DETAILED ACTION
Status of the Application
This office action is a non-final rejection in response to the filing of the applicant’s “response to election / restriction requirement” filed on 06/30/2025. 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 with traverse of Species A (FIGS. 1-5, Claims 1-6) in the reply filed on 06/30/2025 is acknowledged.
The traversal is on the ground(s) that:
“Applicant traverses the Election of Species Requirement for the following reasons.
In particular, claims 7-20 now depend either directly or indirectly from claim 1. Therefore, claims 7-20 are not mutually exclusive from claim 1.
In addition, it is respectfully submitted that it should be no undue burden on the Examiner to consider claims 1-20, because elected claims 1-6 and non-elected claims 7-20 have relevance in design and effect, have the same search classes/subclasses, and involve the same technical field.
Accordingly, the Election of Species Requirement should be overcome and withdrawn. In the event that the Examiner persists in the Election of Species, Applicant reserves the right to file a Divisional application at a later time, if so desired.”;
Furthermore, in response to applicant’s allegation, the examiner respectfully disagrees since this is not found persuasive because it would be a serious burden for searching the non-elected species (Species B-C) as their variable configurations require different search queries/strategies since these are directed to different / diverse embodiments and distinct structure configurations and arrangements of the wireless power apparatus, charging dock and electronic equipment,
for example, species B and C, directed to Figures 6-11, pertaining to claims 7-20, the above argument is not persuasive since before the applicant’s election / response to the restriction requirement, the claims 7-20 already had the same dependencies on claim 1, the amendments performed by the applicant does not correct the fact that there are 3 different inventions (wireless power apparatus, charging dock and electronic equipment).
Furthermore, the term “Charging system” as amended by the applicant in claims 7-8,11-15, is not disclosed in the applicant’s specification.
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04.
Therefore, claims 7-20 are withdrawn from consideration.
Additionally, when two or more independent and distinct inventions are presented for examination, the examiner may make a restriction requirement if a serious burden exists. In the reply to the restriction requirement, applicant must elect one invention for examination, therefore is not permissible to elect a second invention for examination (see MPEP 818).
For applicants information, see MPEP 809.02(a), specifically, where restriction between species is appropriate (see MPEP § 808.01(a)) the examiner should send a letter including only a restriction requirement).
The particular reasons relied on by the examiner for holding that the inventions as claimed are either independent or distinct were concisely stated in the requirement for restriction/election sent on 05/01/2025.
Action as follows should be taken:
(A) Identify generic claims or indicate that no generic claims are present. See MPEP § 806.04(d) for definition of a generic claim.
(B) Clearly identify each (or in aggravated cases at least exemplary ones) of the disclosed species, to which claims are to be restricted. The species are preferably identified as the species of figures 1, 2, and 3 or the species of examples I, II, and III, respectively. In the absence of distinct figures or examples to identify the several species, the mechanical means, the particular material, or other distinguishing characteristic of the species should be stated for each species identified. If the species cannot be conveniently identified, the claims may be grouped in accordance with the species to which they are restricted. Provide reasons why the species are independent or distinct.
(C) Applicant should then be required to elect a single disclosed species under 35 U.S.C. 121, and advised as to the requisites of a complete reply and his or her rights under 37 CFR 1.141.
Therefore, the requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a plurality of first batteries are connected in series” (Claim 4) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
4. 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 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.
5. 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.
6. Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al, US Patent Application Publication (US 2020/0388812 A1).
Regarding Claim 1, Liu et al discloses a wireless power apparatus (100) (see Figs 1-12), comprising:
a housing (10,20), which is provided with a mounting cavity (see Figs 1-7 disclosing mounting cavity within housing 10,20);
a first battery (22), which is disposed within the mounting cavity (see Figs 1,5-6, 9-12; par. [0027],[0029]-[0031],[0035]; claim 1);
a plurality of first magnetic pieces (33) (see plural magnets 33 in Fig 7), which are disposed in the housing (10,20) (see Figs 1-7; par. [0011],[0031],[0033]; claim 6);
a first charging assembly (94), which is configured to charge the first battery (22) (see Fig 5-6,9 and par. [0029],[0031],[0035]); and
a wireless power supply assembly (92), which is disposed within the mounting cavity and electrically connected to the first battery (22) (see Fig 5-6, 9; par. [0029],[0031],[0034]-[0035]),
in addition, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). (see MPEP 2114).
Furthermore, it has been held that 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. Exparte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (See MPEP 2114)).
Regarding claim 2, Liu et al discloses the wireless power apparatus of claim 1, wherein an upper end surface (16,26) of the housing (10,20) comprises a first adsorption portion and a power supply portion (13), the first adsorption portion is located at an outer periphery of the power supply portion (13), the wireless power supply assembly (92) is disposed on the power supply portion (13), and the plurality of first magnetic pieces (33) are dispersedly disposed on the first adsorption portion (see Figs 1-10; par. [0027]-[0035]).
