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 .
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.
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Claims 1, 5-8 and 16-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 12-14, 16 and 19 copending application 18/100,390 in view of Griswold et al. (US2021/0028725, Cited by Applicant).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
As set forth below, the chart identifies which claims from the current application corresponds to conflicting claims found in the cited copending application:
Current Application
Copending Application
1
10
5
12
6
13
7
14
8
19
16
10
17
12
18
13
19
16
As disclosed in the chart above, the copending application claims 10, 12-14, 16 and 19 substantially recite the same limitations recited in claims 1, 5-8 and 16-19 of the current application as listed above. However, claim 10 of the copending application does not teach: in regards to claim 1 of the present application, wherein the first plurality of modules are interconnected with one another in a ring configuration that spans along the circumferential surface of the wheel; and in regards to claim 16 of the present application, a vehicle comprising a plurality of wheels, wherein the first plurality of modules are interconnected with one another in a ring configuration that spans along the circumferential surface of the wheel.
Griswold et al. (US2021/0028725, Cited by Applicant) teaches in Figs. 1, 3A and 4A a smart wheel system used for a vehicle comprising a plurality of wheels (102), wherein each of the wheels comprises a first plurality of modules (EH module 306 and EH component 404) attached to a circumferential surface of a wheel of a vehicle (116). Based on related Fig. 10B, one of the possible arrangements for the first plurality of modules is to interconnect them to one another in a ring configuration that spans along the circumferential surface of the wheel.
At the time of filing, it would have been obvious to one of ordinary skill in the art to have modified claim 10 of the copending application and have attached the first plurality of modules on to a plurality of wheels on a vehicle, in which the first plurality of modules are interconnected to one another in a ring configuration that spans along the circumferential surface of the respective wheel because such a modification would have been one of the available options to arrange the plurality of first modules as exemplary taught by Griswold et al. (See Fig. 10B), to perform the same function/benefit of energy harvesting.
Therefore, claims 10, 12-14, 16 and 19 of the copending application in view of Griswold et al meets claims 1, 5-8 and 16-19 of the present application under an obviousness-type double patenting rejection.
Claim Objections
Claims 2 and 13 are objected to because of the following informalities:
Claim 2, line 3, the examiner suggests rewriting “a tire” to --the tire-- to avoid an antecedent issue.
Claim 13, lines 1-2, the examiner suggests rewriting “the first and second electronic modules” to --the at least one first and the at least one second electronic modules-- to provide consistency in the claim 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.
Claim 13 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 pre-AIA the applicant regards as the invention.
Claim 13, lines 3-4, note that the relationship is unclear between the recited “the at least one EH module” and the previous recited “at least one first EH module” and “at least one second EH module”, recited in claim 9, from which this claim directly depends from (i.e. is the recited “the at least one EH module” referring to both the “first” and “second” EH modules? Or is it only referring to one of them?). Clarification is required.
Allowable Subject Matter
Claims 2-4 and 20 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.
Claims 9-12, 14 and 15 are allowed.
Claim 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Note that claims 1, 5-8 and 16-19 were not rejected under art. Reason for the indication of allowable subject matter for these claims will be provided once the double patenting rejection set forth above is overcome.
The following is a statement of reasons for the indication of allowable subject matter:
For claim 9, the most relevant prior art is Griswold et al. (US2021/0028725, Cited by Applicant). Griswold et al. teaches in Figs. 1, 3A and 4A a smart wheel system, comprising: a first plurality of modules (306 and 404) attached to a circumferential surface of a wheel of a vehicle (116), wherein the first plurality of modules comprises: at least one energy harvesting (EH) module (306) comprising at least one EH component (404) configured to convert a force acting on the at least one EH component into at least one first electrical signal; and at least one electronic module (304), wherein the at least one EH module and the at least one electronic module are each electrically coupled to an electrical interface (406) coupled to the wheel. Based on related Fig. 10B, one of the possible arrangements for the first plurality of modules is to interconnect them to one another in a ring configuration that spans along the circumferential surface of the wheel. However, Griswold et al. does not teach: in regards to claim 9,
at least one first dummy cavity module comprising at least one first electronic module, wherein the at least one first EH module and the at least one first dummy cavity module are each electrically coupled to an electrical interface coupled to the wheel. Therefore, the applicants’ claimed invention has been determined to be novel and non-obvious. By virtue of dependency from 9, claims 10-15 have also been determined to be novel and non-obvious.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Heise et al. (USPAT 8,035,502 B2) teaches in Fig. 1 a tire module comprising a piezoelectric converter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JORGE L SALAZAR JR whose telephone number is (571)-272-9326. The examiner can normally be reached between 9am - 6pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrea Lindgren Baltzell can be reached on 571-272-5918. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843