VWGoA - Ex. 1003
`Volkswagen Group of America, Inc., Petitioner
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`1
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`Office Action Summary
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`Application No.
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`10/298,367
`Examine,
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`Applicant(s)
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`PARKER ET AL.
`Art Unit
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`L
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`Fayez G. Assaf
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`2872
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`- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE .3 MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
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`If No period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
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`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment, See 37 CFR 1.704(b).
`Status
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`In no event, however, may a reply be timely filed
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`HE Responsive to communication(s) filed on 16 July 2003 .
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`2a)lj This action is FINAL.
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`2mm This action is non-final.
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`3):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`Disposition of Claims
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`ME Claim(s) gals/are pending in the application.
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`4a) Of the above claim(s) gQ—5_2 is/are withdrawn from consideration.
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`5):] Claim(s) _ is/are allowed.
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`6)[ZI Claim(s) 1-_25_ is/are rejected.
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`7):] Claim(s) __ is/are objected to.
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`8)[:] Claim(s)
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`are subject to restriction and/or election requirement.
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`Application Papers
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`9)|:] The specification is objected to by the Examiner.
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`10m The drawing(s) filed on 18 November 2002 is/are: a)|Z] accepted or b)l:l objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`11)El The proposed drawing correction filed on _ is: a)|:l approved b)E] disapproved by the Examiner.
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`If approved, corrected drawings are required in reply to this Office action.
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`12)|:] The oath or declaration is objected to by the Examiner.
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`Priority under 35 U.S.C. §§ 119 and 120
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`13)E] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
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`a)[j All b)|:] Some * 0):] None of:
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`1.L__I Certified copies of the priority documents have been received.
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`2.|:I Certified copies of the priority documents have been received in Application No. __
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
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`14):] Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 119(e) (to a provisional application).
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`a) E] The translation of the foreign language provisional application has been received.
`15)|:| Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
`Attachment(s)
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`1) E Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) E] lnfonnation Disclosure Statement(s) (PTO-1449) Paper No(s)
`US. Patent and Trademark Office
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`4) D Interview Summary (PTO-413) Paper No(s).
`5) [3 Notice of Informal Patent Application (PTO-152)
`6) C] Other:
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`.
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`PTOL-326 (Rev. 04-01)
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`Office Action Summary
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`Part of Paper No. 5
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`2
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`Application/Control Number: 10/298,367
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`Page 2
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`Art Unit: 2872
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`DETAILED ACTION
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`Specification
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`The abstract of the disclosure is objected to because it
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`exceeds 150 words. Correction is required.
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`See MPEP
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`§ 608.01(b).
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`Election/Restrictions
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`Applicant’s election of Species 1: claims 1-25 in Paper No.
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`5 is acknowledged. Because applicant did not distinctly and
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`specifically point out the supposed errors in the restriction
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`requirement,
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`the election has been treated as an election
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`without traverse (MPEP § 818.03(a)). Claims 26-52 are withdrawn
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`from further consideration pursuant to 37 CFR 1.142(b).
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a
`judicially created doctrine grounded in public policy (a policy
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`reflected in the statute) so as to prevent the unjustified or
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`improper timewise extension of the "right to exclude" granted by
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`a patent and to prevent possible harassment by multiple
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`assignees.
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`See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010
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`(Fed. Cir. 1993);
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`In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.
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`Cir. 1985);
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`In re van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA
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`Application/Control Number: 10/298,367
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`Page 3
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`Art Unit: 2872
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`1982);
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`In re ngel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);and,
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`In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37
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`CFR 1.321(c) may be used to overcome an actual or provisional
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`rejection based on a nonstatutory double patenting ground
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`provided the conflicting application or patent is shown to be
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`commonly owned with this application.
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`See 37 CFR 1.130(b).
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`Effective January 1, 1994, a registered attorney or agent
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`of record may sign a terminal disclaimer.
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`A terminal disclaimer
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`signed by the assignee must fully comply with 37 CFR 3.73(b).
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`Claims 1—16, 24 and 25 are rejected under the judicially
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`created doctrine of obviousness—type double patenting as being
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`unpatentable over claims 1—97 of U.S. Patent No. 5,613,751.
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`Although the conflicting claims are not identical,
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`they are not
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`patentably distinct from each other because,
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`the claims are
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`substantially variant combinations of the patent’s claims
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`reciting inherent features and having different scopes, for
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`example:
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`Claims 2 and 25 of the instant application are
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`substantially composed of limitations extracted from claims 12
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`and 88 of said patent.
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`The panel member has been renamed
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`broadly as a light guide.
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`Application/Control Number: 10/298,367
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`Page 4
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`Art Unit: 2872
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`Claims 12 and 13 of the instant application are
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`substantially composed of limitations extracted from claim 72 of
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`said patent.
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`Claims 6,
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`8 and 24 of the instant application are
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`substantially composed of limitations extracted from claim 10 of
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`said patent.
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`Claims 17—23 are rejected under the judicially created
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`doctrine of obviousness—type double patenting as being
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`unpatentable over claims 1—97 of U.S. Patent No. 5,613,751.
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`Although the conflicting claims are not identical,
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`they are not
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`patentably distinct from each other because,
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`the claims of U.S.
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`Patent No. 5,613,751, disclose the claimed invention including
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`the transparent substrate being a diffuser (claim 12). However,
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`the claims do not recite the surface of said substrate/film
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`having deformities.
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`It would have been obvious, at the time the invention was
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`made,
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`to a person having ordinary skill in the art to utilize a
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`diffuser having deformities thereon, because such diffusers are
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`suitable in motor vehicle applications.
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`Conclusion
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`Any inquiry concerning this communication or earlier
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`communications from the examiner should be directed to Fayez G.
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`Application/Control Number: 10/298,367
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`Page 5
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`Art Unit: 2872
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`Assaf whose telephone number is (703) 306—5526.
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`The examiner
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`can normally be reached on 8—5 M—F.
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`If attempts to reach the examiner by telephone are
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`unsuccessful,
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`the examiner’s supervisor, Drew Dunn can be
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`reached on (703) 305-0024.
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`The fax phone number for the
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`organization where this application or proceeding is assigned is
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`(703) 872—9306.
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`Any inquiry of a general nature or relating to the status
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`of this application or proceeding should be directed to the
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`receptionist whose telephone number is (703) 308—0956.
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`FA
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`9/3/03
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`Fayez G. Assaf
`Examiner
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`Art Unit 2872
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`6% WW
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`6
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