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.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11099380. Although the claims at issue are not identical, they are not patentably distinct from each other because the systems of this application contains similar structures adequate to perform the functions recited in the patent application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. The claims are as follows with the differences highlighted:
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With reference to claim 1: An eye-imaging system for a head-worn display, comprising: a light source adapted to produce image light; and a partially reflective and partially transmissive surface adapted to direct the image light to an eye of a user of the head-worn display to present an image to the user, wherein directing the image light to the eye of the user comprises causing the image light to enter the partially reflective and partially transmissive surface via a first side of the partially reflective and partially transmissive surface, leave the partially reflective and partially transmissive surface via a second side of the partially reflective and partially transmissive surface, the second side different from the first side, toward the eye of the user, and reflect in the eye of the user to form an eye-image light, and wherein the partially reflective and partially transmissive surface is adapted to receive on its second side a reflected eye-image light reflected from the eye of the user and to reflect the reflected eye-image light towards a camera, and wherein the camera is positioned to capture the reflected eye-image light to capture an image of the eye of the user.
With reference to claim 1: A an eye-imaging system for a head-worn display, comprising: a display adapted to produce image light; and a partially reflective and partially transmissive surface, disposed in-line with transfer optics, adapted to present the image light to an eye of a user of the head-worn display, wherein presenting the image light to the eye of the user comprises causing the image light to enter the partially reflective and partially transmissive surface via a first side of the partially reflective and partially transmissive surface, leave the partially reflective and partially transmissive surface via a second side of the partially reflective and partially transmissive surface, the second side different from the first side, toward the eye of the user, and reflect in the eye of the user to form an eye-image light, wherein the partially reflective and partially transmissive surface is adapted to receive on its second side a reflected eye-image light reflected from the eye of the user and to reflect the reflected eye-image light towards a camera, and wherein the camera is positioned to capture the reflected eye-image light.
Claim 1 of this application is being anticipated by claim 1 of patent 11099380 with similar variation in the non-highlighted limitation above.
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Claim 2 is anticipated and comparison
With respect to claim 2.
Claim 3 is anticipated and comparison
With respect to claim 3.
Claim 4 is anticipated and comparison
With respect to claim 4.
Claim 5 is anticipated and comparison
With respect to claim 5.
Claim 6 is anticipated and comparison
With respect to claim 6.
Claim 7 is anticipated and comparison
With respect to claim 7.
Claim 8 is anticipated and comparison
With respect to claim 8.
Claim 9 is anticipated and comparison
With respect to claim 9.
Claim 10 is anticipated and comparison
With respect to claim 11.
Claim 11 is anticipated and comparison
With respect to claim 12.
Claim 12 is anticipated and comparison
With respect to claim 13.
Claim 13 is anticipated and comparison
With respect to claim 14.
Claim 14 is anticipated and comparison
With respect to claim 1.
Claim 15 is anticipated and comparison
With respect to claim 10.
Claims 2-15 of this application is being anticipated by and comparable to claims 1-14 of patent 11099380.
Conclusion
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/IFEDAYO B ILUYOMADE/Primary Examiner, Art Unit 2624 08/07/2026
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