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 1-6 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending application 18/100,384.
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
1
2
2
3
3
4
4
5
5
6
6
8
7
As disclosed in the chart above, the copending application claims 1-7 substantially recite the same limitations recited in claims 1-6 and 8 of the current application as listed above. However, the following differences between the copending application and the current application claims are present as set forth below:
The copending application claim 1 has the additional limitation of having the “first plurality of modules” arranged in a “ring configuration” and having “at least one dummy cavity module”, which isn’t required in claim 1 of the present application.
Therefore, claims 1-7 of the copending application meets claims 1-6 and 8 of the present application under an “anticipation” analysis in an obviousness-type double patenting rejection.
Claim Objections
Claims 1, 9 and 10 are objected to because of the following informalities:
Claims 1 and 10, line 2 of each claim, the examiner suggests rewriting “the vehicle” to --a vehicle-- to avoid an antecedent issue.
Claim 9, lines 2-3, the examiner suggests removing the recitation of “the” before “at least one physical parameter” to avoid an antecedent issue.
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 9 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 9, line 4, note that the recitation of “the at least one dummy cavity module” lacks proper antecedent basis, since no “at least one dummy cavity module” has been defined previously in the chain of dependency.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4, 5, 7 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Griswold et al. (US2021/0028725 A1, Cited by Applicant).
In regards to claim 1, 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.
In regards to claim 2, based on paragraph [0128] and Fig. 3A, wherein the at least one first electrical signal provides energy to at least one sensor disposed within a tire (310) coupled to the wheel.
In regards to claim 4, based on paragraph [0133] and Fig. 3A, wherein the at least one EH module comprises at least one piezoelectric component (404), wherein the at least one piezoelectric component is configured to produce energy in response to mechanical strain imparted on the at least one piezoelectric component, wherein the at least one piezoelectric component is configured to deform while experiencing the mechanical strain.
In regards to claim 5, based on paragraph [0112] and Fig. 4A, wherein the electrical interface (406) comprises a plurality of conductors, wherein the plurality of conductors comprises at least two of the following: a first conductor for power signal transmission; and a second conductor for data signal transmission.
In regards to claim 7, based on paragraph [0105], a processing/processor and control circuitry, wherein the processing and control circuitry is electrically coupled to the at least one EH module and the at least one electronic module.
In regards to claim 8, based on paragraph [0119], the at least one electronic module comprises an energy storage element for storing the electrical energy converted from the at least one EH module.
Allowable Subject Matter
Claim 9 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 and to include all of the limitations of the base claim and any intervening claims.
Claims 10-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
In regards to claim 10:
The most relevant prior art reference is Griswold et al. as discussed above. However, Griswold et al. does not teach in regards to claim 10, at least one dummy cavity module comprising at least one electronic module, wherein the at least one EH module and the at least one 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 10, claims 11-20 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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/JORGE L SALAZAR JR/Primary Examiner, Art Unit 2843