DETAILED ACTION
The Preliminary Amendment has been entered.
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 Group I, Claims 24-36 in the reply filed on 5/29/2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 25, 31, and 32 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 24 recites “a printed circuit board” and claim 25, which depends from claim 24 recites “a plurality of printed circuit boards”. Claim 25 is confusing because it uses the same nomenclature (circuit board) to refer to a different structure than claim 24. The examiner suggests reciting “a first printed circuit board” or similar in claim 24 and “a second plurality of printed circuit boards” or similar in claim 25. Claim 25 also recites “of conveyor module” which needs correction. Claims 31 and 32 recite “the housing” without proper antecedent basis in the claims.
Double Patenting
Claim 24 of this application is patentably indistinct from claim 46 of Application No. 18/292,807. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 24 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 36 of copending Application No. 18/292,807 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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.
(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) 24, 26-29, 31, and 34-36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guglielmi et al. (US 2020/0122932). Guglielmi discloses a conveying system for conveying objects comprising: a plurality of conveyor modules (1), each conveyor module comprising: at least one rotatable element comprising an engagement surface (30) configured to engage with a surface of an object to be conveyed; a driving mechanism (20) configured to rotate the at least one rotatable element such that rotation of the at least one rotatable element causes rotation of the engagement surface and thereby movement of the object; and a control mechanism comprising a printed circuit board (see at least para. 0060 and Fig. 2) configured to control rotation of the rotatable element via the driving mechanism; and a conveying frame comprising: a plurality of apertures, each aperture configured to receive a conveyor module so as to form an array of conveyor modules that together provide a substantially planar conveying surface for conveying objects thereon (see at least paras. 0022 and 0068-0071); and a control system (see at least para. 0073) configured to communicate with the control mechanism of the conveyor module; wherein each conveyor module is configured to be releasably mounted within an aperture of the plurality of apertures (see at least paras. 0069-0070) and wherein, by mounting the conveyor module within the aperture, an electrical connection is established between the control mechanism of the conveyor module and the control system of the conveying frame, which facilitates electrical communication between the control system and the mounted conveyor module (see at least paras. 0069-0070). The at least one rotatable element comprises an aperture having a cross-section comprising a plurality of recesses (32) that are configured to engage with corresponding ridges (41) on the shaft of the driving mechanism. The driving mechanism comprises a motor (52, 54), and the motor comprises a plurality of protrusions (55) extending from the motor, the protrusions configured to engage with corresponding recesses (42) within the conveyor module whereby to retain the motor in place within the conveyor module. The conveyor module further comprises a first opening arranged in the top of the conveyor module (see Fig. 1 and Fig. 3), a second opening arranged in the base of the conveyor module (see Fig. 1, generally at “61”), and a through passageway extending between the first opening and the second opening to allow fluid or objects to pass from the conveying surface to an underside of the conveying frame under the action of gravity, wherein the at least one rotatable element is at least partially located within the through passageway (see Fig. 4). The conveyor module comprises a housing (10) configured to at least partially house the at least one rotatable element, the driving mechanism, and the control mechanism, wherein a portion of the control mechanism extends beyond the housing such that it can engage with the control system of the conveying frame (see Fig. 4). The housing comprises a plurality of flanges (60) configured to engage with the conveying frame.
Allowable Subject Matter
Claims 30 and 33 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 25 and 32 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Huang (US 11,319,155) and Widmer et al. (US 10,493,927) disclose similar conveying systems having conveying modules located in apertures of a conveying frame with electrical connections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK HEWEY MACKEY whose telephone number is (571)272-6916. The examiner can normally be reached M - F 9-5.
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, Michael McCullough can be reached at 571-272-7805. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PATRICK H MACKEY/Primary Examiner, Art Unit 3653
Prosecution Insights