DETAILED ACTION
Response to Arguments
The Examiner is maintaining the Double Patenting Rejection.
Applicant's arguments filed 01/13/2026 have been fully considered but they are not persuasive.
On page 6 of Applicant’s Remarks, Applicant argues:
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The Examiner responds that Potyrailo (US 10,996,210) in Figure 11 teaches resonant frequency responses 1100, 1102, 1104 measured by probe 100 from Figure 8. The data acquisition circuitry - “first detection device” - that is connected to probe 100 via connector 112 is thus “configured to detect an oscillatory frequency” of resonant circuit formed by coil 104 and electrodes 108 - “first oscillation circuit.” This is to detect the amount of dielectric materials by detecting the dielectric properties of fluid 904 surrounding the sensing regions of the probe 100 as taught in Column 9, Lines 49-59. Column 10, Line 62 – Column 11, Line 2 teaches that metal particles can also be detected by the probe.
Thus, regarding Claim 13, Potyrailo teaches, “the first detection device being configured to detect an oscillatory frequency of the first oscillation circuit and to detect an amount of dielectric substances and conductors contained in the oil based on the oscillatory frequency.”
On Page 6 of Applicant’s Remarks, the Applicant argues:
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The Examiner disagrees.
As cited above, Potyrailo teaches in Column 9, Lines 49-59 the detection of the dielectric materials via the dielectric properties of fluid 904 around the sensing regions of the probe 100. Therefore primary reference Potyrailo discloses detecting an amount of dielectric substances by detecting the changes in resonant frequency.
In Figure 2a, Kiely (WO 2005/111615) teaches the specific circuit that uses VCO 1 - “oscillator” – and phase detector 3 and filter network 4 - “PLL”. This circuit detects changes in a resonant frequency in the LC network formed by inductor L and capacitor C.
Since Potyrailo uses the probe 100 to detect dielectric substances via a change in resonant frequency, and Kiely uses an oscillator and PLL to measure the changes in resonant frequency, the combination of Potyrailo and Kiely teaches the detection of an amount of dielectric substances using an oscillator and a PLL circuit.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Potyrailo in view of Kiely by having the first detection device comprises an oscillator and a phase-locked loop (PLL) circuit for the first oscillation circuit, and the PLL circuit is configured to input a tuning voltage to the oscillator in such a way that an output frequency output from the oscillator matches the oscillatory frequency because a frequency produced by the VCO is indicative of the resonant frequency of the LC network with particles close to the coil as taught by Kiely [11:31-12:34].
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See MPEP 2145 IV.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/427,678 (herein ‘678) in view of Figure 1 of.
Regarding Claim 1 of the Instant Application, Claim 1 of ‘678 teaches:
Instant Application
‘678
1. (Currently Amended) An oil state detection apparatus, comprising:
a first oscillation circuit including a first coil and a first capacitor, and
a first detection device,
the first coil being configured to be immersed in oil,
the first detection device being configured to detect an oscillatory frequency of the first oscillation circuit.
1. (New) An oil state detection apparatus comprising:
a first oscillation circuit including a first coil and a first capacitor; and
a first detection device that detects an oscillatory frequency of the first oscillation circuit,
wherein one of the first coil or the first capacitor is immersed in oil, and
the first oscillation circuit and the first detection device are arranged on an identical circuit board.
Claim 1 of ‘678 does not teach:
the first capacitor being configured not to be immersed in the oil
to detect an amount of magnetic substances contained in the oil based on the oscillatory frequency,
the oil state detection apparatus including only the first oscillation circuit as an oscillation circuit for detecting the amount of the magnetic substances.
However, Figure 1 of ‘678 teaches:
the first capacitor being configured not to be immersed in the oil (Figure 1 of ‘678 shows first capacitor 2 not immersed in oil OL, while first coil 1 is immersed in oil OL.)
to detect an amount of magnetic substances contained in the oil based on the oscillatory frequency (The inductance of the coil and the frequency of the oscillation circuit change in accordance with the amount of magnetic substance contained in the oil [0022-0023].),
the oil state detection apparatus including only the first oscillation circuit as an oscillation circuit for detecting the amount of the magnetic substances (In Figure 1, there is only one oscillation circuit.).
It would have been obvious to one of ordinary skill in the art to combine Claim 1 of ‘678 in view of Figure 1 of ‘678 by having the first capacitor being configured not to be immersed in the oil to detect an amount of magnetic substances contained in the oil based on the oscillatory frequency, the oil state detection apparatus including only the first oscillation circuit as an oscillation circuit for detecting the amount of the magnetic substances because it ensures the resonance frequency of the LC circuit only changes in accordance with the amount of magnetic substance contained in the oil rather than the dielectric substance or vice versa as taught by ‘678 (pp.1-2).
