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
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-47 of U.S. Patent No. 12066677. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the present claims are found in the claims of the subject patent.
Claim Objections
Claims 12 and 14 are objected to because of the following informalities:
In claims 12 and 14 “a controller” should be “the controller” as it was assumed this was meant to be the same controller recited in claim 1.
Appropriate correction is required.
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.
Claim 17 is 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. The scope of claim 17 is unclear. It is unclear if the method is using the entire assembly of claim 1, or if the method is meant to only pertain to the payload of claim 1. It appears that the first portion of the method claim should be “A method of using the assembly of claim 1,” as this is what was meant to be claimed per the examiner’s best understanding of the claimed invention.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1,2,4,5,7-10,17 and 18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Schumacher(US4976163).
[claim 1] Schumacher teaches an assembly(fig 4), comprising: a payload(42); at least one rotational actuator(51,70,75); and a rotation sensor(50) coupled to detect a rotation of the payload; wherein a controller(computer fig 3, C3 L28-43) is coupled to the rotation sensor and an associated rotational actuator and operable to adjust the rotational actuator based on the rotation of the payload detected by the rotation sensor, and wherein the rotation sensor is an inertial measurement unit(C3 L49-50) spaced away from the rotational actuator(fig 4).
[claim 2] further comprising: a first member(72) operable to attach to the payload; and a second member(41) coupled to support the first member rotatably around an axis of rotation(44).
[claim 4] wherein at least one of the first member and the second member includes a flywheel(71,52).
[claim 5] wherein the flywheel is coupled to the rotational actuator that is operable to rotate the flywheel(fig 4).
[claim 7] further comprising: a rotational support(41) including a gimbal, hinge or a ball joint that defines a rotational axis(44).
[claim 8] wherein the rotational actuator(70) is located above the rotational support(fig 4).
[claim 9] wherein the rotational actuator(75) is located below the rotational support(fig 4).
[claim 10] wherein the rotational actuator(70) is located between the rotational support and the payload(fig 4).
[claim 17] Schumacher further teaches a method comprising detecting a rotation of the payload(42) of claim 1 with the rotation sensor(50) and based on the detected rotation of the payload, adjusting the rotational actuator(fig 3, C3 L24-43).
[claim 18] wherein the inertial measurement unit is spaced radially away from a rotational axis(44) of the rotational actuator and is outside a housing of the rotational actuator(fig 4).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 3,6,11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Schumacher as applied to claims 1,2 and 4 above, and further in view of Loewenthal(US5751078).
[claim 3,11] Schumacher teaches an apparatus as detailed above, and further teaches the apparatus is for supporting instruments in space applications(C1 L9-19). However Schumacher may not teach that the second member is coupled to a robot or robot arm that can control a position of the payload. Loewenthal teaches a similar assembly, and further teaches that the assembly can be coupled to a robot or robot arm that can control a position of the payload(fig 7 of Loewenthal). It would have been obvious to one of ordinary skill in the art as of the effective filing date to use the assembly of Schumacher coupled to a robot or robot arm, as this would merely be using known elements for their known functions.
[claim 6] Schumacher teaches an apparatus as detailed above, however Schumacher may not teach that the flywheel is coupled to a brake that is operable to inhibit rotation of the flywheel. As noted above, Loewenthal teaches a similar apparatus, and further teaches the use of brakes operable to inhibit rotation of flywheels(C8 L39-48). It would have been obvious to one of ordinary skill in the art as of the effective filing date to use brakes, such as taught by Loewenthal, to further control the motion of the flywheels of Schumacher, as this would provide greater control over the motion of the flywheels in the apparatus.
[claim 12] when arranged as above, the assembly further comprising: a first member(72) operable to attach to the payload; a second member(41) coupled to support the first member rotatably around an axis of rotation(44), wherein at least one of the first member and the second member includes a flywheel(71,52); and a controller operable to adjust the flywheel to reduce a payload vibration(ABS) in response to translating by the robot arm.
[claim 13] Schumacher teaches an assembly as detailed above and discloses the assembly is used in space applications(C1 L9-12), Schumacher however may not teach that the assembly further comprising a drone that can control a position of the payload. As noted above, Loewenthal teaches a similar assembly, where when the assembly is attached to aircraft(fig 8, C9 L65-67). Loewenthal however does not specifically state that the aircraft could be a drone. It would have been obvious to one of ordinary skill in the art as of the effective filing date to use the assembly Schumacher with any known aircraft, such as a drone, as a matter of obvious design choice, as one of ordinary skill in the art would be able to select from known aircraft to make use of the assembly.
[claim 14] when arranged as above, further comprising: a first member(72) operable to attach to the payload; and a second member(41) coupled to support the first member rotatably around an axis of rotation(44), wherein at least one of the first member and the second member includes a flywheel(71,52); and a controller operable to adjust the flywheel to reduce a payload vibration(ABS) in response to translating by the drone.
[claim 15,16] Schumacher teaches an assembly as detailed above, wherein the payload is an optical element, such as a telescope(C1 L30-35) used in a space application. Schumacher however may not teach that the payload includes a portion of an optical beam system, or an optical beam source, or an optical element that is operable to receive and direct an optical beam to a target. Loewenthal teaches a similar assembly as detailed above for optical elements in a space application(Loewenthal C1 L6-10) and further teaches that the supported payload can be a portion of an optical beam system(C5 L4-5), including an optical element operable to receive and direct an optical beam to a target(laser instrument at C4 L4-5). It would have been obvious to one of ordinary skill in the art as of the effective filing date to use the assembly of Schumacher with an optical element including an optical element operable to receive and direct an optical beam to a target, as taught by Loewenthal, as this would merely be using known elements for their known functions.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-18 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY H DUCKWORTH whose telephone number is (571)272-2304. The examiner can normally be reached M-F 9:30-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terrell McKinnon can be reached at 5712724979. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY DUCKWORTH/Primary Examiner, Art Unit 3632