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 .
Response to Arguments
Applicant's arguments filed 16 June 2025 have been fully considered but they are not persuasive.
In particular, Applicant remarks that amended claim 1 recites a sensor to measure distance between two plates of the chain and that Austen does not recite using a device to measure distance between the two plates of a chain but instead measures tension.
Regarding the above, the examiner respectfully submits that while Applicant’s remarks have been considered, they are moot in light of the 35 U.S.C. 112(b) rejection presented herein below. In particular, because the examiner is not able to properly evaluate the scope of the claim for the reasons noted below, a proper and complete prior art search and comparison between Applicant’s claims and the disclosure/teachings of the prior art were not able to be made at this time. However, the examiner encourages Applicant to remedy the 35 U.S.C. 112(b) issue because it appears that Applicant’s arguments regarding supposed deficiencies of Austen would be persuasive and would thus at least necessitate further search and consideration of the pending claims.
Applicant further argues that claim 12 has been amended to include limitations regarding an inductive sensor and that neither Austen nor Goldstein teaches incorporating an inductive sensor in said enclosure.
Regarding the above, the examiner respectfully submits that while Applicant’s remarks above have been considered, they are moot in view of the new grounds of rejection regarding amended claim 12 due to the inclusion of the prior art reference document to O’Connor et al. US PG-PUB 2018/0238754 A1 (hereafter O’Connor) as noted below in further detail regarding the 35 U.S.C. 103(a) rejection of claim 12.
Applicant further argues that Austen uses a device for measuring tension and Goldstein uses an image monitoring unit. Applicant thus concludes that the combination of Austen and Goldstein does not teach the features of claim 12.
Regarding the above, the examiner respectfully submits that the claimed limitations of claim 12 require only that the inductive sensor measures “one or more parameters corresponding to chain elongation” and thus the examiner respectfully submits that the cited sections of Austen are still appropriate and pertain to Applicant’s claimed invention as indicated below in further detail in the 35 U.S.C. 103(a) rejection of the instant claim. Furthermore, the examiner also respectfully submits that although Goldstein utilizes an image monitoring unit as remarked by Applicant, the inclusion of the newly discovered reference to O’Connor obviates this by modifying the sensing component to be an inductive sensor as noted in further detail below in the 35 U.S.C. 103(a) rejection of the instant claim.
Applicant further argues that the pending claims have been amended and accordingly the scope of said claims differs from those of US Pat 11,976,999.
Regarding the above, the examiner respectfully submits that while it appears that the scope of pending claims 14 and 15 are now such that a non-statutory double patenting rejection thereto is no longer appropriate, it appears that such a non-statutory double patenting rejection still applies to claim 12 in light of the newly discovered reference to O’Connor and is therefore outlined in further detail below.
Claim Objections
Claim 14 is objected to because of the following informalities:
As to claim 14: The claim indicates that it depends from claim 13, which the examiner notes was cancelled in the reply filed 16 June 2025. However, because there is only one preceding independent claim (i.e. claim 12), the examiner is interpreting the claim to depend from 12 instead for the purpose of expedient examination.
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 1-7 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.
As to claim 1: The claim recites in line 4 “a sensor” but in line 7 recites “a sensor device” and accordingly there is uncertainty whether the chain monitoring system must have both a sensor component and a separate/distinct sensor device or if the “sensor” and “sensor device” are intended to be synonymous such that they refer to the same claimed component.
Additionally, line 10 of the claim refers to “the strain gauge” but there is insufficient antecedent basis for this limitation in the claim.
Due the above noted clarity issues, a proper and complete prior art search for the subject matter of amended claim 1 could not be carried out at this time. The examiner recommends amending the claim to either reflect that the claim only requires a single claimed component (i.e. either a sensor or sensor device, but not reciting both) or affirming that the sensor and sensor device are separate components/elements by indicating in remarks referencing Applicant’s disclosure (such as from the as-filed specification or figures) to support said assertion. Furthermore, the examiner also recommends amending the claim so as to obviate the antecedent basis regarding the recitation of “the strain gauge” in line 10 of the instant claim.
