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 .
Response to Arguments
Applicant's arguments filed February 13, 2023 have been fully considered but they are not persuasive. The independent claims have been amended to include conventional and known packet exchanges. As indicated in the Applicant’s specification (par 44-45), the configuration packet and acknowledgement are sent in accordance with the WPC standard. The amended limitations are directed to this known standard and do not overcome the double patenting rejection. Park discloses this packet exchange (par 70, 126) – the Applicant’s conclusion that “are not seen to be obvious based on [] Park” is not persuasive (Remarks, page 5).
The Applicant has not filed a terminal disclaimer and, therefore, the claims remain rejected.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The pending claims are directed to the power transmitting apparatus that confirms its NFC detection ability and completion. The title should be updated to reflect this functionality.
Claim Objections
Claims 4 and 8 objected to because of they do not further limit their respective independent claims. A §112(d) rejection should have been presented, but was mistakenly omitted and treated as being broad. A §112(d) rejection is not included now solely to maintain finality. The Applicant should address the interpretation that the claim is directed to functionality that occurs in the unclaimed receiver. The claims do not include any narrowing structure or functionality for the transmitter itself.
The claim language is descriptive of what happens after the transmitter information “are sent”. Lines 1-4 repeat the information items (not further limiting to the independent claims) and lines 5-7 recite intended functionality within the receiver.
Appropriate correction is required.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,088,120 in view of Park (US 2019/0305826).
Regarding claim 1, with the exception of the last two wherein clause, all limitations have been previously patented in parent patent claim 1. Pending claim 1 (not including the wherein clause) recites fewer limitations than what the Applicant has already received a patent for. Namely, the sending unit “when” clause omits when “the detection processing is supported by the power transmitting apparatus and”.
The wherein clauses is taught by Park (par 70, 126). Receiving a configuration packet and responding with an acknowledgement is ubiquitous and common in wireless power transfer systems, as admitted by the Applicant (specification par 44-45).
Pending claims 2-3 are a verbatim copy of patented claims 2-3, respectively.
Pending claim 4 is directed to a description of functionality that would be carried out by a receiver – but the receiver isn’t claimed. Thus, descriptions of what would happen to the receiver once it receives the transmitter’s information does not further limit the transmitter itself. Thus, claim 4 is unpatentable over parent claim 1 in view of Park as well.
Regarding claim 5, all of the method steps have been previously patented in parent patent claim 4. Pending claim 5 (not including the first receiving and first sending limitations) recites fewer limitations than what the Applicant has already received a patent for. Namely, the sending “when” clause omits when “the detection processing is supported by the power transmitting apparatus and”. The receiving of the configuration packet and sending of the acknowledgement response are taught by Park, as noted above.
Pending claims 6-7 are a verbatim copy of patented claims 5-6, respectively.
Pending claim 8 is directed to a description of functionality that would be carried out by an unclaimed receiver. Thus, descriptions of what would happen to the receiver once it receives the transmitter’s information does not further limit the transmitter itself. Thus, claim 8 is unpatentable over parent claim 4 as well.
Regarding claim 9, the claim repeats the method steps of patented claim 7. As discussed above, Park discloses the configuration packet reception and acknowledgment response.
Alternatively, claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,088,120 in view of Park (“Park II”; US 2017/0207663).
Should it be the Applicant’s contention that the amendment to claims 1, 5 and 9 are intended to introduce new subject matter that is not obvious over Park ‘826, this alternative double patenting rejection is presented to the Park II reference that also discloses the configuration packet and acknowledgement response.
Parent patent ‘120 discloses the limitations of claims 1-9, except for the reception of the configuration packet and the acknowledgement response. Park II discloses a wireless power transmitter, corresponding method and storage medium, that receives a configuration packet and responds with an acknowledgement (par 357). As noted above, this packet and response are common and conventional in wireless power transmission systems.
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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/ADI AMRANY/Primary Examiner, Art Unit 2836