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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7-2-2026 has been entered.
Claims 19, 22, and 24 were amended. New Claim 25 was presented. Claims 20-21 and 23 were cancelled. Claims 19, 22 and 24-25 are pending and examined in this action.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 19 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In re Claim 19, “less than 53 A-weighted decibels” was interpreted as a range of 0 to 53 A weighted decibels.” Applicants six examples of 46.5, 47.4, 46.2, 46.7, 45.6, and 45.6 do not provide support for a range of 0-53A weighted decibels. See MPEP 2163.05, III. The claimed range includes decibels outside the disclosed embodiments, i.e. decibels below 45.5 weighed decibels and above 47.4 weighted decibels. As such, “less than 53 A-weighted decibels” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Dependent Claims 22 and 24 are not subject to this rejection because they claim narrower ranges that do have support in Applicant’s disclosure.
Claim Rejections - 35 USC § 103
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.
Claims 19, 22, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0257147 to Kanbar in view of US 2002 0158409 to Arakawa, US 5,965,851 to Herreman, and US 4,672,250 to Seitz or US 5,235,227 to Fazekas.
In re Claim 19, Kanbar teaches an electronic dispenser comprising:
a housing (see Kanbar, Fig. 3, #16);
a feed roller rotatably mounted within the housing (see Kanbar, Fig. 3/3A, #30/20/26);
a motor operable to drive rotation of the feed roller (see Kanbar, Fig. 3, #42), and wherein the motor is at least partially within the feed roller (see Kanbar, Fig. 3A/3, #42 is in #30/28);
a motor housing (see Fig. 3, #30) connected to the motor to support the motor within the feed roller (see Fig. 3), wherein the motor housing comprises a stepped portion with a surface (see Fig. 4, #46).
Kanbar is silent as to
the electronic dispenser further comprises one or more bearings, wherein the one or more bearings contact the surface of the stepped portion and the housing;
a seal device position between the motor housing and the motor to dampen vibrations caused by the operation of the motor; and
wherein actuation of the motor results in a noise level, external to the hosing, of less than 53 A-weighted decibels based at least in part on the motor being within the feed roller and the seal device.
However, Arakawa teaches that it is known in the art of rollers, to provide a bearing at an output shaft (see Fig. 3, #15). It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add a bearing to the output shaft of Kanbar. Doing so would reduce the friction created during rotation and would make the device “smoother” with less friction.
Additionally, Herreman teaches that it is known in the art to provide devices with electric motors with insulation in order to reduce the level of sound emitting from the machines (see Herreman, Col. 1, ll. 22-33). Herreman teaches the STC for the acoustical insulation system of the invention is preferably within the range of from about 10 to about 50 decibels, and more preferably within the range of from about 20 to about 40 decibels (see Herreman, Col. 3, ll. 34-47).
In the same field of invention, devices with motors that create noise, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to insulate the structures surrounding the motor, so that the decibels produced range between 10-50 or preverbally between 20-40 decibels. Doing so reduces the excessive noise which can be annoying to the users of the device (see Herreman, Col. 1, ll. 22-33).
Additionally, both Seitz and Fazekas teach that it is known in the electric motor art to use a an o-ring or seal to reduce the noise of the motor (see Seitz, Col. 1, ll. 64 – Col. 2, ll. 2, which states “Thus, in such high speed, precision motors, the bearings are often a source of unacceptable noise. Spring loading, precision construction and the O-ring which may dampen noise have been used as necessary to minimize noise. However, the bearings which are commercially available and which the inventor has tested, create a noticeable level of noise,” and Fazekas, Col 4, ll. 22-30 which states “the present invention does not use a layer or sheet of elastic material to provide for the noise and vibration insulation, but uses a plurality of O-rings to minimize the area of contact between rotating parts. In contrast to supplying a contact surface over the entire surface area of the insulation layer, an O-ring establishes more of a point contact, minimizing the area of contact through which vibration and/or noise may be produced or propagated.”).
It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to utilize o-ring type seals to reduce the noise created by the motor, as taught by Seitz and Fazekas. Doing so is a known constructure utilize to reduce the motor noise created by an electric motor (see Seitz, Col. 1, ll. 64 – Col. 2, ll. 2 and Fazekas, Col 4, ll. 22-30).
In re Claim 22, modified Kanbar in re Claim 19, teaches adding insulation such that the noise level is between 45.6 and 53 A-weighted decibels (see Herreman, Col. 3, ll. 34-47).
In re Claim 24, modified Kanbar in re Claim 19, teaches adding insulation such that the noise level is between 45.6 and 47.4 A-weighted decibels (see Herreman, Col. 3, ll. 34-47).
In re Claim 25, Kanbar teaches an electronic dispenser comprising:
a housing (see Kanbar, Fig. 3, #16);
a feed roller rotatably mounted within the housing (see Kanbar, Fig. 3/3A, #30/20/26);
a motor operable to drive rotation of the feed roller (see Kanbar, Fig. 3, #42), and wherein the motor is at least partially within the feed roller (see Kanbar, Fig. 3A/3, #42 is in #30/28);
a motor housing (see Fig. 3, #30) connected to the motor to support the motor within the feed roller (see Fig. 3), wherein the motor housing comprises a stepped portion with a surface (see Fig. 4, #46),
Kanbar is silent as to
the electronic dispenser further comprises one or more bearings, wherein the one or more bearings contact the surface of the stepped portion and the housing;
a seal device positioned between the motor housing and the motor to dampen vibrations caused by operation of the motor; and
wherein actuation of the motor results in a noise level, external to the housing, of less between 45.6 and 53 A-weighted decibels based at least in part on the motor being within the feed roller and the seal device.
