DETAILED ACTION
Claim Objections
1. Claim 12 is objected to because of the following informalities: “insufficient overcome” appears to be a typographical error that should be amended to “insufficient to overcome”.
Double Patenting
2. 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.
3. Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,738,282. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims comprise a scope that reads on the current claims.
With respect to claims 1 and 10, patented claim 1 teaches a self-rotating device comprises: a container carrying a fluid; a self-powered rotating body buoyantly supported by said fluid; wherein said body comprises: an axis of rotation; an electric motor contained inside said body, said electric motor comprising: a counter-torque element rotationally responsive to an ambient magnetic field; and, wherein said device further comprises: a magnetic lateral positioning structure apart from said body and apart from said electric motor, wherein said magnetic lateral positioning structure is fixed in a non-rotating manner to said container; and, wherein said magnetic lateral positioning structure is located an effective distance from said counter-torque element so as to laterally bias said body toward a position of magnetic equilibrium between said magnetic lateral positioning structure and said counter- torque element.
With respect to claim 2, patented claim 2 teaches wherein said counter-torque element is a compass magnet aligned to said ambient magnetic field.
With respect to claim 3, patented claim 3 teaches wherein said ambient magnetic field is the earth's magnetic field.
With respect to claims 4-5, patented claim 4 teaches wherein said positioning structure comprises a positioning magnet, wherein said positioning magnet is a permanent magnet. Moreover, a permanent magnet will inherently generating a multipurpose magnetic field that provides both said ambient magnetic field and said local attractive magnetic force.
With respect to claim 6, patented claim 5 teaches wherein said container comprises a light transmissive outer wall; and wherein said fluid comprises a light transmissive liquid.
With respect to claim 7, patented claim 6 teaches wherein said counter-torque element and magnetic lateral positioning structure are vertically aligned.
With respect to claim 8, patented claim 7 teaches wherein said position of magnetic equilibrium is located so that said axis of rotation intersects a region occupied by said magnetic lateral positioning structure.
With respect to claim 9, patented claim 8 teaches wherein said axis passes through a void bounded by said magnetic lateral positioning structure.
With respect to claim 11, patented claim 9 teaches wherein said effective distance is less than about 5 centimeters.
With respect to claim 12, patented claim 1 teaches wherein said device further comprises: a local attractive magnetic force between said magnetic lateral positioning structure and said counter-torque element; and, wherein said local attractive magnetic force has a strength which is insufficient overcome a buoyancy of said body.
With respect to claim 13, patented claim 10 teaches wherein said magnetic lateral positioning structure comprises an amount of ferromagnetic paint coating a portion of said container.
With respect to claim 14, patented claim 11 teaches wherein said fluid comprises two different density liquids, wherein said liquids are selected to buoyantly support said body within said container.
With respect to claim 15, patented claim 12 teaches wherein said device further comprises a light transmissive outer enclosure forming said container, wherein said enclosure is shaped and dimensioned to have an internal cavity containing an amount of a light transmissive liquid forming said fluid and said self-powered hollow rotating body being immersed in said liquid.
Conclusion
4. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See French (US Pub. No. 2007/0075599), French (US Pub. No. 2005/0102869), Francis (US Pub. No. 2002/0148147) and Tang (US Pat. No. 5,692,329).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711