Detailed Action
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12-23-25 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
2. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Regarding claim 1, applicant has invoked 35 U.S.C. 112(f) means plus function analysis with respect to the claimed energy harvesting element and as seen in applicant’s originally filed disclosure the energy harvesting element is detailed as an energy harvesting element such as a piezoelectric beam as detailed in paragraph [0028] of applicant’s originally filed specification, further detailed as an energy harvesting element 22, such as the piezoelectric beam as detailed in paragraph [0029] of applicant’s originally filed specification, further detailed as element 22 can be a piezoelectric beam for example that is constructed of piezoelectric ceramics (e.g. Volture® by MIDE), polymers (e.g. the LDT series of the piezoelectric film sensors by Measurement
Specialties) or composites (e.g. the Piezoelectric Fiber Composite by Advanced Cerametrics and the Macro Fiber Composite by Smart Material) as detailed in paragraph [0030] of applicant’s originally filed specification, further detailed as energy harvesting element 22 such as a MFC beam as detailed in paragraph [0039] of applicant’s originally filed specification, further detailed as the energy harvesting circuit includes a piezoelectric element such as an MFC beam in paragraph [0043] of applicant’s originally filed specification, further detailed as the energy harvesting circuit includes a piezoelectric element such as an MFC beam as detailed in paragraph [0044] of applicant’s originally filed specification, further detailed as a specific prototype transmitter used a P2-type piezoelectric Macro Fiber Composite (MFC) beam (Smart Material Corp., Sarasota, Florida, USA) as the energy harvesting element. The MFC consists of rectangular PZT-5A ceramic rods sandwiched between layers of adhesives, electrodes and polyimide film. The P2 MFC beams use d31 effect of the PZT rods to convert mechanical energy from the beam bending into electricity. The active material area of the MFC beams used in the prototypes was 3 mm wide. To target fish of different sizes, prototypes of two different lengths, 100 mm and 77 mm, were developed, which used the M-8503-P2 (active material area: 85x3 mm2) and M-5003-P2 (active material area: 50x3 mm2) MFC's, respectively. To enhance the power output of the beam, a 75-pm thick aluminum shim was attached on the back of the active material using epoxy. The circuit that handled the transmission of the prototype used a modified version of the JSATS injectable transmitter's circuit. This circuit was designed to transmit at a signal strength of 150 dB (reference: 1 PPa at 1 meter), which would provide a detection range of 100 meters, approximately, in a quiet water environment as detailed in paragraph [0065] of applicant’s originally filed specification and further detailed as one or two 8503 MFC beams as the energy harvesting elements as detailed in paragraph [0070] of applicant’s originally filed specification.
Claim Rejections - 35 USC § 112
3. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Applicant invokes 35 U.S.C. 112(f) means plus function analysis with respect to the claimed energy harvesting element as detailed earlier in paragraph 2 of this office action and the terms and phrases being “such as” in paragraphs [0028], [0029], [0039], [0043] and [0044] in applicant’s originally filed specification and “e.g.” and “for example” in paragraph [0030] of applicant’s originally filed specification render the claim indefinite in that it is unclear as to whether other energy harvesting elements than those disclosed are being contemplated by the claim.
Claim Rejections - 35 USC § 103
4. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 20 and 22-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2013/0324059 to Lee in view of U.S. Patent No. 8,669,691 to Moler and further in view of U.S. Patent Application Publication No. 2004/0220856 to Moore.
Referring to claim 20, Lee et al. discloses a method for transmitting the location of an animal – see paragraph [0019], the method comprising, coupling a transmitter – at 10,20, powered by an energy harvesting element – at 14, to the animal – see use with animal detailed in paragraph [0019], and monitoring the transmissions of the transmitter – see for example paragraphs [0019] and [0026] thru [0028]. Lee et al. further discloses mechanically associating the energy harvesting element with the musculoskeletal system of the animal – see piezoelectric vibration based energy harvesting detailed in paragraphs [0026] thru [0028]. Lee et al. further discloses the musculoskeletal system of the animal includes a portion that is articulated when the animal moves – animals have articulated portions for movement, the element being associated with the articulating portion – see figure 1 and paragraphs [0026] thru [0028] where the element is at least associated with the articulated portion by being coupled to the animal with even non-articulated portions of the animal being associated to articulated portions of the animal given these portions being connected to each other. Lee et al. does not disclose the harvesting element is configured to transmit energy when the portion of the musculoskeletal system articulates. Moler discloses the harvesting element – at 10, is configured to transmit energy when a portion of the musculoskeletal system moves/articulates – see column 4 line 47 to column 5 line 3 detailing the harvesting element – at 10 is implanted in an animal’s muscle(s). Therefore it would have been obvious to one of ordinary skill in the art to take the method of Lee et al. and add the harvesting element transmitting energy when the musculoskeletal system articulates as disclosed by Moler, so as to yield the predictable result of using the animal’s natural body functions as a source of energy/power as desired so as to reduce the power needed to operate the device remotely while ensuring the transmitter does not become removed from the fish while not interfering with movement of the fish/animal during use. Lee et al. as modified by