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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS), submitted on September 12 of 2024, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement 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, 12 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 9, 16 and 19 of U.S. Patent No. 12,442,509 (MATSUOKA et al.).
Regarding independent claim 1, MATSUOKA et al., in Patented Claims 1 and 6, teaches a cover structure (combination of “lens” and “cover member”, see lines 4 and 6 of Patented Claim 1) including a lens (see line 4 of Patented Claim 1); and a cover member (see line 6 of Patented Claim 1) disposed over the lens (see line 6 of Patented Claim 1) and having a lower surface (see lines 6 and 7 of Patented Claim 1) and an upper surface (see lines 7 and 8 of Patented Claim 1), wherein the lower surface of the cover member includes a first region (see lines 9 and 10 of Patented Claim 1), and a second region located around the first region (see line 13 of Patented Claim 1), wherein: a light diffusing substance is disposed on the lower surface of the cover member in the second region (see lines 1-3 of Patented Claim 6), such that a light diffusivity of the second region is higher than a light diffusivity of the first region (see lines 14 and 15 of Patented Claim 1), wherein: the upper surface of the cover member is covered by a light-transmissive member (see lines 19 and 20 of Patented Claim 1), and a hardness of the light-transmissive member is higher than a hardness of the cover member (see lines 20 and 21 of Patented Claim 1).
Although the claims at issue are not identical, they are not patentably distinct from each other because one of ordinary skill in the art would have recognized that the use of open-ended language in the instant claims (i.e. comprising) does not preclude the inclusion of the additional elements and/or structural features defined by the cited patented claim (e.g. the light diffusivity on the second region increasing from an inner side towards an outer side).
Regarding independent claim 12, MATSUOKA et al., in Patented Claims 16 and 19, teaches a cover structure (see preamble of Patented Claim 16) including a lens (see line 2 of Patented Claim 16); and a cover member disposed over the lens (see line 3 of Patented Claim 16) and having a lower surface (see lines 3 and 4 of Patented Claim 16) and an upper surface (see line 4 of Patented Claim 16), wherein the lower surface of the cover member includes a first region (see lines 5 and 6 of Patented Claim 16), and a second region located around the first region (see line 7 of Patented Claim 16), wherein: a portion of the cover member that overlaps the second region in a top view contains a light diffusing substance (see line1-3 of Patented Claim 19), such that a light diffusivity of the second region is higher than a light diffusivity of the first region (see lines 7-9 of Patented Claim 16), wherein: the upper surface of the cover member is covered by a light-transmissive member (see line 13 and 14 of Patented Claim 16), wherein a hardness of the light-transmissive member is higher than a hardness of the cover member (see line14-16 of Patented Claim 16).
Although the claims at issue are not identical, they are not patentably distinct from each other because one of ordinary skill in the art would have recognized that the use of open-ended language in the instant claims (i.e. comprising) does not preclude the inclusion of the additional elements and/or structural features defined by the cited patented claim (e.g. the light diffusivity on the second region increasing from an inner side towards an outer side).
Regarding independent claim 16, MATSUOKA et al., in Patented Claims 1 and 9, teaches a cover structure (combination of “lens” and “cover member”, see lines 4 and 6 of Patented Claim 1) including a lens (see line 4 of Patented Claim 1); and a cover member (see line 6 of Patented Claim 1) disposed over the lens (see line 6 of Patented Claim 1) and having a lower surface (see lines 6 and 7 of Patented Claim 1) and an upper surface (see lines 7 and 8 of Patented Claim 1), wherein the lower surface of the cover member includes a first region (see lines 9 and 10 of Patented Claim 1), and a second region located around the first region (see line 13 of Patented Claim 1), wherein: a light diffusivity of the second region is higher than a light diffusivity of the first region (see lines 14 and 15 of Patented Claim 1), wherein: the upper surface of the cover member is covered by a light-transmissive member (see lines 19 and 20 of Patented Claim 1), and a hardness of the light-transmissive member is higher than a hardness of the cover member (see lines 20 and 21 of Patented Claim 1), the lens comprises an outer lens portion (see line 3 of Patented Claim 9) having a plurality of concentric projections (see lines 3 and 4 of Patented Claim 9) on at least one of a light incident surface or a light emission surface thereof (see lines 4 and 5 of Patented Claim 9), and the outer lens portion overlaps the second region in a top view (see lines 6 and 7 of Patented Claim 9).
