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 because Fig. 1 shows a large, bolded arrow pointing a structure but does not have a number or character associated with that arrow to label the structure. The meaning of the arrow and its bolding is unclear.
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 1 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/606,399 (reference application) in view of ‘3Y1 (KR 2002720331Y1).
Regarding claim 1, allthough the claims at issue are not identical, they are not patentably distinct from each other because co-pending claim 1 includes all of the recited limitations except for the coil powering an induced electric current and the rotor carrying all of the electric/electronic equipment formed by the at least one LED, the coil, and where appropriate, the electrical/electronic circuit.
‘3Y1 teaches (Figs. 1-3) a coil powering an induced electric current ([0024] of the translation) and a rotor (2) carrying all of the electric/electronic equipment formed by at least on LED (8), a coil (9), and an electrical/electronic circuit (7).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified reference claim 1’s invention so that the coil induces an electrical current and the rotor carries the LED’s electric/electronic equipment, the coil, and the electrical/electronic circuit. One of ordinary skill in the art would have been motivated to make this modification because induced current is a predictable and necessary consequence of coils rotating around magnets and because a rotor carrying the components would prevent the rotor from jamming or becoming tangled and provide an interesting, dynamic, and aesthetic appearance (see also [0013] of ‘3Y1).
Regarding claim 20, co-pending claim 1 recites all the limitations of claim 20 except for semantic differences.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/606,399 (reference application) in view of ‘3Y1 (KR 2002720331Y1) because co-pending claim 11 recites all of limitations of claim 2.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/606,399 (reference application) in view of ‘3Y1 (KR 2002720331Y1) because co-pending claim 9 recites all of limitations of claim 3 except for semantic differences.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/606,399 (reference application) in view of ‘3Y1 (KR 2002720331Y1) because co-pending claim 8 recites all of limitations of claim 4 except for semantic differences.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/606,399 (reference application) in view of ‘3Y1 (KR 2002720331Y1) because co-pending claim 12 recites all of limitations of claim 5 except for semantic differences.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 18/606,399 (reference application) in view of ‘3Y1 (KR 2002720331Y1) because co-pending claim 15 recites all of limitations of claim 6 except for semantic differences.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of copending Application No. 18/606,399 (reference application) in view of ‘3Y1 (KR 2002720331Y1) because co-pending claim 16 recites all of limitations of claim 6 except for semantic differences.
Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of copending Application No. 18/606,399 (reference application) in view of ‘3Y1 (KR 2002720331Y1) because co-pending claim 17 recites all of limitations of claim 19 except for semantic differences.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 19 is objected to because of the following informalities: “said microgenerator, which device comprises” is idiomatically incorrect and is suggested to be changed to -said microgenerator, wherein the device comprises-. Appropriate correction is required.
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.
The term “where appropriate” in claim 1 is a relative term which renders the claim indefinite. The term “where appropriate” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. How one decides under what conditions the claimed electric/electronic component should be formed by the claimed electric/electronic circuit or another circuit is subjective. Different persons of ordinary skill in the art may have different opinions on whether forming all of the equipment in a single circuit is appropriate. For the purposes of examination, “and, where appropriate, said” has been read as -and portions of said-.
The term “vicinity” in claim 9 is a relative term that renders the claim indefinite. The term “vicinity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Different persons of ordinary skill in the art will have different opinions on the size of the “vicinity” of the microgenerator—a circle with a radius of 1 inch, a circle with a radius of 1 foot, or any other shape or size.
Claim 9 lacks antecedent basis for “the vicinity” in lines 1-2 and has been read as -a vicinity-.
Regarding claim 10, the phrase "on the one hand…on the other hand" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 11 lacks antecedent basis for “the light emission zone” in line 2. It has been read as -a light emission zone-.
Claim 13 lacks antecedent basis for “the extraction” in line 2. In line 5 of claim 12, “extracting the light” has been read as -the extraction of the light-.
Claim 13 lacks antecedent basis for “the coefficient” in line 3. It has been read as -a coefficient-.
Claim 13 lacks antecedent basis for “the entire surface area.” It has been read as -an entire surface area-.
Claim 14/13 recites that the extraction patterning zone has a substantially constant extracted light intensity, but claim 13 recites that the extraction patterning zone is patterned so that the extracted light intensity is not uniform and varies of an area. Claim 14 is therefore self-contradictory.
Claim 16 lacks antecedent basis for “the view” in line 3. It has been read as -a view-.
Claim 16 lacks antecedent basis for “the light emission zone” in lines 1-2. It has been read as -a light emission zone-.
Claim 17 recites “a said visible part” in line 3. There is ambiguous antecedent basis for this limitation. It has been read as -said visible part-.
Claim 18 recites “said at least one stationary light-guiding structure capable of diffusing the light from said at least one light-emitting diode, to provide indirect illumination of a part of said timepiece, includes” in lines 2-4. However, the stationary structure was not previously recited having such capability. The limitation is suggested to be changed to -said at least one stationary light-guiding structure is capable of diffusing the light from said at least one light-emitting diode so as to provide indirect illumination of a part of said timepiece, and includes-.
Claim 19 lacks antecedent basis for “the driving” in line 4 and has been read as -a driving-.
Allowable Subject Matter
Claims 7-18 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.
The following is a statement of reasons for the indication of allowable subject matter: regarding claims 7-18, ‘3Y1 discloses a generator formed by a stator and rotor comprising a coil and permanent magnets, and at least one light-emitting diode powered by an electrical/electronic circuit by the coil ([0013] and [0017]). ‘371 does not disclose a timepiece including the generator.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Favre (US 20210191337) discloses a generator comprising a rotor and stator that creates an induced voltage to power a quartz circuit and a light-emitting diode ([0033]), but does not disclose the light-emitting diode and all electrical/electronic equipment formed by the diode being carried by the rotor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Hwang whose telephone number is (571)272-1191. The examiner can normally be reached M-F from 10-6 PM PT.
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, Renee Luebke can be reached at 571-272-2009. 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.
/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2833
/EDWIN A. LEON/ Primary Examiner, Art Unit 2833