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 .
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 16-20, 24-27, and 32 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 16-20, 24-27, and 34 of co-pending Application No. 18/719300 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. The only difference is the name given to some structural elements such as a device vs an apparatus or an elevator system vs elevator installation.
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 a 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto processed and approved immediately upon submission. For more information about e-terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-23 and 28-32 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 21-23, 28, and 31-32 of co-pending Application No. 18/719300 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between the two sets of claims and the rearrangement of limitations among all the claims. There is no difference in the invention recited in both sets of claims.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 24-32 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.
In reference to claim 24, the claim is directed to a method for measuring a force acting on a movable component of an elevator system. The body of the claim says a device is connected to the rail where the movable components is guided/moved, then the movable component is placed onto the device. In a standard elevator system, a movable component such as counterweights or cars are already installed and guided by rails, how does one place the movable component on a measuring device?
If the preamble states the method is directed to “measuring a force acting on the movable component”, what causes the need to change a tensile force transmitted to the movable component by a suspension means and how is it done? What is the relationship between a tensile force transmitted by the suspension means and the force acting on movable component, is it the same thing? The last step of recording a force value by the measuring arrangement based on a force transferred to the rail by the device, how is this step related to the method for measuring a force acting on a movable component?
Claim 24 does not include a “clear” method for “measuring” a force acting on a movable component. Mixing two different types of claims, apparatus claim 16 and method claim 24, makes the recited algorithm confusing. Applicant must rewrite claim 24 so that the claim includes a clear preamble and a body describing a sequence of steps needed to accomplish applicant’s invention of a method for measuring a force acting on a movable component of an elevator system.
In reference to claims 25-31, these claims do not recite any “steps” for “measuring” a force acting on a movable member. The claims are directed to structural components such as the type of movable components, screwing device, drive units, and load sensor of the elevator system. The rejection of claim 24, described above, questions the relationship between the tensile force transmitted by the suspension means and the force acting on the movable component; any information directed to the way the tensile force is changed seems to be irrelevant to the method for measuring the force acting on the movable component.
In reference to claim 32, it is not clear what method an elevator controller will be performing since claim 24 has been rejected for being completely unclear.
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) 16-32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bütler et al (WO-2021/084012), provided by applicant (IDS filed 9/5/24).
Claims 16 and 30, Bütler et al teaches a device for measuring force acting on an elevator system comprising: a blocking arrangement 15 adapted to connect a movable component 3 to a rail system 13; and a measuring arrangement 21 which is part of the blocking arrangement (as described in paragraph 0074 of the provided translation), wherein the movable component 3 is connected to the rail system 13 by the blocking arrangement 15 and the measuring arrangement maps a force transferred from the movable component 3 into the rail system 13 as a force value by using force transmission element 25, counter element 29, and sensor 27 (see paragraph 0074).
Claim 17, Bütler et al describes for example fixing elements 36 to be inserted within holes 35 to hold the blocking arrangement in place.
Claim 18, Bütler et al describes the fixing element having a symmetrical shape enabling the fixing element 36 to be inserted into the recesses of holes 35.
Claim 19, Bütler et al describes an elevator system comprising a movable component in the shape of either an elevator car 3 or a counterweight 8, wherein the blocking arrangement is connected to the components of the elevator system as described in fig. 2 and corresponding description.
Claim 20, Bütler et al describes the measuring force being sent to controller 9.
Claim 21, Bütler et al describes for example in fig. 3 and corresponding description different elements that are connected between the blocking arrangement 15, movable component 3, and rail system 13.
Claims 22-23, 26, 28-29, and 31, Bütler et al describes suspension means 6, wherein the movable component 3 is movable using the rail system 13 and controller 9 as well as blocking arrangement 15, wherein the different components of the blocking arrangement are described in fig. 3. The preferred tensile force for the system is considered a design choice and is not given any patentable weight.
As described above in the 35 USC 112(b) rejection, claim 24 does not recite a clear set of steps for measuring a force acting on a movable component of an elevator system. As described above in the rejection of the apparatus claims, Bütler et al teaches a device for measuring the force acting on a movable component such as elevator car 3.
Claim 25, Bütler et al teaches a movable component such an elevator car 3 or a counterweight 8.
Claim 27, Bütler et al teaches connecting movable component 3 to the device recited in claim 16.
Claim 32, Bütler et al teaches an elevator system comprising at least one counterweight 8, and elevator car 3, an elevator controller 9 which performs the method of claim 24.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art listed in the attached PTO-892 describe other systems that use a device for controlling the force acting on an elevator car.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rina I Duda whose telephone number is (571)272-2062. The examiner can normally be reached M-F 8-4 PM.
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, Eduardo Colon Santana can be reached at (571) 272-2060. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RINA I DUDA/ Primary Examiner, Art Unit 2837
