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 .
Status of Claims
Claims 1-20 (original) are pending for prosecution on the merits. Rejection(s) appear below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/17/2024, 1/7/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 5 and 6 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 6 and 7 of prior U.S. Patent No. 12003121.
Claim 1 of the instant application is rejected as claiming the same invention as claims 1, 6 and 7.
Claim 5 of the instant application is rejected as claiming the same invention as claims 1, 5 and 6.
Claim 6 of the instant application is rejected as claiming the same invention as claims 1, 6 and 7.
This is a statutory double patenting rejection.
Claim Rejections - 35 USC § 101
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 13, 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14, 15 and 17 of U.S. Patent No. 12003121. Although the claims at issue are not identical, they are not patentably distinct from each other because 14, 15 and 17 are seen to be “anticipatory”.
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.
Claim(s) 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Partovi
et al. US 8169185.
Regarding claim 17, Partovi discloses a wireless power transmitting device [e.g., Fig. 14, pad 320; Fig. 15, pad 330] configured to transmit wireless power to an electronic device having an inductive coil [receiver coil, col. 23 lines 42-47] and at least one identifying structure, comprising:
a detection system that detects the at least one identifying structure [magnet, capacitance, RFID] by interaction with a magnetic field generated by the wireless power transmitting device [col. 24 lines 50-57, col. 25 lines 18-23]; and
circuitry that transmits wireless power to charge a battery in the electronic device in response to the detection system detecting the at least one identifying structure [col. 24 lines
40-45, lines 58-67].
Regarding claim 18, Partovi discloses the wireless power transmitting device of claim 17, wherein the detection system further identifies the electronic device based on a location of the at least one identifying structure in the electronic device [col. 25 lines 18-23].
Regarding claim 19, Partovi discloses the wireless power transmitting device of claim 17, wherein the at least one identifying structure comprises at least one resonant structure [col. 24 lines 50-57 capacitance, due to use of a capacitor].
Regarding claim 20, Partovi discloses the wireless power transmitting device of claim 17, wherein the magnetic field generated by the wireless power transmitting device is generated using pulse signals [col. 31 lines 44-49].
Allowable Subject Matter
Claims 2-4, 7-12, 15 and 16 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 RICHARD V MURALIDAR whose telephone number is (571)272- 8933. The examiner can normally be reached M - W 9:30 am to 6:30 PM.
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unsuccessful, the examiner’s supervisor, Drew Dunn can be contacted at 571-272-2312. The fax phone number for the organization where this application or proceeding is assigned is 571-273- 8300.
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RICHARD V. MURALIDAR
Primary Examiner Art Unit 2859
/RICHARD V MURALIDAR/
Primary Examiner, Art Unit 2859
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