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 .
Drawings
The drawings were received on 18 March 2026. These drawings are not approved, given the fact that they include new matter. Namely, the proposed change to Figure 11 to create two magnets is considered to be new matter, given the fact that this feature was not shown in the originally filed drawings, nor explicitly described in the originally filed specification.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "26" and "28" have both been used to designate the same element in Figure 7.
Reference characters "90" and "92" have both been used to designate the same element in Figure 11.
It should be noted that reference characters denoting an overall element should include an arrowhead at the end of its leader line.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: The phrase “configured to be” should be removed prior to the term “mounted” in line 2, to remove generally narrative and indefinite language.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1, 6, and 14-15 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 1 is indefinite due to the fact that it is unclear what is actually being claimed by the limitation that the dual piston is “configured to convey” the pressure medium. First, this phrase is generally narrative (see section 7 below), and fails to define any actual physical structure of the invention. Second, it is unclear where the pressure medium is “conveyed”. Therefore, this limitation appears incomplete, and the metes and bounds thereof cannot be determined.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fletcher et al (3,452,801).
Fletcher et al shows a compressor assembly 11 that supplies a pressure medium to the cavity of a tire mounted on a wheel. The wheel being mounted on a wheel hub 18-19 mounted to a wheel carrier (i.e. the hub flange of axle 30) for rotation about an axis. The compressor 11 includes a compression chamber 12 in combination with a dual piston 13, which pressurizes the pressure medium through oscillating translation movement (i.e. both radially inward and outward movement). A transmission 14 converts rotational motion into oscillating translational motion of the piston 13.
Claim(s) 1, 6, and 14-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Loewe (2014/0096881).
Pre claim 1, Loewe shows a compressor assembly 12 that supplies a pressure medium to the cavity of a tire 14 mounted on a wheel. The wheel being mounted on a wheel hub 96 mounted to a wheel carrier (i.e. the hub flange of axle) for rotation about an axis 26. The compressor 12 includes a compression chamber 44 in combination with a dual piston 35, which pressurizes the pressure medium through oscillating translation movement (i.e. both radially inward and outward movement). A transmission 33 converts rotational motion into oscillating translational motion of the piston 35.
Per claim 6, the dual piston 35is a ferromagnetic material, and a permanent magnet 60 is arranged in a circumferential wall of the compression chamber 44.
Per claim 14, a magnet-based coupling and decoupling device 37 brings a first transmission part 46 into and out of operating position with a second transmission part (the remainder of the body of the transmission 33).
Per claim 15, the coupling/decoupling device 37 holds and/or moves the dual piston 35 through magnetic force, thus changing the position of the transmission 33.
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 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. 11,565,555. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claim(s) is/are fully encompassed by the patented claims. Therefore, it is obvious that the Applicant is claiming the same invention in different and/or broader terms.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,390,126. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claim(s) is/are fully encompassed by the patented claims. Therefore, it is obvious that the Applicant is claiming the same invention in different and/or broader terms.
Claim 1, and 1 with 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, 18, 20; and 21 of U.S. Patent No. 11,458,783. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claim(s) is/are fully encompassed by the patented claims. Therefore, it is obvious that the Applicant is claiming the same invention in different and/or broader terms.
Response to Arguments
Applicant's arguments filed 18 March 2026 have been fully considered but they are not persuasive. it should be noted that the Double Patenting rejections will be maintained until a Terminal Disclaimer is filed or the pending claims are no longer encompassed by the Patented claims.
The Applicant argues that reference characters 26 and 28 “can and do refer to the same structure”. However, since reference character 26 indicates an overall element of the invention, it should include an arrowhead at the end of its leader line to distinguish it from the specific portion (denoted by reference characters 28) of said overall element.
The Applicant argues that the replacement sheet of Figure 11 overcomes the objection regarding reference characters 90 and 92. However, as set forth in section 2 above, the proposed drawing amendment introduces new matter. It is suggested that either reference character and its leader line should be moved to the third (and unlabeled) magnet shown in Figure 11.
The Applicant argues that the references both lack a dual piston configuration. First, the Applicant fails to provide any further explanation for this argument (see section 15-16 below). Second, the pistons of Fletcher et al and Loewe both function in the same manner as the claimed invention, and thus act as dual pistons (namely, the pistons of Fletcher et al and Loewe both “convey” the pressure medium into the chamber during radially inward movement and “convey” the pressure medium into a tire during radially outward movement). Third, it should be noted that the claims lack any actual physical structure to define the “dual piston”.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON R BELLINGER whose telephone number is (571)272-6680. The examiner can normally be reached M-F 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joe) Morano can be reached at (571)272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON R BELLINGER/ Primary Examiner, Art Unit 3615
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