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 .
Response to Amendment
The amendments to the specification of the disclosure in the submission filed 3/19/2026 are acknowledged and accepted. In view of these amendments, the objections to the specification in Section 7 of the Office Action dated 12/29/2025 are respectfully withdrawn.
The amendments to Claims 3, 7 in the submission filed 3/19/2026 are acknowledged and accepted.
The substitute specification filed 3/19/2026 has been entered because it conforms to 37 CFR 1.125(b) and (c).
Terminal Disclaimer
The terminal disclaimer filed on 3/19/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12416844 has been reviewed and is not accepted. The wrong form was used for the terminal disclaimer. The appropriate form to use is Form PTO/AIA /26.
Response to Arguments
The Applicants’ arguments, see in particular Page 2 of the remarks, filed 3/19/2026, with respect to the rejections in Section 9 of the Office Action dated 12/29/2025, have been fully considered and are persuasive. The rejections in Section 9 of the Office Action dated 12/29/2025 have been withdrawn.
Claims 1-8 are again rejected as follows.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. U.S. Patent No. 12416844. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-20 of U.S. Patent No. U.S. Patent No. 12416844 similarly claims and discloses a lens hood for a camera (See for example Claim 1) comprising a set of side walls and a lens recess (See for example Claim 1, lines 1-2), with the set of side walls comprising a near portion, a middle portion, and a far portion (See for example Claim 1, lines 3-8); with the near portion being closer to the camera than the far portion and the middle portion being disposed between the near and far portions (See for example Claim 1, lines 9-11); with the far portions of the set of side walls forming an outer opening and the near portions of the set of side walls configured to engage with the camera (See for example Claim 1, lines 12-15); with a near portion cross-sectional area being defined by the near portions of the set of side walls (See for example Claim 1, lines 16-17); with a far portion cross-sectional area being defined by the far portions of the set of side walls (See for example Claim 1, lines 18-19); with a middle portion cross-sectional area being defined by the middle portions of the set of side walls (See for example Claim 1, lines 20-22); with the lens recess occupying the middle portion cross-sectional area and configured to hold a lens filter (See for example Claim 1, lines 32-34); with the middle portion cross-sectional area being disposed on a plane at an acute angle to the near portion cross-sectional area (See for example Claim 1, lines 35-37). Claims 1-20 of U.S. Patent No. 12416844 further similarly claims and discloses with the lens recess having a first lens recess sub-division and a second lens recess sub-division, with the first and second lens recess sub-divisions each being configured to receive respectively a first and second lens filter (See for example Claim 2); with set of side walls comprising outer faces and inner faces, with the inner faces configured to scramble light rays and prevent reflections by comprising or being coated by a non-reflective material, a non-reflective paint, a textured paint, or a semi-porous material, or comprising a series of grooves, niches, or ridges (See for example Claim 1, lines 5-8, 26-31); the near portions of the set of side walls forming an inner opening, with the inner opening configured to engage with the camera (See for example Claim 1, lines 12-15); with the far portion cross-sectional area being substantially trapezoidal (See for example Claim 5); with the set of side walls comprising a bottom-side wall, with the bottom-side wall extending from the near portion to the far portion, with the far portion of the bottom-side wall flaring outwards from the near portion of the bottom-side wall (See for example Claim 1, lines 3-8; Claim 6); with the lens recess configured to receive the lens filter (See for example Claim 1, lines 32-34); and with the lens recess being accessible via the outer opening and where receipt of the lens filter by the lens recess may be achieved through passing the lens filter through the outer opening and into the lens recess (See for example Claim 8).
Allowable Subject Matter
Claim 9 is 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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARNEL C LAVARIAS whose telephone number is (571)272-2315. The examiner can normally be reached M-F 10:30 AM-7 PM.
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ARNEL C. LAVARIAS
Primary Examiner
Group Art Unit 2872
4/2/2026
/ARNEL C LAVARIAS/Primary Examiner, Art Unit 2872