,508 filed on 03/12/2020, which is a continuation/divisional of application 16/379,888 now patent 10,661,706 filed on 04/10/2019, which claim foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of JP2018-077161 filed on 04/12/2018 has been received/retrieved by the office during the prosecution of the parent application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/10/2025 has been considered 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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,661,706B2 in view of US2017/0259731A1.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,894,508B2 in view of US2017/0259731A1.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,780,365B2 in view of US2017/0259731A1.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,358,423 in view of US2017/0259731A1.
Regarding claims 1-10, although the claims are not identical to any of the listed prior patents, however, they are similar in scope and rendered obvious in view of the rejection made below.
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.
Claims 1-10 are 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.
Regarding claim 1, the claim recites term “the boundary area” which renders the claim indefinite, as there is a lack of antecedent basis for said term.
Regarding claims 2-10, the claims are rejected based upon dependency of rejected claim 1, as all dependent claim inherits the deficiencies of the based claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US2017/0259731A1 hereinafter “Son”
Regarding claim 1, Son discloses an optical device for displaying a condensing mark (¶41L1-12: lamp unit to irradiate light of a road pattern), comprising:
a light source (¶71L7-8: a plurality of light source part); and
an optical element (¶71L8-11: a plurality of reflector) having a deflection surface for condensing a light emitted from the light source (¶72L1-14: the reflectors reflect light generated by the light source), wherein
the deflection surface is divided into at least more than two regions (¶74L1-12: the reflectors include reflective surfaces [241a] and [241b]), lights deflected through the regions on the deflection surface of the optical element, respectively, form partial irradiation images on an irradiated surface (¶74L1-12: reflective surface [241a] forma a first beam pattern; reflective surface [242a] forma a second beam pattern), and
each partial irradiation image has a different shape at a different location on an irradiated surface for each region on the deflection surface (as shown in Fig.19 for example; ¶77L1-13: a first beam pattern [P1] and a second beam pattern [P2]),
the partial irradiation images are combined with each other to form at least one condensing mark on the irradiated surface (as shown in Fig.19, ¶77L1-13: beam pattern [P2] include a plurality of beam pattern area [P21], [P22] and [P23] slightly differ in form and quantity), and
the regions on the deflection surface of the optical element which correspond, respectively, to the partial irradiation images forming the one condensing mark have different values of direction cosines at the boundary area (¶53L1-14: the pattern formed have a predetermine dangle from the central line) than adjacent regions (¶87L1-7: light may be reflect by the reflective surface [261a] which forma a first beam pattern; and other light generated by first light source may be reflected by reflective surface [261b] which forma a second beam pattern) and different free-form surface shapes than adjacent regions. (as shown in Fig.17 and Fig.21 for example)
Regarding claim 2, Son discloses the optical device according to claim 1, wherein
the optical element is a single reflector for reflecting the light emitted from the light source. (as shown in Fig.21 for example)
Regarding claim 3, Son discloses the optical device according to claim 1, wherein
the deflection surface of the optical element is divided into a first deflection surface and a second deflection surface (¶87L1-7: light may be reflect by the reflective surface [261a] which forma a first beam pattern; and other light generated by first light source may be reflected by reflective surface [261b] which forma a second beam pattern) relative to a plane passing through a center of a light emitting surface of the light source. (as shown in Fig.21 for example)
Regarding claim 4, Son discloses the optical device according to claim 3, wherein
partial irradiation images corresponding to the first deflection surface and the second deflection surface, respectively, are formed on left and right sides of an extension line on the irradiated surface (¶87L1-7: light may be reflect by the reflective surface [261a] which forma a first beam pattern; and other light generated by first light source may be reflected by reflective surface [261b] which forma a second beam pattern), respectively, the extension line passing through a boundary, which divides the deflection surface into two deflection surfaces having the free-form surface shapes, and the center of the light emitting surface of the light source. (as shown in Fig.21 for example)
Regarding claim 5, Son discloses the optical device according to claim 4, wherein
each of the deflection surfaces forms one partial irradiation image, and the two deflection surfaces form one condensing mark. (as shown in Fig.19 for example; ¶77L1-13: beam pattern [P2] include a plurality of beam pattern area [P21], [P22] and [P23] slightly differ in form and quantity)
Regarding claim 7, Son discloses the optical device according to claim 1, wherein the partial irradiation images are shaped into straight lines and slopes of the straight lines are different from each other, and the partial irradiation images are arranged on positions on the irradiated surface which are different from each other. (as shown in Fig.19 for example)
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Son in view of US2015/0316248A1 hereinafter “Feit”
Regarding claim 6, Son discloses the optical device according to claim 1,
Son does not explicitly disclose:
the optical element is a lens, the lens receiving incidence of the light emitted from the light source and emitting the light from an emission surface, and the deflection surface is at least one of the emission surface or an incident surface of the lens.