Moler does not disclose implanting the energy harvester and transmitter within a fish. Moore does disclose implanting the transmitter within a fish at a location where the fish body articulates when the fish swims – see at 60 in figure 2. Therefore it would have been obvious to one of ordinary skill in the art to take the method of Lee et al. as modified by Moler and add the transmitter implanted within a fish as disclosed by Moore, so as to yield the predictable result of ensuring the transmitter does not become removed from the animal while not interfering with movement of the animal during use. Lee et al. as modified by Moler and Moore further discloses implanting the transmitter between the lateral line and dorsal fin of a fish – see at 60 in figure 2 of Moore and see paragraphs [0061] thru [0068] and [0090]-[0096] of Moore detailing the device/method is used/performed with different species of fish and – see paragraph [0079] of Moore detailing the tag can be located anywhere on smaller fish and near the dorsal fin in larger fish. Therefore it would have been obvious to one of ordinary skill in the art to take the method of Lee et al. as modified by Moler and Moore and add the transmitter implanted within the animal as disclosed by Moore, so as to yield the predictable result of ensuring the transmitter does not become removed from the fish while not interfering with movement of the fish during use. Lee et al. as modified by Moler and Moore further discloses implanting an energy harvesting element within the musculoskeletal system – at 10 – see column 4 line 46 to column 5 line 3, and transmitter – at 60, within the musculoskeletal system of the fish – see figure 2 and paragraphs [0061]-[0068] and [0090]-[0096] of Moore, linearly along the length of the fish between the lateral line and the dorsal fin of the fish – see figure 2 and paragraphs [0061]-[0068] and [0090]-[0096] of Moore, to mechanically associate the energy harvesting element with the fish's spine – see column 4 line 46 to column 5 line 3 of Moler and – see figure 2 and paragraphs [0061]-[0068] and [0090]-[0096] of Moore, in that using the harvesting element of Moler with the transmitter of Moore in the location in the fish as disclosed by Moore, than the energy harvesting element of the combination of references is mechanically associated with the fish’s spine as seen in column 4 line 46 to column 5 line 3 of Moler and – see figure 2 and paragraphs [0061]-[0068] and [0090]-[0096] of Moore. Therefore it would have been obvious to one of ordinary skill in the art to take the method of Lee as modified by Moler and Moore and add the harvesting element being mechanically associated with the fish’s spine as disclosed by Moler as modified by Moore, so as to yield the predictable result of using the animal’s natural body functions as a source of energy/power as desired so as to reduce the power needed to operate the device remotely.
Referring to claim 22, Lee et al. as modified by Moler and Moore further discloses transmitting an acoustic signal – see paragraphs [0026] thru [0028] of Lee et al.
Referring to claims 23-26, Lee et al. as modified by Moler and Moore does not disclose the fish is a salmon, an eel, a lamprey, a sturgeon and a rainbow trout. However, it would have been obvious to one of ordinary skill in the art to take the method of Lee et al. as modified by Moler and Moore and use the device performing the method on any suitable type of fish including the claimed, salmon, eel, lamprey, sturgeon and rainbow trout, so as to yield the predictable result of allowing the user to choose any desired fish to use the device performing the method on.
Referring to claim 27, Lee et al. as modified by Moler and Moore further discloses the energy harvesting element is a piezoelectric beam – see paragraphs [0020], [0028] and [0032] of Lee et al.
Referring to claim 28, Lee et al. as modified by Moler and Moore further discloses the transmitter is configured to generate sonic vibrations – see for example paragraphs [0020] thru [0030] of Lee et al. and – see paragraph [0046] of Moore.
Referring to claim 29, Lee et al. as modified by Moler and Moore further discloses the transmitter is configured to generate RF – see for example paragraph [0028] of Lee et al. and paragraphs [0046]-[0047] of Moore.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. as modified by Moler and Moore as applied to claim 20 above, and further in view of U.S. Patent Application Publication No. 2015/0241566 to Chakraborty et al.
Referring to claim 21, Lee et al. as modified by Moler and Moore further discloses establishing a range of power levels in the transmitter – see paragraphs [0026] thru [0028] and paragraph [0040] of Lee et al., but does not disclose transmitting when the power level is above the upper level and storing energy when the power lever is below the lower level. Chakraborty et al. does disclose transmitting when the power level is above the upper level and storing energy when the power lever is below the lower level – see for example paragraphs [0028] thru [0032]. Therefore it would have been obvious to one of ordinary skill in the art to take the method of Lee et al. as modified by Moler and Moore and add the transmitting at one power level and storing energy at a lower power level as disclosed by Chakraborty et al., so as to yield the predictable result of automatically controlling the device and controlling the power consumption of the device as desired.
Response to Arguments
5. Applicant’s claim amendments dated 12-23-25 and remarks/arguments discussed as detailed in the interview summary dated 12-23-25, obviates the 35 U.S.C. 103 rejections of claims 20-29 detailed in the last office action dated 8-26-25. However, applicant’s claim amendments dated 12-23-25 necessitates the new grounds of rejection detailed earlier in paragraph 4 of this office action.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PARSLEY whose telephone number is (571)272-6890. The examiner can normally be reached Monday-Friday, 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached at (571) 272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J PARSLEY/Primary Examiner, Art Unit 3643