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.
Claims 2 and 8-13 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 12 and 14-17, respectively of U.S. Patent No. 11,041,769. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the claims of the patent fully anticipate the elements the claims of the application, except that claim 2 of the application requires positioning the torsional vibration transducer on a shaft whereas claim 1 of the patent requires providing the torsional vibration transducer proximate to a body of a shaft. It would have been obvious to one of ordinary skill in the art when providing the torsional vibration transducer proximate the body of the shaft a taught in claim 1 of the patent, to position the transducer on the shaft in some manner, because this is the only way that the transducer can be aligned and securely coupled with the shaft for taking accurate measurements.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 11,041,769. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claim 18 of the patent fully anticipate the limitations of claim 14 of the application.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11,041,769. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of claim 19 of the patent fully anticipate the elements claim 20 of the application, except that claim 20 of the application requires positioning the torsional vibration transducer on a shaft whereas claim 19 of the patent requires providing the torsional vibration transducer proximate to a body of a shaft. It would have been obvious to one of ordinary skill in the art when providing the torsional vibration transducer proximate the body of the shaft a taught in claim 19 of the patent, to position the transducer on the shaft in some manner, because this is the only way that the transducer can be aligned and securely coupled with the shaft for taking accurate measurements.
Allowable Subject Matter
Claims 3-7, 15-19 and 21 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 2, 8-14 and 20 would be allowable if the non-statutory double patenting rejection were overcome by filing a terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to independent claims 2, 14 and 20, Purekar et al. (US 2013/0291657) appears to the be the closest prior and teaches a method and system that uses torsional vibration transducers on a rotating shaft. Purekar et al. do disclose considerations of zero-stress (par. 0035) and a calibration module 500 (par. 0032), but they fail to teach or suggest acquiring the zero stress measurements specifically at transducer to shaft gaps and calculating a calibration coefficient based on the plurality of zero-stress measurements.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M WEST whose telephone number is (571)272-2139. The examiner can normally be reached M-F 9 am - 5:30 pm (CT).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina DeHerrera can be reached at 303-297-4237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL M. WEST/Primary Examiner, Art Unit 2855