As to claims 2-7: Each of said claims depends ultimately from claim 1 and accordingly each is also rejected under 35 U.S.C. 112 for reasons similar to those indicated previously above due to their respective dependencies upon claim 1.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Austen GB 2041549 A (hereafter Austen), prior art of record, in view of Goldstein US PG-PUB 2016/0116356 A1 (hereafter Goldstein), prior art of record as indicated on the IDS filed 29 March 2024 and O’Connor et al. US PG-PUB 2018/0238754 A1 (hereafter O’Connor).
As to claim 12: Austen discloses a chain monitoring system (fig. 1 and see col. 1, lines 6-10) comprises:
one or more sensors to measure one or more parameters corresponding to chain elongation (one of the strain gauges disclosed in page 1, second column, lines 116-118); and
a processing circuitry to:
receive measurement from the one or more sensors (see page 2, first column, lines 2-16 which notes that a signal across the bridge is generated when the central portion 22 of each plate upon which the strain gauges are disposed bows which causes compression and accordingly is considered to be measuring one or more parameters relative to a distance between the primary and secondary devices because a relative distance change due to this compression is what is detected as such a signal);
determine an elongation value of the chain based on the received measurements (see page 2, first column, lines 2-16; the magnitude of the electrical signal generated and measured across the bridge network is considered to determine an elongation value of the chain based on the received measurements because the magnitude of such a signal is indicative of said elongation); and
transmit the elongation value to a remote computing platform for analysis, display, or control (see page 2, first column, lines 2-11 which notes that the elongation value is transmitted to a measuring instrument that is considered to be a remote computing platform such as disclosed in page 1, second column, lines 116-130; because a user or operator may then observe the values associated therewith, it is also considered to include analysis).
Austen does not explicitly teach:
an enclosure to contain one or more components, a surface of the enclosure to mate with a link to mount the system onto a chain.
However, Goldstein teaches:
an enclosure (290; see ¶ 54) that contains one or more components (¶ 54), a surface of the enclosure to mate with a link to mount a system onto a chain (¶ 55 regarding the mechanical attachment of the housing that connects the housing 290 to the chain as disclosed).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Austen to include an enclosure to contain one or more components, a surface of the enclosure to mate with a link to mount the system onto a chain because such an enclosure protects the internal components of the electronics therein, is easily mounted to a chain, and may be removed for cleaning or maintenance when necessary, such as suggested in Goldstein ¶ 54 and 55.
Austen as thus far modified by Goldstein also does not explicitly teach:
an inductive sensor within the enclosure; and
receiving measurements from the inductive sensor.
However, O’Connor teaches that inductive sensors and measurements may be received therefrom with regard to strain sensing (see ¶ 58).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Austen’s chain monitoring system to include an inductive sensor within the enclosure and receive measurements from the inductive sensor because such an inductive sensor is an art recognized means of measuring strain and in particular when measuring displacement of a metal component, such as suggested in ¶ 58 of O’Connor. Accordingly, such an inductive sensor would be useful in Austen’s chain monitoring system because inductive sensors provide a non-contacting means of measuring distance to/from a metallic object via the principle of induction.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Austen GB 2041549 A (hereafter Austen) in view of Goldstein US PG-PUB 2016/0116356 A1 (hereafter Goldstein), prior art of record as indicated on the IDS filed 29 March 2024, and O’Connor et al. US PG-PUB 2018/0238754 A1 (hereafter O’Connor), as applied to claim 12 above, and further in view of Siraky et al. US PG-PUB 2015/0226582 A1 (hereafter Siraky), prior art of record as indicated on the IDS filed 29 March 2024.
As to claim 14: Austen as modified by Goldstein and O’Connor teaches all of the limitations of the claimed invention as described above regarding claim 12, including processing circuitry (the circuitry connected to the measuring instrument as disclosed in Austen page 1, second column , lines 116-130), but does not explicitly teach:
wherein the processing circuitry is further configured to:
determine a maximum threshold elongation value;
calculate a threshold operating elongation value below the maximum threshold value;
compare the elongation value to the threshold operating elongation value;
determine an elongation status for the chain based on the comparison.
