DETAILED ACTION
Notice to Applicant
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-20 are pending.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 4-5 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Per claim 4, the limitation “a sensor sensor” lacks clarity. Appropriate correction is required. For the purpose of examination, said limitation is interpreted as implying “a sensor.”
Per claim 5, the limitation “the failsafe position” lacks sufficient antecedent basis. Appropriate correction is required. For the purpose of examination, said limitation is interpreted as implying “the failsafe predetermined position” which is described in claim 1.
Claim Rejections - Nonstatutory Double Patenting
5. 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.
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6. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,870,280. Although the claims at issue are not identical, they are not patentably distinct from each other.
The following table summarizes the correspondence between the limitations of claim 1 of U.S. Patent No. 11,870,280 and the limitations of claim 1 of the present application.
Claim 1 of U.S. Patent No. 11,870,280
Claim 1 of the Present Application
A method of determining a lifetime parameter of a capacitor in a failsafe device, the method comprising:
positioning an actuator of the failsafe device in an initial predetermined physical position as detected by the failsafe device;
measuring an initial voltage across the capacitor at the initial predetermined physical position;
positioning the actuator in a failsafe predetermined physical position as detected by the failsafe device;
measuring a final voltage across the capacitor at the failsafe predetermined physical position;
determining an amount of energy required to return the actuator of the failsafe device from the initial predetermined physical position to the failsafe predetermined physical position based on the initial voltage and the final voltage;
measuring an effective capacitance of the capacitor; and
comparing the amount of energy to the effective capacitance to determine the lifetime parameter of the capacitor.
A method of determining a lifetime parameter of a capacitor in a failsafe device, the method comprising:
positioning an actuator of the failsafe device in an initial predetermined position;
measuring an initial voltage across the capacitor at the initial predetermined position;
positioning the actuator in a failsafe predetermined position;
measuring a final voltage across the capacitor at the failsafe predetermined position;
determining an amount of energy required to return the actuator of the failsafe device from the initial predetermined position to the failsafe predetermined position based on the initial voltage and the final voltage;
measuring an effective capacitance of the capacitor; and
comparing the amount of energy to the effective capacitance to determine the
lifetime parameter of the capacitor.
Therefore, the method of claim 1 of U.S. Patent No. 11,870,280 teaches the method of claim 1 of the present application.
7. Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,870,280. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 2 of U.S. Patent No. 11,870,280 is directed to the method of claim 1, further comprising: determining, based on the effective capacitance, a charge voltage for the capacitor; and charging the capacitor using the charge voltage. Therefore, the method of claim 2 of U.S. Patent No. 11,870,280 teaches the method of claim 2 of the present application.
8. Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,870,280. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 3 of U.S. Patent No. 11,870,280 is directed to the method of claim 1, wherein the lifetime parameter is a length of time associated with a remaining operational period of the capacitor. Therefore, the method of claim 3 of U.S. Patent No. 11,870,280 teaches the method of claim 3 of the present application.
9. Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,870,280 in view of Strauss et al. (US 5,744,923 – hereinafter “Strauss”).
Per claim 4, claim 1 of U.S. Patent No. 11,870,280 does not explicitly teach the method of claim 1, wherein the initial predetermined position is determined by a sensor or a motor condition. In contrast, Strauss teaches a failsafe system utilizing energy from a capacitor to drive an actuator to a failsafe end position wherein the mechanical position of the actuator is sensed by a sensor. A sensed position of the actuator is used to determine how the actuator should be controlled to reach the failsafe end position (Fig. 11; col. 8, lines 23-42 and col. 16, lines 18-64).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 1 of U.S. Patent No. 11,870,280 such that the initial predetermined position is determined by a sensor. One of ordinary skill would make such a modification for the purpose of controlling a position of an actuator (Strauss; col. 16, lines 18-64).
10. Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,870,280. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 4 of U.S. Patent No. 11,870,280 is directed to the method of claim 1, wherein the lifetime parameter is an amount of time required to charge the capacitor to a level associated with the amount of energy required to return the failsafe device to the failsafe physical position. Therefore, the method of claim 4 of U.S. Patent No. 11,870,280 teaches the method of claim 5 of the present application.
11. Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,870,280 in view of Kucera et al. (US 2011/0270544 – hereinafter “Kucera”).
Per claim 6, claim 1 of U.S. Patent No. 11,870,280 does not explicitly teach the method of claim 1, further comprising: if the lifetime of the capacitor is determined to be in a relationship with a threshold, moving the actuator to the failsafe position, and preventing movement of the actuator. In contrast, Kucera teaches an actuator that is configured to be driven by a storage device, such as a capacitor, wherein, if the health of the storage device is detected as being insufficient to further position the actuator reliably, a microcontroller may decide to leave the actuator in a desirable position and indicate the failure to the user. Furthermore, a service switch is provided that allows a user to disable automatic actuator control and manually move the actuator to a desired position (Fig. 1; ¶13, 16 and 27).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of claim 1 of U.S. Patent No. 11,870,280 such that, if the lifetime of the capacitor is determined to be in a relationship with a threshold, the actuator is moved to the failsafe position, and movement of the actuator is prevented. One of ordinary skill would make such a modification because a capacitor having insufficient health may not be able to drive an actuator to a desired position (Kucera; ¶13, 16, and 27).
12. Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,870,280. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 6 of U.S. Patent No. 11,870,280 is directed to the method of claim 1, the method further comprising sending the lifetime parameter to a building management system (BMS), wherein the lifetime parameter indicates that the capacitor should be replaced. Therefore, the method of claim 6 of U.S. Patent No. 11,870,280 teaches the method of claim 7 of the present application.
Allowable Subject Matter
13. Claims 8-20 are directed to allowable subject matter.
Per claim 8, the prior art of record is silent on determining an amount of energy for returning the actuator from an initial position to a failsafe position; determining, based on an effective capacitance or threshold voltage, whether the capacitor stores the energy for returning the actuator from the initial position to the failsafe position; and if the capacitor does not store the energy required for returning the actuator from the initial position to the failsafe position, (1) moving the actuator to the failsafe position and preventing movement of the actuator or (2) allowing the actuator to move only to a position where the capacitor has enough energy to return the actuator to the failsafe position. Claims 9-14 are consequently allowable due to their dependence on claim 8.
Per claim 15, the prior art of record is silent on determining an amount of energy required to return the actuator from an initial position to a failsafe position based on a first voltage and a second voltage; determining, based on an effective capacitance or threshold voltage, whether the capacitor stores energy required to return the actuator from the initial position to the failsafe position; and if the capacitor does not store energy required to return the actuator from the initial position to the failsafe position, (1) move the actuator to the failsafe position and preventing movement of the actuator or (2) allow the actuator to move only to a position where the capacitor has enough energy to perform a failsafe operation. Claims 16-20 are consequently allowable due to their dependence on claim 15.
Pertinent Prior Art
14. Kucera et al.: US 2011/0270544
This document discloses an actuator that is configured to be driven by a storage device, such as a capacitor, wherein, if the health of the storage device is detected as being insufficient to further position the actuator reliably, a microcontroller may decide to leave the actuator in a desirable position and indicate the failure to the user. Furthermore, a service switch is provided that allows a user to disable automatic actuator control and manually move the actuator to a desired position (Fig. 1; ¶13, 16 and 27).
However, this document is silent on, in particular, determining an amount of energy for returning the actuator from an initial position to a failsafe position, as required by independent claim 8, and determining an amount of energy required to return the actuator from an initial position to a failsafe position based on a first voltage and a second voltage, as required by independent claim 15.
Claim Objections
15. Claim 8 is objected to due to the following informality.
Claim 8 does not terminate with a period.
Conclusion
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAS A. SANGHERA whose telephone number is (571)272-4787. The examiner can normally be reached M-Th, alt. Fri, 8-5 EST.
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/JAS A SANGHERA/Primary Examiner, Art Unit 2852