Regarding claim 3, Liu et al discloses the wireless power apparatus of claim 2, wherein a lower end of the housing (14,24) is provided with a plurality of second magnetic pieces (see multiples seconds magnets 33 in left side in Fig 7), and wherein in a case where two housings (10, 20) are stacked, second magnetic pieces (see multiples seconds magnets 33 in left side in Fig 7) on an upper one of the two housings (10,20) are capable of being adsorbed to second magnetic pieces (see multiples seconds magnets 33 in left side in Fig 7) on a lower one of the two housings correspondingly (see Figs 1-7; par. [0011],[0031],[0033]; claim 6,
in addition, it has been held that the recitation that an element is “capable of” perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138).
Regarding claim 4, Liu et al discloses the wireless power apparatus of claim 3, wherein in a case where a plurality of housings (10, 20) are stacked (see Fig 1), a plurality of first batteries (22) are connected in series (see Figs 1-2,10 and par. [0026] disclosing the power pack 10 is connected in series to the power pack 20).
Regarding claim 5, Liu et al discloses the wireless power apparatus of claim 3, wherein the lower end of the housing (14,24) comprises a second adsorption portion and a charging portion (23), the second adsorption portion is located at an outer periphery of the charging portion (23), the first charging assembly (94) is disposed on the charging portion, and the plurality of second magnetic pieces (see multiples seconds magnets 33 in left side in Fig 7) are dispersedly disposed on the second adsorption portion (see Figs 1-10; par. [0027]-[0035]).
Regarding claim 6, Liu et al discloses the wireless power apparatus of claim 5, wherein the first adsorption portion has a structure of a conical surface (see Figs 1-6 disclosing a conical surface, see paragraphs [0025]-[0028]); or
the first adsorption portion has a structure of a conical surface, and the second adsorption portion is parallel to the first adsorption portion.
7. Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Azancot et al, US Patent Application Publication (US 2010/0181841 A1).
Regarding claim 1, Azancot et al discloses a wireless power apparatus (110) (see Figs 1-10), comprising:
a housing (see housing in 110 and 120, Figs 1-4C), which is provided with a mounting cavity;
a first battery (par. [0006] not shown), which is disposed within the mounting cavity (see Figs 1-10);
a plurality of first magnetic pieces (222a-d), which are disposed in the housing (110) (see Fig 4b; par. [0111]);
a first charging assembly (104), which is configured to charge the first battery (par. [0006] not shown); and
a wireless power supply assembly (112), which is disposed within the mounting cavity and electrically connected to the first battery (par. [0006] not shown,
in addition, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). (see MPEP 2114).
Furthermore, it has been held that 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. Exparte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (See MPEP 2114)).
Regarding claim 2, Azancot et al discloses the wireless power apparatus of claim 1, wherein an upper end surface of the housing (110,120) comprises a first adsorption portion and a power supply portion (102), the first adsorption portion is located at an outer periphery of the power supply portion (102), the wireless power supply assembly (112) is disposed on the power supply portion (102), and the plurality of first magnetic pieces (222a-d) are dispersedly disposed on the first adsorption portion (see Figs 1-10; par. [0110]-[0112]).
Regarding claim 3, Azancot et al discloses the wireless power apparatus of claim 2, wherein a lower end of the housing is provided with a plurality of second magnetic pieces (224a-d), and wherein in a case where two housings (110,120) are stacked (See Figs 1-10, par. [0110]-[0112]),
second magnetic pieces (224a-d) on an upper one of the two housings (110,120) are capable of being adsorbed to second magnetic pieces (224a-d) on a lower one of the two housings correspondingly (see Figs 4b; par. [0111]-[0112],
in addition, it has been held that the recitation that an element is “capable of” perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138).
Regarding claim 4, Azancot et al discloses the wireless power apparatus of claim 3, wherein in a case where a plurality of housings (110,120) are stacked (see Figs 1-10), a plurality of first batteries (par. [0006] not shown) are connected in series (see Figs 1-10, there is one battery per power jack 110 and power plug 120 electrically connected in series).
Regarding claim 5, Azancot et al discloses the wireless power apparatus of claim 3, wherein the lower end of the housing (110,120) comprises a second adsorption portion and a charging portion (122,342), the second adsorption portion is located at an outer periphery of the charging portion (122,342), the first charging assembly (104) is disposed on the charging portion (122,342), and the plurality of second magnetic pieces (224a-d) are dispersedly disposed on the second adsorption portion (see Figs 1-10).
Regarding claim 6, Azancot et al discloses the wireless power apparatus of claim 5, wherein the first adsorption portion has a structure of a conical surface (See Figs 1-10 disclosing a conical surface); or
the first adsorption portion has a structure of a conical surface, and the second adsorption portion is parallel to the first adsorption portion.
Examiner Note
8. The examiner cites particular columns and lines numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see the cited prior art in the PTO-892 form attached.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALFONSO PEREZ BORROTO whose telephone number is (571) 270-1714. The examiner can normally be reached on M-F (9am-4pm).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rexford Barnie can be reached on (571) 272-7492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ALFONSO PEREZ BORROTO/
Primary Examiner, Art Unit 2836