Although the claims at issue are not identical, they are not patentably distinct from each other because one of ordinary skill in the art would have recognized that the use of open-ended language in the instant claims (i.e. comprising) does not preclude the inclusion of the additional elements and/or structural features defined by the cited patented claim (e.g. the light diffusivity on the second region increasing from an inner side towards an outer side).
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mooradian (U.S. Pat. 6,404,797), Sun (U.S. Pat. App. Pub. 2006/0002114), Kim et al. (U.S. Pat. App. Pub. 2008/0198604), Zhang (U.S. Pat. App. Pub. 2010/0328958), Lee et al. (U.S. Pat. App. Pub. 2011/0280023), Lee et al. (U.S. Pat. App. Pub. 2013/0223064), Pesach et al. (U.S. Pat. 8,749,796), Groneborn et al. (U.S. Pat. 9,048,633), Lowenthal et al. (U.S. Pat. 9,534,772), Owoc et al. (U.S. Pat. App. Pub. 2021/0071837), Okahisa et al. (U.S. Pat. 11,231,149), and Cheng et al. (U.S. Pat. 12,152,771) disclose illumination devices including a light source, an optical lens, and a light diffusing cover.
Allowable Subject Matter
Independent claims 1, 12 and 16 have been rejected under the judicially created doctrine of nonstatutory double patenting (se previous sections 4-10). The applicant is advised that, since no rejection has been presented against the independent claims over Prior Art, a timely filed terminal disclaimer, in compliance with 37 CFR 1.321(c) or 1.321(d) (see previous section 5), would place all claims in condition for allowance.
Claims 2-11, 13-15 and 17-19 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.
The following is an examiner's statement of reasons for allowance: Applicant teaches a cover structure including a lens; a cover member provided over the lens, and having an upper surface and a lower surface defining a first region and a second region located around the first region; and a light-transmissive member covering the upper surface of the cover member, a hardness of the light-transmissive member being higher than a hardness of the cover member. In a first embodiment, a light diffusing substance is disposed on the lower surface, and configured such that a light diffusivity of the second region if higher than that of the first region. In a second embodiment, a light diffusivity of the second region is higher than that of the first region, and the lens includes an outer portion overlapping the second region in top view, such outer portion including a plurality of concentric projections of at least one of an incident or emission surface of the lens.
While the use and advantages of illumination modules, specifically those including a light source in combination with a plurality of light modifiers arranged in optical series, are old and well known in the art (as evidenced by the documents already made of record), no prior art was found teaching individually, or suggesting in combination, all of the features of the applicants' invention. Specifically, the closest Prior Art, OKAHISA et al. (U.S. Pat. 11,575,073) teaches (by itself, or in combination with the knowledge available to one of ordinary skill in the art at the effective filing date of the instant application) a cover structure including a lens 30; a cover member 50 having an upper surface 51 and a lower surface 5 defining a first region 6 and a second region 7 located around the first region 6 (see Figure 1C), with a light diffusivity of the second region 6 being higher than that of the first region 6 (as evidenced by Figure 1C); and a light-transmissive member 60 with a hardness higher than that of the cover member 50 (see lines 65-66 of column 8); but fails to disclose the light diffusing substance or the concentric projections of the lens, in combination with the other structural elements and features of the claimed module; and no motivation could be found for such combination beyond the teachings found in applicant's own disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ISMAEL NEGRON whose telephone number is (571)272-2376. The examiner can normally be reached on Monday - Friday from 10:00 AM to 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk Lee, can be reached at telephone number 571-272-7044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ISMAEL NEGRON/Primary Examiner
Art Unit 2875
Prosecution Insights