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 .
Election/Restrictions
Applicant’s election without traverse of Species 1 (claims 34-51) in the reply filed on 1/12/2016 is acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63419128 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Specifically for claims 34, 35 and 36 the prior-filed application does not disclose the dielectric fluid comprises isoamyl isovalerate.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 35 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 35 “The electrostatic machine of claim 34, wherein the dielectric fluid comprises a noncyclic fluorinated hydrocarbon, a 2-pyridine carbonitrile, methyl 5,5-dimethylhexanoate, hexyl isobutyrate, pentyl isobutyrate, isoamyl isovalerate, geranyl acetate, geranyl propionate, pentyl propionate, or a mixture of any two or more thereof.” is unclear.
With respect to the underlined parts above, claim 34 already lists the material for the dielectric fluid above, which does not include a noncyclic fluorinated hydrocarbon or a 2-pyridine carbonitrile. It is unclear if these materials are included with the list in claim 34 or are in addition to one of the materials or combination of materials of claim 34.
The remaining material are some but not all the materials of claim 34, these materials alone will further limit claim 34.
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 34-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7/2/1 of U.S. Patent No. 11114951. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant application claim 34
US11114951 claim 4/2/1
Claim 34:
An electrostatic machine comprising: a drive electrode and a stator electrode separated by a gap and forming a capacitor, wherein the drive electrode is configured to move with respect to the stator electrode; a housing configured to enclose the drive electrode and the stator electrode, wherein the stator electrode is fixed to the housing; and a dielectric fluid that fills a void defined by the housing, the drive electrode, and the stator electrode,
wherein the dielectric fluid comprises methyl (E)-5,5-dimethylhex-3-enoate, methyl 5,5-dimethylhexanoate, hexyl isobutyrate, pentyl isobutyrate, isoamyl isovalerate, geranyl acetate, geranyl propionate, pentyl propionate, or a mixture of any two or more thereof.
Claim 1:
An electrostatic machine comprising: a drive electrode and a stator electrode separated by a gap and forming a capacitor, wherein the drive electrode is configured to move with respect to the stator electrode; a housing configured to enclose the drive electrode and the stator electrode, wherein the stator electrode is fixed to the housing; and a dielectric fluid that fills a void defined by the housing, the drive electrode, and the stator electrode,
wherein the dielectric fluid comprises an ester; wherein: the ester is a compound of formula R—C(O)O—R′ or ROC(O)CR″C(O)OR′, wherein R, R′, and R″ are individually a substituted or unsubstituted C1-C10 alkyl or C2-C12 alkenyl group; or the ester is a high dielectric malonate.
Claim 2:
The electrostatic machine of claim 1, wherein the ester is a compound of formula R—C(O)O—R′.
Claim 4:
The electrostatic machine of claim 2, wherein the ester is selected from the group consisting of:
pentyl propionate;
geranyl propionate;
geranyl acetate;
pentyl isobutyrate;
hexyl isobutyrate;
methyl 5,5-dimethylhexanoate;
methyl (E)-5,5-dimethylhex-3-enoate;
and combinations of two or more thereof.
Instant application claim 35:
US11114951 Claim 4:
The electrostatic machine of claim 34, wherein the dielectric fluid comprises a noncyclic fluorinated hydrocarbon, a 2-pyridine carbonitrile, methyl 5,5- dimethylhexanoate, hexyl isobutyrate, pentyl isobutyrate, isoamyl isovalerate, geranyl acetate, geranyl propionate, pentyl propionate, or a mixture of any two or more thereof.
The electrostatic machine of claim 2, wherein the ester is selected from the group consisting of:
pentyl propionate;
geranyl propionate;
geranyl acetate;
pentyl isobutyrate;
hexyl isobutyrate;
methyl 5,5-dimethylhexanoate;
methyl (E)-5,5-dimethylhex-3-enoate;
and combinations of two or more thereof.
Claim 36 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7/2/1 of U.S. Patent No. 11114951.
Re claim 36, claim 7/2/1 of U.S. Patent No. 11114951 discloses claim 34 as discussed above, but is silent with respect to the dielectric fluid comprises isoamyl isovalerate.
