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 .
DETAILED ACTION
This correspondence is in response to Applicant’s Reply filed on November 6, 2025. Claim 19 is canceled and Claims 1-18 and 20 are pending. THIS ACTION HAS BEEN MADE FINAL.
Claim Interpretation
As a threshold matter, the preamble of Claim 1 will be construed as if in the balance of the claim. Here’s why. The MPEP states that:
[A] claim preamble has the import that the claim as a whole suggests for it.” Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). “If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). (See MPEP 2111.02)
In the instant application, the preamble states how the invention is going to be used, namely that it is “for a Rogowski coil retaining device” and then the preamble also recites limitations of the retaining device, namely the pair of cooperating members. Moreover, the preamble is necessary to give meaning and vitality to the claim insofar as one needs to know what the retaining device and the cooperating members are that the claim is referring to. Therefore, the preamble “should be construed as if in the balance of the claim.”
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.
Claim(s) 1, 4, 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2022/018326 to Penttonen et al. (Penttonen).
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Regarding Claim 1: Penttonen discloses an insert apparatus (See Annotated Fig. A) for a Rogowski coil retaining device (See Annotated Fig. A) that includes a pair of cooperating members (See Annotated Fig. A), the insert apparatus being insertable between the pair of cooperating members (See Annotated Fig. A), the insert apparatus comprising: a base member (See Annotated Fig. B); one or more pliable retention members (See Annotated Fig. B) coupled to a first side (See Annotated Fig. B) of the base member, the one or more retention members extending outwardly from the first side of the base member and being configured to facilitate engagement of a transformer bushing or a transformer spade terminal around which the Rogowski coil retaining device is positioned irrespective of a geometry of the transformer bushing or the transformer spade terminal; and one or more coupling members (See Annotated Fig. B) coupled to a second side (See Annotated Fig. B) of the base member and configured for coupling to a cooperating member (See Annotated Fig. A) of the pair of cooperating members (See Annotated Fig. A).
Regarding Claim 4: Penttonen discloses an insert apparatus of claim 1, wherein at least a portion of the first side (See Annotated Fig. B) of the base member is substantially arch-shaped (See generally Annotated Fig. B) and wherein the one or more retention members (See Annotated Fig. B) extend radially outward from the arch-shaped portion of the first side (See Annotated Fig. B) of the base member.
Regarding Claim 7: Penttonen discloses an insert apparatus of claim 1, wherein the one or more retention members (See Annotated Fig. B) form . . . a plurality of trusses--.
Regarding Claim 8: Penttonen discloses an insert apparatus of claim 1, wherein at least the one or more retention members are formed from silicone (See p. 17, Iine 15 discussing polymer which is what silicone is)--.
Regarding Claim 9: Penttonen discloses an insert apparatus of claim 1, wherein the base member is pliable. (See p. 17, Iine 14)
Regarding Claim 10: Penttonen discloses an insert apparatus of claim 1, wherein the one or more coupling members (See Annotated Fig. B) are pliable. (See p. 17, Iine 14)
Claim(s) 18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent App. No. 2020/0321761 to Varale (Varale).
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Regarding Claim 18: Varale discloses an insert apparatus for an object retaining device that includes a pair of cooperating members, the insert apparatus being insertable between the pair of cooperating members, the insert apparatus comprising: a pair of insert elements (See Annotated Fig. A) oriented as mirror images of each other, each insert element being insertable into a respective cooperating member of the pair of cooperating members and including: a base member (See Annotated Fig. A) having a first side (See Annotated Fig. A) and a second side (See Annotated Fig. A), wherein at least a portion of the first side is substantially arch-shaped (See Annotated Fig. A); a plurality of retention members (See Annotated Fig. A) coupled to the first side of the base member, the plurality of retention members (See Annotated Fig. A) extending radially outward from the arch-shaped portion of the first side of the base member and being configured to facilitate engagement of an object to be retained by the pair of cooperating members of the object retaining device irrespective of a geometry of the object; and a set of one or more coupling members (See Annotated Fig. A) coupled to a second side (See Annotated Fig. A) of the base member and configured for coupling to the respective cooperating member of the object retaining device; and at least one removable member (12) connecting the pair of insert elements to facilitate fabrication of the pair of insert elements as a single injection molded part.