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
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 13 is rejected under 35 U.S.C. 103 as being unpatentable over Potyrailo et al. (US 10,996,210 B2, Pub. Date May 4, 2021, herein Potyrailo) in view of Kiely et al. (WO 2005/111615 A1, Pub. Date November 24, 2005, herein Kiely).
Potyrailo teaches:
An oil state detection apparatus (Sensor probe assemblies that monitor the health of oil [1:15-22].), comprising:
a first oscillation circuit including a first coil and a first capacitor (The LCR resonator - "first oscillation circuit" - is formed by inductor coil 104 - "first coil" - and electrodes 108 - "first capacitor" [7:14-38]. Electrodes 108 which are comprised of interdigital electrodes 600, 602 form the first capacitor [8:58-9:6].; see Fig 8), and
a first detection device (Data acquisition circuitry is connected to connector 112 [8:2-6].),
the first capacitor being configured to be immersed in oil (Figure 10 illustrates submersion of the electrodes 600, 602 - "first capacitor" - of the sensor probe assembly 100 shown in FIGS. 6 through 8 into the fluid under examination 904 [9:26-39].; see Fig 10),
the first coil being configured not to be immersed in the oil (Inductor coil 104 is not in the oil.; see Fig 8 & 10),
the first detection device being configured to detect an oscillatory frequency of the first oscillation circuit and to detect an amount of dielectric substances and conductors contained in the oil based on the oscillatory frequency (Figure 11 illustrates resonant spectral responses 1100, 1102, 1104 of the sensor probe assembly 100 with free-standing electrodes in contact with oil having dielectric constants of 2.1, 2.3, and 2.5, respectively [9:49-59]. Detection of metal particles is possible [10:62-11:2].; see Fig 11),
the oil state detection apparatus including only the first oscillation circuit as an oscillation circuit for detecting the amount of the dielectric substances and the conductors (There is only the one LCR resonator 104 & 108 for detecting dielectric materials and metals.; see Fig 8),
Potyrailo does not teach:
the first detection device comprises an oscillator and a phase-locked loop (PLL) circuit for the first oscillation circuit, and
the PLL circuit is configured to input a tuning voltage to the oscillator in such a way that an output frequency output from the oscillator matches the oscillatory frequency.
However, Kiely teaches:
the first detection device comprises an oscillator and a phase-locked loop (PLL) circuit for the first oscillation circuit (VCO 1 is the "oscillator". Phase detector 3 and loop filter network 4 are part of the "PLL circuit". The "first oscillation circuit" is LC network 2. LC network 2 is used to detect particles as the resonant frequency of the LC network changes when particles are close to the LC network.; see Fig 2a & [1:3-8], [11:31-12:34]), and
the PLL circuit is configured to input a tuning voltage to the oscillator in such a way that an output frequency output from the oscillator matches the oscillatory frequency (Phase detector 3 - "PLL circuit" - outputs a voltage - "tuning voltage" - to VCO 1 to change the oscillator frequency of VCO 1 - "output frequency" - to match the resonant frequency - "oscillatory frequency" - of LC network 2.; see Fig 2a & [11:31-12:34]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Potyrailo in view of Kiely by having the first detection device comprises an oscillator and a phase-locked loop (PLL) circuit for the first oscillation circuit, and the PLL circuit is configured to input a tuning voltage to the oscillator in such a way that an output frequency output from the oscillator matches the oscillatory frequency because a frequency produced by the VCO is indicative of the resonant frequency of the LC network with particles close to the coil as taught by Kiely [11:31-12:34].
Allowable Subject Matter
Claims 2-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 1 is provisionally rejected on the grounds of non-statutory double patenting.
There is no prior art rejection being made on Claim 1.
Regarding Claim 1, the prior art of record fails to teach or suggest, singly or in combination an oil state detection apparatus, comprising:
“the oil state detection apparatus including only the first oscillation circuit as an oscillation circuit for detecting the amount of the magnetic substances” in combination with the other limitations the Claim.
Claims 2-12 are dependent on Claim 1.
Therefore, Claims 2-12 are being objected to.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAHUL MAINI whose telephone number is (571)270-1099. The examiner can normally be reached M-Th, 9am-4pm, EST.
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/RAHUL MAINI/Examiner, Art Unit 2858 02/12/2026
/ALESA ALLGOOD/Primary Examiner, Art Unit 2858