Claim 7/2/1 of U.S. Patent No. 11114951 further discloses the dielectric fluid is the ester with a compound of formula R—C(O)O—R′ (claim 2/1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the dielectric fluid of claim 7/2/1 of U.S. Patent No. 11114951 to comprise isoamyl isovalerate, since isoamyl isovalerate is an ester with a compound formula R—C(O)O—R′.
Claims 37-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7/2/1 of U.S. Patent No. 11114951 in view of Mendalcorn et al. (US4276184, “Mendalcorn”).
Re claim 37, claim 7/2/1 of U.S. Patent No. 11114951 discloses claim 34 as discussed above, but is silent with respect to the dielectric fluid further comprises a malonate.
Mendalcorn discloses the dielectric further comprises a malonate (col 2, ln 50 to col 3, ln 8, discloses mixing esters, including malonates, to meet temperature requirements).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the dielectric fluid of claim 7/2/1 of U.S. Patent No. 11114951 to further comprise a malonate, as disclosed by Mendalcorn, in order to meet temperature requirements, as taught by Mendalcorn (col 3, lns 5-8).
Re claim 38, claim 7/2/1 of U.S. Patent No. 11114951 in view of Mendalcorn discloses claim 37 as discussed above and further discloses the malonate comprises dimethyl malonate, methylethyl malonate, diethyl malonate, methylpropyl malonate, ethylpropyl malonate, dipropyl malonate, dimethyl methylmalonate, methylethyl methylmalonate, diethyl methylmalonate, methylpropyl methylmalonate, ethylpropyl methylmalonate, dipropyl methylmalonate, dimethyl ethylmalonate, methylethyl ethylmalonate, diethyl ethylmalonate, methylpropyl ethylmalonate, ethylpropyl ethylmalonate, dipropyl ethylmalonate, or a mixture of any two or more thereof (Mendalcorn, col 3, lns 2-3).
Claims 39-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7/2/1 of U.S. Patent No. 11114951 in view of Petrowsky et al. (US20160099663, “Petrowsky”).
Re claim 39, claim 7/2/1 of U.S. Patent No. 11114951 discloses claim 34 as discussed above, but is silent with respect to the dielectric fluid further comprises dimethyl sulfone, sulfolane, or a mixture of dimethyl sulfone and sulfolane.
Petrowsky discloses the dielectric fluid further comprises dimethyl sulfone, sulfolane, or a mixture of dimethyl sulfone and sulfolane ([0005]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the dielectric fluid of claim 7/2/1 of U.S. Patent No. 11114951 to further comprise dimethyl sulfone, sulfolane, or a mixture of dimethyl sulfone and sulfolane, as disclosed by Petrowsky, in order to provide the dielectric fluid with known materials, as demonstrated by Petrowsky.
Re claim 40, claim 7/2/1 of U.S. Patent No. 11114951 discloses claim 34 as discussed above, but is silent with respect to the dielectric fluid further comprises a compound having a carbonate moiety, a nitrile substituted heteroaromatic solvent; a solvent having cyclic structure and a moiety represented as —OC(O)N—, a fluorinated acyclic hydrocarbon, or solvent comprising a sulfonyl group.
Petrowsky discloses the dielectric fluid further comprises a compound having a carbonate moiety (para [0090] & claim 2), a nitrile substituted heteroaromatic solvent ([0088] & claim 3); a solvent having cyclic structure and a moiety represented as -OC(O)N-(para [0090] & claim 6), a fluorinated acyclic hydrocarbon (claim 8), or solvent comprising a sulfonyl group (claim 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the dielectric fluid of claim 7/2/1 of U.S. Patent No. 11114951 to further comprise a compound having a carbonate moiety, a nitrile substituted heteroaromatic solvent; a solvent having cyclic structure and a moiety represented as —OC(O)N—, a fluorinated acyclic hydrocarbon, or solvent comprising a sulfonyl group, as disclosed by Petrowsky, in order to provide the dielectric fluid with known materials, as demonstrated by Petrowsky.