However, Siraky teaches:
determining a maximum threshold elongation value (¶ 22 regarding the maximum allowed distance between teeth of the first and second sensors as disclosed);
calculating a threshold operating elongation value below the maximum threshold value (¶ 22 regarding the several amounts that may be associated with the chain teeth distances - the chosen value is used in conjunction with comparison to a measured value such as noted later in ¶ 63 and is thus considered to be calculating a threshold operating elongation value below the maximum threshold value);
comparing the elongation value to the threshold operating elongation value (¶ 63 and 67 regarding the comparison of the elongation value measured to the threshold operating elongation value);
determine an elongation status for the chain based on the comparison (¶ 67 regarding the determination of chain wear depending upon the elongation).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify Austen as modified by Goldstein and O’Connor such that the processing circuitry is further configured to: determine a maximum threshold elongation value; calculate a threshold operating elongation value below the maximum threshold value; compare the elongation value to the threshold operating elongation value; and determine an elongation status for the chain based on the comparison because such a design allows a user to be warned about erroneous operation of a chain or prevent operation of the chain in a worn state and can be implemented into existing plants that utilize such chains such as suggested in Siraky ¶ 67 and 68.
As to claim 15: Austen as modified by Goldstein, O’Connor, and Siraky teaches wherein the processing circuitry is further configured to:
receive measurements from the one or more sensors (see ¶ 62 of Siraky regarding the measurement of magnetic flux received by the sensors);
calculate a change or a rate of change of one or more variables measured by the one or more sensors (see ¶ 63 of Siraky regarding the differences measured by the sensors as disclosed);
compare the calculated change or rate of change to a list of threshold changes or rates of change of the one or more variables (see ¶ 67 of Siraky regarding the comparison of a measured value to a stored value of the one or more variables measured); and
generate an alert in response to the elongation status exceeding a threshold operating elongation value (see ¶ 67 of Siraky regarding the notification to a user in the event of a calculated change exceeding a stored amount via the emergency indicator 18 as disclosed).
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.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 of Monty et al. U.S. Patent No. 11,976,999 B2 (hereafter, “the 999 patent”) in view of O’Connor et al. US PG-PUB 2018/0238754 A1 (hereafter O’Connor). Although the claims at issue are not identical, they are not patentably distinct from each other as indicated in the table below. Differences between the claims are highlighted in bold and underlined with an explanation of why the claims are considered coextensive in scope for any such differences.
Claims of the 999 patent and/or O’Connor et al. US PG-PUB 2018/0238754 A1
Claims of the instant application
10. A chain monitoring system comprises:
an enclosure to contain one or more components including a permanent magnet, a surface of the enclosure to mate with a link to mount the system onto a chain;
one or more magnetic sensors to measure one or more parameters corresponding to chain elongation, wherein the one or more magnetic sensors are configured to measure a magnetic field strength or a change in magnetic field strength between the permanent magnet and the one or more magnetic sensors;
and a processing circuitry to: receive measurements from the one or more magnetic sensors;
determine an elongation value of the chain based on the received measurements;
and transmit the elongation value to a remote computing platform for analysis, display, or control.
The 999 patent does not explicitly teach:
An inductive sensor within the enclosure and receiving measurements from the inductive sensor.
However, O’Connor teaches that inductive sensors and measurements may be received therefrom with regard to strain sensing (see ¶ 58).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the 999 patent such that the chain monitoring system utilizes an inductive sensor and receives measurements therefrom because such an inductive sensor is an art recognized means of measuring strain and in particular when measuring displacement of a metal component, such as suggested in ¶ 58 of O’Connor. Accordingly, such an inductive sensor would be useful in Austen’s chain monitoring system because inductive sensors provide a non-contacting means of measuring distance to/from a metallic object via the principle of induction.
12. A chain monitoring system comprises:
an enclosure to contain one or more components, a surface of the enclosure to mate with a link to mount the system onto a chain;
one or more sensors to measure one or more parameters corresponding to chain elongation; (the instant application is missing limitations regarding the magnetic sensors and therefore is broader than the corresponding limitation in the 999 patent’s claim 10; accordingly, the claim scopes are considered to be coextensive)
and a processing circuitry to: receive measurements from the one or more sensors;
determine an elongation value of the chain based on the received measurements; and
transmit the elongation value to a remote computing platform for analysis, display, or control.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M ROYSTON whose telephone number is (571)270-7215. The examiner can normally be reached M-F 8-4:30 E.S.T..
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/JOHN M ROYSTON/Examiner, Art Unit 2855
/PETER J MACCHIAROLO/Supervisory Patent Examiner, Art Unit 2855