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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/03/2026 has been entered.
Response to Arguments
Applicant’s arguments, see “Applicant Arguments/Remarks”, filed 03/03/2026, with respect to the previous rejections under U.S.C. 112(a) and 112(b) have been fully considered and are persuasive. The previous rejections under U.S.C. 112(a) and 112(b) have been withdrawn.
Applicant's arguments filed 03/03/2026 have been fully considered but they are not persuasive.
Further, Applicant’s Specification does not provide support for the usage of two energy detection coils, nor their usages in the manner cited. The two coils identified are energy detection coil 4 and coil 3 (wrapped around a magnet core). Coil 3 is never identified as capable of detecting energy unless energy detection coil 4 is omitted for redundancy (Pg. 11, Lines 18-21, “By winding the energy detection coil directly onto the magnetic core, a separate energy detection coil 4 can be advantageously omitted. In other words, the function of the separate energy detection coil 4 in the second configuration example is taken over by the coil 3 of the magnetic core 2”). Pg. 11, Lines 28-31 further states that the magnet 5/coil 4 system should be shielded to prevent other components from being effected by the magnetic field generated (“Preferably, the energy-generating magnet is a neodymium or a samarium-cobalt magnet and is surrounded by a shield in such a way that its magnetic field is directed in an effective direction towards the energy detection coil and is attenuated in directions other than the effective direction, Advantageously, only one predeterminable effective direction is achieved”). Coil 3’s 3 usages when in the dual core system are to act as connections to the inputs of the memory and processing device (Pg. 9, Lines 25-27), as a part of RFID/NFC system (Pg. 11, Lines 16-17) and to provide inductive energization to the buffer module 7 (Pg. 12, Lines 12-16). As written the claims seem to initially claim the first energy detection coil as coil 3, wound around core 2, but coil 3/core 2 are never described as movable as claimed in the 6th paragraph of Claim 17. As such a 112(a) rejection for written description is added below.
Further, a 112(a) rejection for enablement and 112(b) rejection are added as it is unclear how the device operation can occur. The first energy detection coil is simultaneously claimed to be a part of the moveable first part and wound around the magnetic core attached on a separate component. As discussed above, the wire/core combination is referring to the core 2/coil 3 combination, which is never disclosed as capable of movement/attached to the first movable portion. The movable portion is listed as the magnet 5/coil 4 combination, which is listed further on as also moving relative to one another. This rejection is further elaborated upon in the U.S.C. 112(a) section below.
As the rejections described above describe substantial difficulty and uncertainty with the claim language/claim interpretation, no prior art is applied (see MPEP 2173.06). However, future amendments to overcome the 112(a)/(b) rejections could lead to prior art rejections in future actions.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-18, 21-28, and 35-38 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 17, the claims lack written description because Applicant’s Disclosure does not disclose two energy detection coils nor the usages as described in Claims 17. The two coils identified are energy detection coil 4 and coil 3 (wrapped around a magnet core). Coil 3 is never identified as capable of detecting energy unless energy detection coil 4 is omitted for redundancy (Pg. 11, Lines 18-21, “By winding the energy detection coil directly onto the magnetic core, a separate energy detection coil 4 can be advantageously omitted. In other words, the function of the separate energy detection coil 4 in the second configuration example is taken over by the coil 3 of the magnetic core 2”). Pg. 11, Lines 28-31 further states that the magnet 5/coil 4 system should be shielded to prevent other components from being effected by the magnetic field generated (“Preferably, the energy-generating magnet is a neodymium or a samarium-cobalt magnet and is surrounded by a shield in such a way that its magnetic field is directed in an effective direction towards the energy detection coil and is attenuated in directions other than the effective direction, Advantageously, only one predeterminable effective direction is achieved”). Coil 3’s 3 usages when in the dual core system are to act as connections to the inputs of the memory and processing device (Pg. 9, Lines 25-27), as a part of RFID/NFC system (Pg. 11, Lines 16-17) and to provide inductive energization to the buffer module 7 (Pg. 12, Lines 12-16). As written the claims seem to initially claim the first energy detection coil as coil 3, wound around core 2, but coil 3/core 2 are never described as movable as claimed in the 6th paragraph of Claim 17. For these reasons, Claim 17, and its dependents Claims 18, 21-28, and 35-38 are rejected for failing to meet the written description requirement.
Claims 17-18, 21-28, and 35-38 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The breadth/nature of the claims and invention and direction provided by the inventor:
Claim 17 is directed towards an invention providing 2 energy detection coils, a core within one coil, wherein the coil with a core is moved alongside a separate magnet to generate a voltage signal detected by the coil. As noted above, the coil and coil/core are cited contradictory to what is provided in the Specification, making it unclear based on the disclosure how the device could perform the recited functions, i.e. how both coils are movable and capable of providing energy detection.
The state/predictability of the prior art, lack of working examples, quantity of experimentation, and level of one of ordinary skill
Further, and as noted below in the rejections under U.S.C. 112(b), it is unclear how the coil of the coil/core combo is placed/configured, as the core is stated to be on a separate component (the apparatus) while the coil, while wrapped around the core, is simultaneously on the movable portion. The combination of the issues above would render one of ordinary skill unable to make/use the claimed invention as the state of the prior art and lack of working examples does not provide guidance as to how the device would function as claimed, and would require extensive experimentation if the device could be made at all.
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 17-18, 21-28, and 35-38 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.
Regarding Claim 17, the claim is indefinite as the first energy detection coil is listed as existing at two separate locations: wound around the magnetic core on the apparatus portion of the instrument and on the first movable part. As discussed above, Applicant’s Specification likewise does not describe the core/coil combination being on the movable portion, so it is unclear as to where the coil/core combination is placed.
Claims 18, 21-28, and 35-38 are rejected based on their dependencies to Claim 17.
Conclusion
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/JLM/
Examiner, Art Unit 3792
/ALLEN PORTER/Primary Examiner, Art Unit 3796
