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 .
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 camera positioned on the piston housing (as recited in claim 5) 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.
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 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,157,351. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the corresponding claim of the reference patent.
Claim Objections
Claims 2 and 3 are objected to because of the following informalities:
Claim 2 recites “said drum, and said outer-drums, each comprises a gear retained to its base”. The term “its base” lacks proper antecedent basis. The limitation should be amended to properly introduce the base of each of the drums.
Claim 3 recites “said piston housing contains 3 outer-drums”. In the context of the disclosure, it is clear that the outer-drums recited in claim 3 are not new drums, but are instead further specifying the number of the “one or more outer-drums” introduced in claim 2. Claim 3 should be amended to clearly reference the previously introduced outer-drums.
Appropriate correction is required.
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.
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hensley (U.S. Patent Application Publication No. 2018/0111703).
Regarding claim 1, Hensley discloses an electric spiraling piston (110, 200) comprising :a drum (225) around which said piston is spiraled when in a retracted orientation [FIG. 2A], said drum positioned within a piston housing (105-a); an electric motor (290) having a drive shaft connected to a central axis of said drum such that motor torque is relayed to the axis causing said drum to spin (paragraph 0064), wherein, when said drum is span by said motor said piston un-spirals and extracts out of said piston housing (paragraph 0064 discloses extension of the boom 110 from the housing via the motor) in a straight orientation [FIG. 2D]; and wherein said piston is biased to round its cross-section shape from a flat shape (shape of said piston 110 when it is wound on the drum 225) and into the shape of a full circle (shape of the piston when extended; paragraph 0073) [FIG. 3B], or more than a full circle, as it exits said housing.
Regarding claim 2, Hensley discloses an electric spiraling piston(110, 200) comprising: a drum (225) around which said piston is spiraled when in a retracted orientation [FIG. 2A], said drum positioned within a piston housing (105-a); an electric motor (290) having a drive shaft connected to a central axis of said drum such that motor torque is relayed to the axis causing said drum to spin and to extract said piston out of, or retract said piston into, said piston housing (paragraph 0064); wherein said piston housing further contains one or more outer-drums (220, 230, 240) positioned around, and in parallel orientation to, said drum [FIGS. 2A-2C], and wherein said drum, and said outer drums, each comprises a gear (215, 220, 245) retained to its base and each of said outer-drums gears is intermeshed with said drum gear (paragraphs 0063-0064); and wherein said drum gear is connected to said motor shaft with a uni-directional transmission mechanism (180), such that when said motor spins in a piston retraction direction said drum gear is disengaged by said uni-directional transmission mechanism and does not relay spinning motion to said outer-drums gears (paragraph 0052 discloses a clutch mechanism that disengages the boom deployment mechanism--including the outer-drums gears--during retraction of the boom).
Regarding claim 3, Hensley discloses that said piston housing contains 3 outer-drums (220, 230, 240).
Regarding claim 6, Hensley discloses that said uni-directional transmission mechanism is selected from the group consisting of: a one way bearing, a ratchet mechanism (paragraph 0052), a differential mechanism, and a multi gears or bands based transmission ratio mechanism.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hensley (U.S. Patent Application Publication No. 2018/0111703) in view of Freese (U.S. Patent No. 10,486,503).
Regarding claim 4, Hensley discloses the piston housing, but does not disclose one or more window attachment components.
Nonetheless, Freese discloses a housing (20) including one or more window attachment components (31A, 31B) for attaching said housing to a surface of a window (50) [FIG. 4C].
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the housing of Hensley to include the window attachment components taught by Freese, in order to enable a fast and tool-free mechanism for securing the housing in place, and to allow for use of the retractable boom of Hensley in the shade assembly taught by Freese.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hensley (U.S. Patent Application Publication No. 2018/0111703) in view of Freese (U.S. Patent No. 10,486,503), as applied to claim 4 above, and further in view of Hall (U.S. Patent Application Publication No. 2017/0051557).
Regarding claim 5, Hensley, as modified above, discloses the piston housing, but does not disclose a camera.
Nonetheless, Hall discloses a housing including a camera (3720; paragraph 0150) positioned on the housing [FIG. 38] such that it faces the window (paragraph 0150).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the housing of Hensley, as modified above, to include the camera taught by Hall, in order to provide means for detecting light levels or to provide additional security measures that the piston may be operated in response to.
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hensley (U.S. Patent Application Publication No. 2018/0111703) in view of Clymer (U.S. Patent Application Publication No. 2018/0364665).
Regarding claims 7 and 9, Hensley discloses an electric spiraling piston system (200) comprising: an electric spiraling piston (110) including: a drum (225) around which said piston is spiraled when in a retracted orientation [FIG. 2A], said drum positioned within a piston housing (105-a); an electric motor (290) having a drive shaft connected to a central axis of said drum such that motor torque is relayed to the axis causing said drum to spin (paragraph 0064), wherein, when said drum is span by said motor said piston un-spirals and extracts out of said piston housing (paragraph 0064 discloses extension of the boom 110 from the housing via the motor) in a straight orientation [FIG. 2D]; an extracted piston segment length calculation mechanism (the encoder 190 reads on an extracted piston segment length calculation mechanism, as it determines a position of the boom 110), functionally associated with said drum, for collecting data indicative of said drum's rotational orientation or spinning (paragraph 0050). Hensley does not disclose communication circuitry, a mobile device application, or a user communication device.
Nonetheless, Clymer discloses a system (100) including communication circuitry (150) for relaying collected data to a user communication device (144) running a mobile device application (paragraph 0039); and said mobile device application for: calculating, based on the relayed data, the length of a segment of an extendable and retractable system component (116) that is extended from a respective housing; and visually presenting, over a screen of the user communication device, the length of the segment of said component, wherein the length of the segment is presented relative to a predefined length of a segment representing full extension (as shown in Figure 6I, the length of extension/retraction is shown as a portion of the bar of the interface 728).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Hensley to include the communication circuitry and mobile device application taught by Clymer, in order to facilitate use of the system by an end user, and to provide means for remotely monitoring and/or controlling the system.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hensley (U.S. Patent Application Publication No. 2018/0111703) in view of Clymer (U.S. Patent Application Publication No. 2018/0364665), as applied to claim 7 above, and further in view of Brunk (U.S. Patent No. 10,119,330).
Regarding claim 8, Hensley, as modified above, discloses the extracted piston segment length calculation mechanism, but does not disclose a potentiometer.
Nonetheless, Brunk discloses a drum having a potentiometer functionally associated therewith for estimating, based on measured electric resistance level, the length of a segment of an extending member (column 28, lines 61-63).
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the piston of Hensley, as modified above, to include the potentiometer taught by Brunk, in order to provide consistent and reliable detection of the position of the piston. All the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have substituted one known element for another, using known methods with no change in their respective functions. Such a substitution would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABE L MASSAD whose telephone number is (571)272-6292. The examiner can normally be reached M-F 7:30-4:00.
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, Daniel Cahn can be reached at 571-270-5616. 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.
/ABE MASSAD/Primary Examiner, Art Unit 3634