Regarding Claim 20: Varale discloses an insert apparatus of claim 18, wherein a coupling member (See Annotated Fig. A) of the set of coupling members is sized and shaped to be insertable into an insert channel of the respective cooperating member of the object retaining device.
Response to Amendment
Applicant’s arguments with respect to claim(s) 1, 4, 7-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed May 6, 2025, with regards to Claims 18 and 20 have been fully considered but they are not persuasive.
Regarding Claim 18: Applicant argues that Varale does not disclose at least one removable member connecting the pair of insert elements to facilitate fabrication of the pair of insert elements as a single injection molded part. Examiner disagrees.
First, the limitation is interpreted as a member, that is capable of being removed, that connects the pair of insert elements. Notably, the removable member, as claimed, does not need to be removed but rather only needs to be capable of being removed. Here in Varale, the hinge (12) is certainly capable of being removed because it is a living hinge, which by its nature is thin and flexible, which makes the hinges capable of being removed. Additionally, the removable member (12) is connecting the pair of insert elements.
Applicant argues that “as is readily apparent from the disclosure of Varale, the hinge (12) is a necessary permanent element of the gasket (1, 9) and is not removable without changing the structure and function of the disclosed gasket (1, 9).”1 Examiner is not persuaded. Again, the claim only recites that the member is capable of being removed (i.e. removable) not that is must be removed or is removed. The hinge of Varale is a living hinge and capable of being removed. Additionally, the when the two insert elements of Varale (the half shells) are positioned between either the saddles (23 and 24) or the collar (25) the integrity of the hinge does not “change the structure and function of the disclosed gasket” as argued by Applicant.
Second, the phrase “to facilitate fabrication” describes the intended use of the member and does not differentiate from a prior art reference that also includes a member that (1) is capable of being removed and (2) connects the two pairs.
Intended use statements describe what the device is for and functional use language describes how the device works. “[A]pparatus claims cover what a device is, not what a device does.”2 While “[f]eatures of an apparatus may be recited either structurally or functionally,”3 claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Moreover, “a claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim.”4 Stated differently, if the prior art references disclose or teach all of the structural limitations, then the recitation of intended use statements does not differentiate the claimed apparatus from the prior art apparatus.
However, even if the intended use has greater weight to the patentability of the claim, the removable member (12) of Varale would also facilitate fabrication of the pair of insert elements as a single injection molded parts because the member (12) connects the two insert elements together.
Allowable Subject Matter
Claims 2, 3, 5, 6 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 11-17 are allowed.
Reasons for Allowable Subject Matter
None of the cited prior art, considered alone or in combination, discloses or teaches:
an insert apparatus of claim 1, wherein the one or more coupling members includes a spine member;
an apparatus of claim 1, further comprising: one or more removable sections to accommodate transformer bushings or transformer spade terminals of larger or irregular geometries;
an insert apparatus of claim 1, further comprising: an alignment member sized and shaped to mate with an alignment well of a cooperating member of the pair of cooperating members; or
an insert apparatus for at least part of a Rogowski coil retaining device, the insert apparatus comprising: a base member; one or more pliable retention members coupled to a first side of the base member, the one or more retention members extending outwardly from the base member and being configured to facilitate engagement of a transformer bushing or a transformer spade terminal around which the Rogowski coil retaining device is positioned irrespective of a geometry of the transformer bushing or the transformer spade terminal; and a pliable spine member coupled to a second side of the base member, the spine member being sized and shaped to be insertable into an insert channel of the Rogowski coil retaining device part.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In addition to the references used in this rejection and those cited in the PTO-892, the following references are very relevant to the claimed invention: US 11067455, 9607749.
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 ERET C MCNICHOLS whose telephone number is (571)270-7363. The examiner can normally be reached Monday - Friday: 9:00 - 5:00 (Eastern).
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, Terrell McKinnon can be reached at 571-272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ERET C. MCNICHOLS
Primary Examiner
Art Unit 3632
/ERET C MCNICHOLS/Primary Examiner, Art Unit 3632
1 See Reply, top of p. 7.
2 See MPEP 2114 (II).
3 See MPEP 2114 (I).
4 See MPEP 2114 (II).