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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,352,426 (hereinafter US ‘426) in view of Shen et al (US 2016/0138777).
Regarding claim 1 of the present application, claim 1 of US ‘426 discloses a light source device comprising: a plurality of independently operable light emitting devices; and a first lens having a lower face that faces the light emitting devices, and an upper face opposite the lower face; wherein: the lower face of the first lens comprises: an entrance part located in a center of the lower face where light from the light emitting devices enters, the entrance part comprising a convex protrusion protruding towards the light emitting devices, wherein, in a top plan view, the convex protrusion overlaps multiple ones of the light emitting devices, and a light guide part located outward of the entrance part and configured to guide the light entering the entrance part; the upper face of the first lens comprises a plurality of annular protruding portions; and in the top plan view, at least an outermost one of the plurality of annular protruding portions encompasses a bottommost portion of the light guide part.
Claim 1 of US ‘426 does not specifically teach that the entrance part be a concave portion overlapping the light emitting devices in a top plan view, wherein the entrance part comprises: a lower face convex portion provided in a lower face of the concave portion, and an angular portion protruding towards the light emitting device; and wherein the light guide part has an oblique face tilted toward an optical axis of the first lens. However, Shen discloses a first lens having an entrance part 120,130 being a concave portion overlapping light emitting devices in a top plan view, wherein the entrance part comprises: a lower face convex portion 120 provided in a lower face of the concave portion, and an angular portion 130 protruding towards the light emitting device; and wherein the light guide part 140 has an oblique face 144 tilted toward an optical axis of the first lens (see at least Figures 1 and 3-6 and paras [0033]-[0052]). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the light source device of US ‘426 to have an entrance part being a concave portion overlapping the light emitting devices in a top plan view, wherein the entrance part comprises: a lower face convex portion provided in a lower face of the concave portion, and an angular portion protruding towards the light emitting device; and wherein the light guide part has an oblique face tilted toward an optical axis of the first lens as taught by Shen in order to direct and converge the light beam towards the light output surface for a more brighter and more efficient light beam pattern.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Shen et al (US 2016/0138777) in view of Stopa et al (US 2018/0192484).
Regarding claim 1, Shen discloses a plurality of light emitting devices 20; and a first lens 100 (see Fig. 1) having a lower face that faces the light emitting devices, and a upper face 110 opposite the lower face; wherein: the lower face of the first lens 100 comprises: an entrance part (at least 120,130) where light from the light emitting devices enters, the entrance part being a concave portion overlapping the light emitting devices in a top plan view, wherein the entrance part 120,130 comprises: a lower face convex portion 120 provided in a lower face of the concave portion, and an angular portion 130 protruding towards the light emitting devices 20; and a light guide part 140 located outward of the entrance part and having an oblique face 144 tilted toward an optical axis of the first lens (see at least Figures 1 and 3-6 and paras [0033]-[0052]).
Shen does not specifically teach that the plurality of light emitting devices 20 be independently operable. However providing independently operable light emitting devices is well-known in the art and specifically taught in Stopa (see Stopa, at least paras [0006], [0041]-[0042] and Figs. 1-7). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was made to specify that the plurality of light emitting devices 20 in Shen be independently operable as taught by in order to provide variable emission pattern that selectively controls the intensity and size/directionality of the light beam pattern.
Regarding claim 2, the upper face 110 of the first lens 100 in Shen has an upper face convex portion (see at least Fig. 1 and paras [0043]-[0044]); and in a top plan view, the upper face convex portion encompasses the lower face convex portion.
Regarding claims 3-5, Shen does not specifically teach a second lens facing the first lens 100, wherein a lower face of the second lens has a plurality of annular protruding portions concentrically arranged and a flat upper face. However providing second lenses of the recited type in combination with a first lens is well-known in the art (Official Notice), and it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide a second lens in order to adjust the light beam pattern, protect the first lens from damage, modify the spectral output of the light beam or any other number of optical modifying reasons, and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (MPEP 2144.04(VI)(B)).
Regarding claims 6-7, Shen does not specifically teach that the lower face of the first lens 100 have a 4-fold symmetrical shape or quadrilateral shape in top plan view. However providing lenses having a lower face with a 4-fold symmetrical shape or quadrilateral shape in top plan view is well-known in the art (Official Notice), and it would have been obvious to one of ordinary skill in the art at the time the invention was made to form the lower face of the first lens 100 in Shen with a 4-fold symmetrical shape or quadrilateral shape in order to provide the desired light beam shape such as rectangular or square, and since it has been held that changing the form or shape or prior art parts does not make the claimed invention patentable over the prior art (MPEP 2144.04(V)(B)).
Regarding claim 8, the upper face 110 of the first lens 100 in Shen comprises: an upper face convex portion located in a center of the upper face of the first lens, and a flat portion located along a periphery of the upper face of the first lens (see at least Figures 1 and 3-6 and paras [0033]-[0052]).
Regarding claim 9, Shen does not specifically teach a second lens facing the first lens 100 and fixed to the flat portion of the lens. However providing second lenses of the recited type in combination with a first lens is well-known in the art (Official Notice), and it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide a second lens in order to adjust the light beam pattern, protect the first lens from damage, modify the spectral output of the light beam or any other number of optical modifying reasons, and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (MPEP 2144.04(VI)(B)).
Regarding claim 10, the device in Shen further comprises a substrate 30 on which the light emitting devices 20 are mounted, wherein the first lens is fixed to the substrate (see at least Figure 6).
Regarding claim 11, Shen does not specifically teach that the light emitting devices 20 be collectively arranged in a quadrangle in a top plan view. However providing light emitting devices collectively arranged in a quadrangle in a top plan view (Official Notice), and it would have been obvious to one of ordinary skill in the art at the time the invention was made to arranged the light emitting devices 20 in Shen in a quadrangle shape in order to provide the desired light beam shape such as rectangular or square, and since it has been held that changing the form or shape or prior art parts does not make the claimed invention patentable over the prior art (MPEP 2144.04(V)(B)).
Regarding claim 12, Shen does not specifically incorporating the light source device into a cellular phone. However providing light sources in a cellular phone is well-known in the art (Official Notice), and it would have been obvious to one of ordinary skill in the art at the time the invention was made provide the light source device in Shen into a cellular phone in order to provide a flashlight function within a cellular phone and increase the utility of the light source device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN P GRAMLING whose telephone number is (571)272-9082. The examiner can normally be reached Monday-Friday 8:30am-5pm EST.
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/SEAN P GRAMLING/Primary Examiner, Art Unit 2875