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 .
INFORMATION DISCLOSURE STATEMENT
The information disclosure statement (IDS) submitted on 07 June 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the Examiner herein.
CLAIM STATUS
Claims 1-13 were originally filed.
Claims 1-13 are currently canceled.
Claims 14-27 are new.
Claims 14-27 are currently pending and have been examined herein.
INITIAL REMARKS
Applicant is reminded that in order to be entitled to reconsideration or further examination, the Applicant or patent owner must reply to the Office action. The reply by the Applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner' s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims, be held in abeyance until allowable subject matter is indicated. The Applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
Should the Applicant believe that a telephone conference would expedite the prosecution of the instant application, Applicant is invited to call the Examiner.
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 14-15, 22-23 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,298,160. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite features of the same, substantially similar, and/or narrower scope.
CLAIM REJECTIONS - 35 USC § 112
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.
Claims 14-20 and 22-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a portion of the scope of the claimed invention, does not reasonably provide enablement for its full scope.
Specifically re claim 1, the Specification, while being enabling for the following limitations:
A method for operating a magnetic-inductive flowmeter, wherein the magnetic- inductive flowmeter includes:
a measuring tube for guiding a flowable medium;
at least two measuring electrodes for detecting a flow velocity-dependent measuring voltage induced in the medium; and
a magnetic field-generating device having a coil system with at least one coil for generating a magnetic field passing through the measuring tube,
it does not reasonably provide enablement for the full scope of these limitations:
the method comprising: determining a deviation a of a reactance of the coil system or a deviation a of a variable dependent on the reactance of the coil system from a desired value.
In other words, the Specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. More specifically, the following factors were considered by the Examiner and support the determination that Applicant’s claimed invention is not fully enabled:
(A) The breadth of the claims – the claimed invention features a largely mathematical algorithm encompassing a scope that is extremely broad. Applicant’s specific algorithm is recited in claim 21, but the breadth of claim 14 lends to a determination that it is not fully enabled for the scope of the invention, as claimed.
(C) The state of the prior art – the advanced processing algorithm disclosed leads to a determination that the state of the prior art is relatively advanced and would insinuate a high level of experimentation and disclosure needed to fully enable the scope of the claimed invention.
(F) The amount of direction provided by the inventor – applicant has only provided a specific algorithm (i.e., claim 21) that is fully enabled by the Specification. The all-encompassing “determining” step (i.e., black box algorithm merely disclosing the result), is not described in a manner sufficient to enable its full scope.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure – high level of experimentation due to the mathematical nature.
Re claims 15-20 and 22-27, Applicant recites features that do not cure the deficiencies outlined above and/or suffer from the same deficiencies. Thus, claims 15-20 and 22-27 are rejected under 35 USC 112(a).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 14 and 27 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Tschambser et al., US20190277679 (“TSCHAMBSER”).
Re claim 14, TSCHAMBSER discloses a method for operating a magnetic-inductive flowmeter, wherein the magnetic- inductive flowmeter [Fig.1 and associated text] includes:
a measuring tube for guiding a flowable medium [0045];
at least two measuring electrodes for detecting a flow velocity-dependent measuring voltage induced in the medium [0047]; and
a magnetic field-generating device having a coil system with at least one coil for generating a magnetic field passing through the measuring tube [0046],
the method comprising:
determining a deviation a of a reactance of the coil system or a deviation a of a variable dependent on the reactance of the coil system from a desired value [0064-0066]
Re claim 27, Applicant recites features encompassing the same or substantially the same scope as claim 14. Accordingly, claim 27 is rejected in the same or substantially the same manner as claim 1.
Allowable Subject Matter
Claim 21 is 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. More specifically, the closest prior art of record, TSCHAMBSER attached herein, discloses a magnetic-inductive flowmeter for determining a deviation of reactance or a deviation of a variable dependent on the reactance of the coil system from a desired value. However, TSCHAMBSER fails to disclose the particular algorithm recited in claim 21 for such determination. Accordingly, claim 21 overcomes the prior art.
RELEVANT PRIOR ART
The Examiner would like to make Applicant aware of prior art references, not relied upon in this action, but pertinent to Applicant’s disclosure. They are as follows:
US20230113277, Forster – magnetic flowmeter measuring system, including impedance and reactance measurements
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M HAMMOND III whose telephone number is 571-272-2215. The Examiner can normally be reached on Monday-Friday 0800-1700.
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, Peter Macchiarolo can be reached on 571-272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. For more information about the PAIR system, see: https://ppair-my.uspto.gov/pair/PrivatePair.
Respectfully,
/Thomas M Hammond III/Primary Examiner, GAU 2855
Prosecution Insights