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 .
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, 8 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14 and 8 of U.S. Patent No. 11,676,509 and in view of Mehn US 20110220619 . Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1, 8 and 15: Claims 1, 14 and 8 of the ‘509 patent provides a teaching of a welding torch comprising: (see col.41:47)
a sensor configured to detect a motion of associated with the welding torch; (see col. 41:48-49)
control circuitry configured to activate the electrical device in response to the sensor detecting the motion of the welding torch (see col. 41:50-55).
The ‘509 patent is silent on the teaching of an electrical device. However, the Mehn reference provides a teaching of an electrical device (see paragraph 21 item 32 control panel). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the ‘509 patent with the feature of an electrical device, as taught by Mehn, in order to provide a portable welding system (see paragraph 19).
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.
Claims 1-2, 4-5, 7-9, 11-12, 14-16, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mehn US 20110220619 and in view of Heo US 20140059365
Claims 1, 8 and 15: The Mehn reference provide a teaching of a welding torch (see FIG. 1 item 16 welding torch and paragraph 14 “welding system”) comprising:
a sensor configured to detect a motion of associated with the welding torch (see paragraph 17 “accelerometer”);
an electrical device (see paragraph 21 item 32 control panel).
However, the Mehn reference is silent on the teaching of control circuitry configured to activate the electrical device in response to the sensor detecting the motion of the welding torch. However, the Heo reference provide a teaching of control circuitry configured to activate the electrical device in response to the sensor detecting the motion of the welding torch (see FIG 3A item S310 and S330 and paragraph 51).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Mehn reference with the feature of control circuitry configured to activate the electrical device in response to the sensor detecting the motion of the welding torch, as taught by the Heo, in order to better conserve device power (see paragraph 5, 7).
Claims 2, 9 and 16: The Mehn reference provides a teaching of wherein the sensor comprises a motion sensor (see paragraph 17 “accelerometer”).
Claims 4, 11: The Mehn reference provides a teaching of wherein the sensor comprises an accelerometer (see paragraph 17).
Claims 5, 12 and 18: The Mehn reference provides a teaching wherein the electrical device comprises a battery powered electrical device of the welding torch (see paragraph 26 power source that includes a battery). Claims 7, 14 and 20: The Mehn reference is silent on the teaching of wherein the control circuitry is configured to activate the electrical device by waking the electrical device from out of a sleep mode.
However, the Heo wherein the control circuitry is configured to activate the electrical device by waking the electrical device from out of a sleep mode (see paragraph 50-51).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Salsich reference with the feature of activate the electrical device by waking the electrical device from out of a sleep mode, as taught by the Heo, in order to better conserve device power (see paragraph 5, 7).
Claims 3, 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Mehn US 20110220619 and in view of Heo US 20140059365 and further in view of Batzler US 20090298024
Claims 3, 10 and 17: The Mehn reference provides a teaching of wherein the sensor comprises an accelerometer (see paragraph 17 accelerometer). However, is silent on the sensor comprising of a gyroscope, or a magnetometer.
However, the Batzler reference provides a teaching of wherein the sensor comprises gyroscope (see paragraph 34 gyroscopic sensor).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Mehn reference with the feature of wherein the sensor comprises gyroscope, as taught by the Batzler reference, in order to provide an indication of the user’s welding gun orientation during the weld (see paragraph 7).
Claims 6, 13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Mehn US 20110220619 and in view of Heo US 20140059365 and further in view of Iwig et al WO 2012016851 A1
Claims 6, 13 and 19: The Mehn reference wherein the sensor comprises a first sensors of the welding torch (see paragraph 34 sensors 86 that is integrated to the welding torch); however, it is silent on the electrical device comprises of a second sensor of the welding torch.
However, the Iwig reference provides a teaching of the electrical device comprises of a second sensor of the welding torch (see page 4 third paragraph “camera detects position of the arc” and etc).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Mehn reference with the feature of electrical device comprises of a second sensor of the welding torch, as taught by the Iwig reference, in order to evaluate the technique of the welder (see page 3 second to last paragraph).
Response to Arguments
Applicant’s request to held the double patenting rejection in abeyance is noted. The examiner shall maintain the rejection accordingly.
Applicant’s arguments, see page 5, filed 10/14/2025, with respect to the rejection(s) of claim(s) 1-20 under 35 U.S.C 103(a) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Mehn reference US 20110220619.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J UTAMA whose telephone number is (571)272-1676. The examiner can normally be reached 9:00 - 17:30 Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kang Hu can be reached at (571)270-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J UTAMA/Primary Examiner, Art Unit 3715