Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The disclosure is objected to because of the following informalities: On page 1, lines 9-10, the status of the parent application needs to be updated. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 11-19 are rejected under 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 Applicant regards as the invention. In claim 11, lines 1-2, “configured for selectively connecting configured” lacks proper syntax and renders the claimed scope somewhat difficult to interpret.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, and 6-9 of U.S. Patent No. 9,381,099 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant limitations are clearly set forth in said claims of the patent.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,011,375 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the present features are found in the patent claims.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 12, and 16 of U.S. Patent No. 9,520,720 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the current elements exist in or would have been obvious or innate from said claims of the patent, such as the master controller communicating with the “built-in circuits” (patent claim 3) for determining “the external battery remaining capacity” (patent claims 12 and 16). The device being a medical or prosthetic device would have been obvious to the ordinary practitioner at the effective date of Applicant’s invention because redundant or backup power sources and minimal internal device dimensions are often critical in the medical and prosthetic arts.
Claims 11, 13, and 15-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,139,655 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the features are described in or would have been obvious from patent claim 1. The device being a medical or prosthetic device would have been obvious for reasons provided above.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chen, US 2009/0265570 A1, which discloses a system for powering a device 10, the system comprising an internal battery 40 located within and configured for powering device 10 (Figure 3; paragraphs 0009, 0015, 0027, 0029, 0037) and an external battery 50 outside device 10 and configured for powering device 10 (paragraphs 0009, 0030, 0037) and comprising circuits configured for measuring a state-of-charge (lower right corner of Figure 3; paragraphs 0015-0016, 0030). Device 10 being in the form of a medical device or a prosthetic device would have been obvious because minimal size or weight and “extended battery operation of a portable electronic device” (paragraphs 0004, 0009-0011) are often critical or beneficial to the prosthetics arts; moreover, portable notebook computers and similar devices (paragraphs 0002, 0004, 0025) may function as medical devices by downloading, inputting, and/or outputting medical data.
Regarding claims 2-3, 7, 11-12, and 16, master controller 60 communicates with the circuits, determines battery capacities, and selectively connects only one of internal battery 40 and external battery 50 for powering device 10 (Figure 3; paragraphs 0011, 0037). Regarding claims 4 and 13, an additional external battery, such as a solar or automobile battery, having circuits for measuring a state-of-charge (similar to those of external battery 50) and being connected to input terminal 21 would have been obvious in order to further enhance portability (paragraph 0001) and to accommodate road trips, camping, and the like. Regarding claims 5-6 and 14-15, an external charger is used for both external battery 50 and internal battery 40 (paragraphs 0030, 0034-0035, 0037), and the external charger involving an AC adapter would have been obvious from the readily available electric outlets in many places. Regarding claims 8 and 17, determining whether to charge internal battery 40 with an AC adapter or the additional external battery by detecting the presence of either would have been obvious in order to adjust the power input and charging characteristics as appropriate. Regarding claims 9 and 18, a threshold for “full charge” (paragraphs 0029, 0031, 0035, 0037) would have been obvious in order to achieve “full charge” within a practical amount of time and to help avoid overcharging.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David H. Willse, whose telephone number is 571-272-4762. The examiner can normally be reached on Monday through Thursday. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Melanie Tyson can be reached at telephone number 571-272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID H WILLSE/ Primary Examiner, Art Unit 3774
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