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 .
Claim Objections
Claim 1, 5 and 9 are objected to because of the following informalities: In lines 6 and 7, “the other surface” should be changed to –an other surface--. Appropriate correction is required.
Claims 1, 2 and 5 are objected to because of the following informalities: In lines 13 and 14, “low-reflective index” should be changed to --low-refractive index--. Appropriate correction is required.
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, 3-5 and 7-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 6 and 8 of U.S. Patent No. 11600102. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims correspond as follows:
Application 19/268442
U.S. Patent 11600102
Claim 1
Claims 1 and 5
Claim 3
Claim 2
Claim 4
Claim 8
Claim 5
Claim 6
Claim 7
Claim 2
Claim 8
Claim 8
Claim 9
Claim 1
Claim 10
Claim 2
Claim 11
Claim 8
Claim 12
Claim 6
Claim 13
Claim 2
Claim 14
Claim 8
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 2018/0366593) in view of Kim et al. (US 11341763).
In regard to claim 1, Huang et al. teach a detection device comprising: a plurality of light-receiving elements configured to receive light (fig. 2 elements 25); and a light guide portion one surface of which faces the light-receiving elements, wherein the light guide portion comprises a plurality of light guide paths provided throughout from the one surface to the other surface of the light guide portion (fig. 2 elements 35); and a light-absorbing portion that has higher absorbance of the light than that of the light guide paths and is disposed on an upper surface of the low-reflective-index portion (element 30 and paragraph 24), and when viewed from a first direction in which the light-receiving elements and the light guide portion are stacked, more than one of the light guide paths overlap one of the light-receiving elements (fig. 2 elements 35 overlap elements 25) but does not teach a low-refractive-index portion that has a lower light refractive index than that of the light guide paths and that is disposed at a side of the light- receiving elements and a light-absorbing portion that is disposed on an upper surface of the low-reflective-index portion.
Kim et al. teach a low-refractive-index portion that has a lower light refractive index than that of the light guide paths and that is disposed at a side of the light- receiving elements (fig. 16 elements 210a and 210b).
The two are analogous art because they both deal with the same field of invention of fingerprint detection.
Before the effective filing date it would have been obvious to one of ordinary skill in the art to provide the apparatus of Huang et al. with the different refractive index layers of Kim et al. The rationale is as follows: Before the effective filing date it would have been obvious to provide the apparatus of Huang et al. with the different refractive index layers of Kim et al. because the different refractive indexes would ensure only light in the vertical direction is incident on the detector and would allow for more accurate detection.
Claim 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. in view of Kim et al. further considered with Higuchi (US 2007/0253606).
In regard to claim 3, Huang et al. teach all the elements of claim 2 except wherein each of the light guide paths is formed of a solid member having higher light transmittance than that of the light-absorbing portion.
Higuchi teaches wherein each of the light guide paths is formed of a solid member having higher light transmittance than that of the light- absorbing portion (fig. 6A element 23 and paragraph 64).
The three are analogous art because they all deal with the same field of invention of fingerprint detection.
Before the effective filing date it would have been obvious to one of ordinary skill in the art to provide the apparatus of Huang et al. and Kim et al. with the fillers of Higuchi. The rationale is as follows: Before the effective filing date it would have been obvious to provide the apparatus of Huang et al. and Kim et al. with the fillers of Higuchi because using fillers would increase the contrast of the image.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. in view of Kim et al. further considered with Lee et al. (US 2021/0167229)
In regard to claim 4, Huang et al and Kim et al. teach all the elements of claim 4 except wherein the light guide portion is formed of an organic material.
Lee et al. teach wherein the light guide portion is formed of an organic material (paragraph 27).
The three are analogous art because they all deal with the same field of invention of fingerprint detection.
Before the effective filing date it would have been obvious to one of ordinary skill in the art to provide the apparatus of Huang et al. and Kim et al. with the organic layer of Lee et al. The rationale is as follows: Before the effective filing date it would have been obvious to provide the apparatus of Huang et al. and Kim et al. with the organic layer of Lee et al. because the different organic materials are widely available and would work equally as well as the material of Huang et al. One of ordinary skill in the art would recognize the use of organic materials would work predictably and provide a cost effective solution to producing a light guide.
Allowable Subject Matter
Claims 5 and 7-14 would be allowed if a terminal disclaimer is filed.
Claims 2 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regard to claim 2, the prior art fails to teach or make obvious the lengths of the light-absorbing portion and low-refractive index portion.
In regard to claims 5-14, the prior art fails to teach or make obvious the second (selective) light-absorbing portion in combination with the claim’s other features.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH R HALEY whose telephone number is (571)272-0574. The examiner can normally be reached 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amr Awad can be reached at 571-272-7764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH R HALEY/ Primary Examiner, Art Unit 2621
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