Re claim 41, claim 7/2/1 of U.S. Patent No. 11114951 discloses claim 34 as discussed above, but is silent with respect to the dielectric fluid further comprises a nitrile substituted heteroaromatic solvent.
Petrowsky discloses the dielectric fluid further comprises a nitrile substituted heteroaromatic solvent ([0088] & claim 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the dielectric fluid of claim 7/2/1 of U.S. Patent No. 11114951 to further comprise a nitrile substituted heteroaromatic solvent, as disclosed by Petrowsky, in order to provide the dielectric fluid with known materials, as demonstrated by Petrowsky.
Re claim 42, claim 7/2/1 of U.S. Patent No. 11114951 discloses claim 34 as discussed above, but is silent with respect to the dielectric fluid further comprises 3-methyl-2-oxazolidinone, 3-ethyl-2-oxazolidinone, or 3-methyl-1,3-oxazinan-2-one.
Petrowsky discloses the dielectric fluid further comprises 3-methyl-2-oxazolidinone, 3-ethyl-2-oxazolidinone, or 3-methyl-1,3-oxazinan-2-one (para [0090] & claim 7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the dielectric fluid of claim 7/2/1 of U.S. Patent No. 11114951 to further comprise 3-methyl-2-oxazolidinone, 3-ethyl-2-oxazolidinone, or 3-methyl-1,3-oxazinan-2-one., as disclosed by Petrowsky, in order to provide the dielectric fluid with known materials, as demonstrated by Petrowsky.
Re claim 43, claim 7/2/1 of U.S. Patent No. 11114951 discloses claim 34 as discussed above, but is silent with respect to the dielectric fluid further comprises ethylene carbonate, dimethyl carbonate, diethyl carbonate, ethylmethyl carbonate, dipropyl carbonate, propylene carbonate, methyl butyrate, γ-butyrolactone, N-methylpyrrolidinone, vinylene carbonate, dioxolane, δ-butyrolactone, diethyl ether, or a mixture of any two or more thereof.
Petrowsky discloses the dielectric fluid further comprises ethylene carbonate, dimethyl carbonate, diethyl carbonate, ethylmethyl carbonate, dipropyl carbonate, propylene carbonate, methyl butyrate, γ-butyrolactone, N-methylpyrrolidinone, vinylene carbonate, dioxolane, δ-butyrolactone, diethyl ether, or a mixture of any two or more thereof (para [0007], [0087], claim 12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the dielectric fluid of claim 7/2/1 of U.S. Patent No. 11114951 to further comprise ethylene carbonate, dimethyl carbonate, diethyl carbonate, ethylmethyl carbonate, dipropyl carbonate, propylene carbonate, methyl butyrate, γ-butyrolactone, N-methylpyrrolidinone, vinylene carbonate, dioxolane, δ-butyrolactone, diethyl ether, or a mixture of any two or more thereof., as disclosed by Petrowsky, in order to provide the dielectric fluid with known materials, as demonstrated by Petrowsky.
Claim 44 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7/2/1 of U.S. Patent No. 11114951 in view of Horst (US20050006980, “Horst”).
Re claim 44, claim 7/2/1 of U.S. Patent No. 11114951 discloses claim 34 as discussed above, but is silent with respect to the dielectric fluid further comprises a drag reducing agent selected from the group consisting of poly-isobutylene, polyethylene oxide, polyacrylamide, polysaccharides, surfactants, solid particle suspensions, and a combination of any two or more thereof.
Horst discloses the dielectric fluid further comprises a drag reducing agent selected from the group consisting of poly-isobutylene, polyethylene oxide, polyacrylamide, polysaccharides, surfactants, solid particle suspensions, and a combination of any two or more thereof (para [0102], teaches glass beads added to dielectric fluid to prevent frictional drag).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the dielectric fluid of claim 7/2/1 of U.S. Patent No. 11114951 to further include solid particle suspension, as disclosed by Horst, in order to prevent frictional drag, as taught by Horst (para [0102]).
Allowable Subject Matter
Claims 45-51 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.
Conclusion
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/ERIC JOHNSON/Primary Examiner, Art Unit 2834