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 2, claims 5-18 in the reply filed on 6/4/26 is acknowledged. Applicant has amended claims 1-4 to depend on claim 5. No claims are therefore withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 5 recites “a cover disposed on the body and movable independent of the tamper indicator.” The instant specification does not support this feature and it is new to this continuation application. All of the embodiments of the instant disclosure explicitly state that the cover’s movement is dependent on the tamper indicator as detailed in: page 1, lines 16-18; page 3, lines 23-30; page 4, lines 6-10; and so forth. Typically, as stated in MPEP 2163.06 I, “The examiner should still consider the subject matter added to the claim in making rejections based on prior art since the new matter rejection may be overcome by applicant.” However, in this particular situation, the limitation directly contradicts the instant speciation and at least claim 9 which contradicts the limitation. The limitation as therefore not been given patentable weight. Claims 1-4 and 6-20 depend on claim 5.
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 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 6, and 13-16 of U.S. Patent No. 11,676,476 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims encompass all of the limitations of the instant claim including that the tamper indictor can move both pivotally and along a linear path.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 5-13 and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sharpe (US 2004/0229113 A1).
Regarding claim 5, Sharpe discloses an apparatus comprising: a body 16 capable of receiving and holding a battery via 12 (see Figure 2); and a tamper indictor mounted to the body and capable of both pivoting (paragraph 39) and along a linear path between two positions (paragraph 61). As stated in the USC 112 rejections above, the limitation of “a cover disposed on the body and movable independent of the tamper indicator” is not given patentable weight as it contradicts the manner in which the tamper indictor functions according to the instant specification and claims.
Regarding claim 6, Sharpe discloses that the cover is part of a detector mount capable of being secured to a surface and to support the smoke detector on the surface (paragraph 36).
Regarding claim 7, Sharpe discloses that the detector mount includes a base 19 capable of being secured to the surface and the cover 18 is an intermediate component of the detector mount capable of releasably engaging with both the base and the detector body (paragraph 36).
Regarding claim 8, Sharpe discloses that the cover is capable of engaging with the detector body via rotation about an engagement axis (paragraph 36) and the tamper indicator is capable of pivoting about a pivot axis that is parallel to the engagement axis (paragraph 39).
Regarding claim 9, Sharpe discloses that the cover is capable of engaging with the detector body via rotation about an engagement axis (paragraph 36), and the tamper indicator is capable of preventing rotation of the cover about the engagement axis for engagement with the detector body when in the second position (paragraph 55).
Regarding claim 10, Sharpe discloses that the tamper indicator is capable of pivoting between the first and second positions about a pivot axis that is oriented along a direction in which the battery is received at the battery location (paragraph 40).
Regarding claim 11, Sharpe discloses that the detector body has an upper surface arranged in a plane and the tamper indicator is capable of pivoting between the first and second positions about a pivot axis that is oriented perpendicular to the plane (see Figure 5).
Regarding claim 12, Sharpe discloses that tamper indicator is capable of both pivoting about a pivot axis (paragraph 39) and sliding along (paragraph 61) the pivot axis in movement between the first and second positions.
Regarding claim 13, Sharpe discloses that the tamper indicator is capable of pivoting within the battery location about a pivot axis between the first and second positions and to have a portion that extends out of the battery location when the tamper indicator is in the second position (paragraph 40).
Regarding claim 15, Sharpe discloses that the tamper indicator is resiliently biased to move toward the second position and is capable such that a battery at the battery location holds the tamper indicator at the first position (paragraph 41).
Regarding claim 16, Sharpe discloses that the tamper indicator in the second position is capable of preventing positioning of the cover suitably adjacent the detector body for engagement of the detector body with the cover (paragraph 47).
Regarding claim 16, Sharpe discloses a detector mount capable of being secured to a surface and to engage the detector body 19 to support the smoke detector on the surface (paragraph 36), wherein the detector mount includes a sidewall with openings to permit air flow into a space defined by the detector mount and to a detector component of the detector body (see Figure 10).
Regarding claims 18 and 19, Sharpe discloses that the tamper indicator includes an opening capable of receiving a shaft 46 of the detector body on which the tamper indicator is pivotally or slidably movable (see Figure 5).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 14, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sharpe as applied to claim 5 above, and further in view of Yoon Sam-Gi (KR 100313337 B1). A machine translation of Yoon Sam-Gi is provided herewith for citation purposes. It should be noted that no paragraph numbers are present.
Sharpe discloses a cam follower (paragraph 42) but does not disclose a spiral ramp. Yoon Sam-Gi—in an invention for a smoke detector with tamper indicator—discloses the use of a spiral screw portion that allows the cover to turn and fit the body integrally in step-wise fashion (see Figures 5 & 6 and respective descriptions). It would have been obvious to one having ordinary skill in the art at the time of invention to use a spiral ramp for the tamper indicator of Sharpe so as to have metered positions for the reasons recommended in Yoon Sam-Gi.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IMRAN AKRAM/Primary Examiner, Art Unit 1725
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