However, Arakawa teaches that it is known in the art of rollers, to provide a bearing at an output shaft (see Fig. 3, #15). It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add a bearing to the output shaft of Kanbar. Doing so would reduce the friction created during rotation and would make the device “smoother” with less friction.
Additionally, Herreman teaches that it is known in the art to provide devices with electric motors with insulation in order to reduce the level of sound emitting from the machines (see Herreman, Col. 1, ll. 22-33). Herreman teaches the STC for the acoustical insulation system of the invention is preferably within the range of from about 10 to about 50 decibels (see Herreman, Col. 3, ll. 34-47).
In the same field of invention, devices with motors that create noise, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date to insulate the structures surrounding the motor, so that the decibels produced range between 10-50. Doing so reduces the excessive noise which can be annoying to the users of the device (see Herreman, Col. 1, ll. 22-33).
Additionally, both Seitz and Fazekas teach that it is known in the electric motor art to use a an o-ring or seal to reduce the noise of the motor (see Seitz, Col. 1, ll. 64 – Col. 2, ll. 2, which states “Thus, in such high speed, precision motors, the bearings are often a source of unacceptable noise. Spring loading, precision construction and the O-ring which may dampen noise have been used as necessary to minimize noise. However, the bearings which are commercially available and which the inventor has tested, create a noticeable level of noise,” and Fazekas, Col 4, ll. 22-30 which states “the present invention does not use a layer or sheet of elastic material to provide for the noise and vibration insulation, but uses a plurality of O-rings to minimize the area of contact between rotating parts. In contrast to supplying a contact surface over the entire surface area of the insulation layer, an O-ring establishes more of a point contact, minimizing the area of contact through which vibration and/or noise may be produced or propagated.”).
It would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to utilize o-ring type seals to reduce the noise created by the motor, as taught by Seitz and Fazekas. Doing so is a known constructure utilize to reduce the motor noise created by an electric motor (see Seitz, Col. 1, ll. 64 – Col. 2, ll. 2 and Fazekas, Col 4, ll. 22-30).
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 19, 22 and 24-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,029,355. Although the claims at issue are not identical, they are not patentably distinct from each other because
In re Claim 19, U.S. Patent No. 12,029,355 Claim 1 claims an electronic dispenser comprising: a housing; a feed roller rotatably mounted within the housing; a motor operable to drive rotation of the feed roller, and wherein the motor is at least partially within the feed roller (see Col. 18, ll. 5-27); a motor housing connected to the motor to support the motor within the feed roller, wherein the motor housing comprises a stepped portion with a surface (see Col. 18, ll. 17-28), a seal device positioned between the motor housing and the motor to dampen vibrations caused by operation of the motor (see Col. 18, ll. 28-31); and the electronic dispenser further comprises one or more bearings, wherein the one or more bearings contact the surface of the stepped portion and the housing (see Col. 18, ll. 15-33); and wherein actuation of the motor results in a noise level, external to the housing, of less than 53 A-weighted decibels (see Col. 18, ll. 32-37) based at least in part on the motor being within the feed roller and the seal device (see Col. 18, ll. 28-31 and Col. 18, ll. 32-36).
In re Claim 22, U.S. Patent No. 12,029,355 claims wherein the noise level is between 45.6 and 53 A-weighted decibels s – see Claim 4 of U.S. Patent No. 12,029,355.
In re Claim 24, U.S. Patent No. 12,029,355 claims wherein the noise level is between 45.6 and 47.4 A-weighted decibels – see Claim 6 of U.S. Patent No. 12,029,355.
In re Claim 25, U.S. Patent No. 12,029,355 claims. (New) An electronic dispenser comprising: a housing; a feed roller rotatably mounted within the housing; a motor operable to drive rotation of the feed roller, and wherein the motor is at least partially within the feed roller(see Col. 18, ll. 5-27); a motor housing connected to the motor to support the motor within the feed roller, wherein the motor housing comprises a stepped portion with a surface (see Col. 18, ll. 17-28), and the electronic dispenser further comprises one or more bearings, wherein the one or more bearings contact the surface of the stepped portion and the housing (see Col. 18, ll. 15-33); a seal device positioned between the motor housing and the motor to dampen vibrations caused by operation of the motor(see Col. 18, ll. 28-31); and wherein actuation of the motor results in a noise level, external to the housing, of less between 45.6 and 53 A-weighted decibels based at least in part on the motor being within the feed roller and the seal device(see Col. 18, ll. 32-37).
Response to Arguments
Applicant’s arguments with respect to claim(s) 19, 22 and 24 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that one of ordinary skill in the art understands that Table 1 in Applicant’s specification provides support for the claimed ranges. The Examiner agrees that Table 1 provides two embodiments with three measurements each. The Examiner disagrees that measurements of between 45.6db to 47.4 db provides support for a range of 0-53 dbs.
US 4,672,250 to Seitz or US 5,235,227 to Fazekas teaches that it is known in the art to utilize an o-ring type seal to reduce the notice of an electric motor. It would have been within the level of ordinary skill in the art, at the earlier effective filing date, to utilize o-rings to reduce the noise created by the motor.
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.
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/JONATHAN G RILEY/Primary Examiner, Art Unit 3724
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