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 .
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 1-20 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.
Regarding claim 1, the phrase “a topological optimization process . . . to maximize absorption performance of the absorber” is indefinite because it is unclear what is considered to be “maximum absorption performance.” For example, it is unclear whether maximizing “absorption performance” requires absorbing a vibration at a single frequency, absorbing a vibration over a band of frequencies or at multiple frequencies, providing a certain reduction in an amplitude of the vibration, time response of the absorption or some other metric.
Regarding claim 3, the phrase “minimizes a reflection coefficient or maximizes an absorption coefficient” is indefinite because it is unclear whether the minimization of the reflection coefficient and/or the maximization of the absorption coefficient are the same as the previously recited “maximiz[ation] [of the] absorption performance of the absorber.”
Regarding claim 13, the phrase “a topological optimization process . . . that maximizes absorption performance of the absorber” is indefinite because it is unclear how “absorption performance” is indefinite because it is unclear what is considered to be “maximum absorption performance.” For example, it is unclear whether maximizing “absorption performance” requires absorbing a vibration at a single frequency, absorbing a vibration over a band of frequencies, reducing an amplitude of the vibration, time response of the absorption or some other metric.
Regarding claim 14, the phrase “minimizes a reflection coefficient or maximizes an absorption coefficient” is indefinite because it is unclear whether the minimization of the reflection coefficient and/or the maximization of the absorption coefficient are the same as the previously recited “maximiz[ation] [of the] absorption performance of the absorber.”
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, 5-8, 10-13, 16, 17, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harel, Swapnil Subhash, "FREQUENCY TUNING OF VIBRATION ABSORBER USING TOPOLOGY OPTIMIZATION" (2017). Mechanical and Aerospace Engineering Theses. 975. https://mavmatrix.uta.edu/mechaerospace_theses/975.
Regarding independent claim 1, Harel discloses a method for designing an absorber for absorbing a vibration acting upon a structure (see page 20, “tuned vibration absorber”; see also pages 32-41), the method comprising steps of: defining a design domain for the absorber (see pages 35-36); and utilizing a topological optimization process to design a shape of the absorber within the design domain (see pages 35-36) to maximize absorption performance of the absorber (see pages 37, 38, 42, 43).
Regarding claim 5, Harel discloses that a width of the absorber is equal to a width of the structure (see page 71, FIG. 5-18; absorber is equal to a width of an interior cavity of the structure).
Regarding claim 6, Harel discloses the step of using a finite element method to evaluate the absorption performance of the absorber (see page 55).
Regarding claim 7, Harel discloses that the absorber is configured to be connected near an end of the structure (see page 65, FIG. 5-12(d)).
Regarding claim 8, Harel discloses that the structure is a beam (see page 65, FIG. 5-12(d)).
Regarding claim 10, Harel discloses that the absorber is configured to be attached to at least one side of the beam (see page 65, FIG. 5-12).
Regarding claim 11, Harel discloses that the vibration is one or more flexural waves acting upon the structure (see page 60, FIG. 5-8(a)).
Regarding claim 12, Harel discloses that a size of the design domain is at least one of: inversely proportional to a frequency of the vibration to be absorbed for a given material in the design domain; and varied based on different densities of material (see page 39).
Regarding claim 13, Harel discloses an absorber for absorbing a vibration acting upon a structure (see page 20, “tuned vibration absorber”; see also pages 32-41), the absorber designed using a topological optimization process to design a shape of the absorber (see pages 37, 38, 42, 43) within a design domain (see pages 35-36) that maximizes absorption performance of the absorber (see pages 37, 38, 42, 43).
Regarding claim 16, Harel discloses that the structure is a beam (see page 65, FIG. 5-12(d)).
Regarding claim 17, Harel discloses that the absorber is configured to be connected near an end of the beam (see page 65, FIG. 5-12(d)).
Regarding claim 19, Harel discloses that the absorber is attached to at least one side of the beam (see page 65, FIG. 5-12(d)).
Regarding claim 20, Harel discloses that a size of the design domain is at least one of: inversely proportional to a frequency of the vibration to be absorbed; and varied based on different densities of material (see page 39).
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 1, 2, 7, 8, 10, 11, 13, 14, 16, 17 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/612,396 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the elements of the present claims are recited or rendered obvious by claims 1-20 of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 7, 8, 10, 11, 13, 14, 16, 17 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/612,389 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the elements of the present claims are recited or rendered obvious by claims 1-20 of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2-4, 9, 14, 15 and 18 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS J LANE whose telephone number is (571)270-5988. The examiner can normally be reached Monday-Friday, 8:30 AM - 5:00 PM.
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/NICHOLAS J LANE/Primary Examiner, Art Unit 3616
June 24, 2026
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