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 .
DETAILED ACTION
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: LIGHT-EMITTING DEVICE WITH BASE HAVING RECESS ACCODMODATING LENS WITH FLANGE
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,504,149 in view of Kondo (U.S. Patent No. 6,296,376. Although the claims at issue are not identical, they are not patentably distinct from each other because.
Instant Claims 1-5 are seen to be substantially equivalents with the exception of a light transmissive member disposed between the disposed between the light emitting element and the lenses recited in issued patent Claim 1.
Kondo discloses in Figure 2, a light transmitting element 3 in contact with the light emitter between the l light emitter and the lens 5 as an optical means for emitting light effectively from the light emitter. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have a light transmissive member as taught by Kondo for effectively aiding the emission of light from the emitter.
Regarding instant Claim 3, Issued Claims do not disclose the flange member having a lateral edge connecting a top and bottom portion of the flange. Kondo discloses in Figure 2 the lens 5 having a flange portion with upper and bottom surface with lateral portion connecting the two surfaces for providing a step for recessing the lens flange into a cavity step of a base.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have a flange with lateral surface as claimed for allowing the lens to be supported in this manner.
Regarding Claims 4-5, the patented claims do not recite the lower surface of the lens having a flat continuous surface and the surface region of the base member meeting he outer lateral surface of the base member. This is seen to be an obvious shape that one of ordinary skill in the art at the time of filing would arrive at for creating a surface to surface contact between eh lens and the base member.
Allowable Subject Matter
Claims 1-5 would be allowed if a terminal disclaimer was submitted to obviate the double patenting rejection issued in this action. .
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kobayashi (U.S. Patent No. 6,471,375) discloses a light device with base, lens and reflector.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J MAY whose telephone number is (571)272-5919. The examiner can normally be reached M-F 10AM-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached at 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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/ROBERT J MAY/Primary Examiner, Art Unit 2875
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