Son does disclose a lens used on the light emitting element. (¶50L1-17: the light source include a lens)
Feit discloses a lamp wherein the reflector and lens are integrated together as part of the lamp. (¶5)
It would have been obvious to one ordinarily skilled in the art prior to the effective filing date of the application modify the lamp as disclosed by Son to integrate the lens and reflector as make it a single component.
One of ordinary skill in the art would’ve been motivated because it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1983).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Son in view of US2017/0151904A1 hereinafter “Youn”
Regarding claim 8, Son discloses the optical device according to claim 1,
Son does not explicitly disclose:
the condensing mark is a mark indicating a specific intention.
Youn discloses a vehicle lamp having a signal function wherein
the condensing mark is a mark indicating a specific intention. (as shown in Fig.25 for example; ¶24: an exemplary schematic diagram of a first pattern and a second pattern formed when a vehicle changes lanes according to an exemplary embodiment of the present disclosure)
It would have been obvious to one ordinarily skilled in the art prior to the effective filing date of the application modify the lamp as disclosed by Son to incorporate the features disclosed by Youn.
One of ordinary skill in the art would’ve been motivated because Son recognizes that road pattern may vary according to purpose and need. (¶52L1-16)
Regarding claim 9, Son discloses the optical device according to claim 1,
Son does not explicitly disclose:
the condensing mark has a shape indicating a direction.
Youn discloses a vehicle lamp having a signal function wherein
the condensing mark has a shape indicating a direction. (as shown in Fig.25 for example; ¶24: an exemplary schematic diagram of a first pattern and a second pattern formed when a vehicle changes lanes according to an exemplary embodiment of the present disclosure)
It would have been obvious to one ordinarily skilled in the art prior to the effective filing date of the application modify the lamp as disclosed by Son to have a shape indicating a direction for vehicle lane change.
One of ordinary skill in the art would’ve been motivated because Son recognizes that road pattern may vary according to purpose and need. (¶52L1-16)
Regarding claim 10, Son discloses the optical device according to claim 9,
Son does not explicitly disclose:
the condensing mark has an arrowhead shape or is an arrow mark.
Youn discloses a vehicle lamp having a signal function wherein
the condensing mark has an arrowhead shape or is an arrow mark. (as shown in Fig.25 for example; ¶24: an exemplary schematic diagram of a first pattern and a second pattern formed when a vehicle changes lanes according to an exemplary embodiment of the present disclosure)
It would have been obvious to one ordinarily skilled in the art prior to the effective filing date of the application modify the lamp as disclosed by Son to have a shape indicating a direction for vehicle lane change.
One of ordinary skill in the art would’ve been motivated because Son recognizes that road pattern may vary according to purpose and need. (¶52L1-16)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND R CHAI whose telephone number is (571)270-0576. The examiner can normally be reached M-F 9:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Taningco can be reached at 571-242-8048. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Raymond R Chai/ Primary Examiner, Art Unit 2845
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