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 .
This non-final Office action is in response to Applicant’s continuing patent application number 18/816,958 filed on 8/27/2024.
Currently, claims 1-20 are pending and examined.
Claims 21-43 have been cancelled.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/5/2025, 7/15/2025 and 8/27/2024 are being considered by 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 12,071,803 and over claims 1-25 of U.S. Patent No. 11,661,786. Although the claims at issue are not identical, they are not patentably distinct from each other because all structures of the instant claims are fully encompassed within the patented claims.
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) 1-7, 9-10, 13-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US No. 6,588,153 to Kowalczyk.
Re claim 1: Kowalczyk discloses a retrofit module configured for use with a door closer comprising a pinion 56, the retrofit module comprising: a case 40; an output shaft 58 rotatably mounted in the case 40, wherein the output shaft 58 is configured for rotational coupling with the pinion 56; a motor 54 mounted to the case 40, wherein the motor 54 is operable to rotate the output shaft 58 in a door-opening direction; and a control assembly 48 mounted to the case 40, wherein the control assembly 48 is configured to operate the motor 54 to drive the output shaft 58 in the door-opening direction in response to an actuating signal (Fig. 1, col. 7, lines 17-20, lines 35-40).
Re claims 2-4: further comprising a power transfer assembly operable to connect the control assembly 48 to line power, the power transfer assembly comprising a plug configured for engagement with an electrical outlet (col. 6, lines 48-59); wherein the power transfer assembly further includes an adapter (e.g. a battery, see col. 5, lines 42-45) configured to convert line power received via the electrical outlet to a lower-voltage power having a lower voltage than the line power; and wherein a voltage of the lower-voltage power is about 24 volts or less (see col. 5, line 40-52).
Re claim 5: further comprising an actuator 80, wherein the actuator 80 is mounted to the case 40 and is configured to transmit the actuating signal in response to detecting a user.
Re claim 6: wherein the motor 54 is operably connected with the output shaft 58 via a reduction gear set (col. 7, line 12).
Re claim 7: wherein the motor 54 is operably connected with the output shaft 58 via a clutch 60 that enables rotation of the output shaft 58 in a door-closing direction without back-driving the motor 54.
Re claim 9: wherein the output shaft 58 inherently includes a shaft portion and a pinion adapter (e.g. wherein two portions coupled together) removably coupled to the shaft portion; wherein the pinion adapter comprises a pinion interface configured for rotational coupling with the pinion, and an output shaft adapter rotationally coupled with the shaft portion.
Re claim 10: further comprising a wired interface (near wherein 48 points to, Fig. 1) removably mounted to the case 40; wherein the wired interface includes at least one port that is electrically connected with the control assembly 48 wherein the wired interface is mounted to the case 40.
Re claim 13: the retrofit kit further comprising a wireless communication module (Fig. 6) operable to be placed in communication with the control assembly 48 (Fig. 5).
Re claim 14: the retrofit kit further comprising an adapter plate 42 comprising a first mounting pattern (e.g. vertical mounting holes) and a second mounting pattern (e.g. horizontal mounting holes); wherein the first mounting pattern is configured to align with at least one corresponding mounting location formed in a body portion of the closer to facilitate mounting of the adapter plate 42 to the body portion of the closer; and wherein the second mounting pattern is configured to align with at least one corresponding mounting aperture formed in the case to facilitate mounting of the retrofit module to the adapter plate (Fig. 1).
Re claim 15: the retrofit kit further comprising an actuator 80; wherein the actuator 80 is configured to transmit the actuating signal in response to detecting a user.
Re claim 16: wherein the actuator 80 is configured to detect the user without being touched by the user.
Re claim 17: the retrofit kit further comprising an override switch (Fig. 6) operable to be connected with the control assembly 48, the override switch having an on state 86 and an off state 84; wherein, with the override switch connected to the control assembly 48 and the override switch in the on state 86, operation of the retrofit module is enabled; and wherein, with the override switch connected to the control assembly 48 and the override switch in the off state 84, operation of the retrofit module is disabled.
Re claim 18: Kowalczyk discloses a retrofit module configured for use with a door closer comprising a pinion having a pinion geometry, the retrofit module comprising: a case 40; a shaft 60 rotatably mounted in the case 40, wherein the shaft 60 includes an adapter interface 62 having an adapter interface geometry; a pinion adapter (wherein 58 points to) removably coupled with the shaft 60, wherein the pinion adapter inherently comprises a shaft interface (e.g. wherein two portions are coupling together) having a shaft interface geometry configured to mate with the adapter interface geometry for rotational coupling of the pinion adapter and the shaft 60; and a pinion interface having a pinion interface geometry configured to mate with the pinion geometry for rotational coupling of the pinion adapter and the pinion; and a motor 54 mounted to the case 40, wherein the motor 54 is operable to rotate the shaft 60 in at least one direction.
Claim Rejections - 35 USC § 103
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.
Claim(s) 19, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US No. 6,588,153 to Kowalczyk.
Re claims 19, 20: Kowalczyk discloses basic structures of the claimed invention as stated but does not disclose expressly further comprising a second pinion module with a second pinion adapter; wherein the second pinion adapter comprises: a second shaft interface having the shaft interface geometry; and a second pinion interface having a second pinion interface geometry different from the pinion interface geometry; and wherein the second pinion interface geometry is configured to mate with a second pinion having a second pinion geometry different from the pinion geometry for rotational coupling of the second pinion adapter and the second pinion. However, it has been held that a mere duplication of parts, such as the duplication of the second pinion module with a second pinion adapter, has no patentable significance unless a new and unexpected result is produced. A duplication of parts is generally recognized as being within the level of ordinary skill in the art in order to provide an additional output or more efficiency for the retrofit system for moving the door. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1955).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over US No. 6,588,153 to Kowalczyk in view of US No. 6,006,475 to Schwantes et al. (‘Schwantes’).
Re claim 8: Kowalczyk discloses basic structures for the claimed invention as stated above but does not disclose expressly a rotational position sensor configured to detect a rotational position of the output shaft; wherein the control assembly is configured to control operation of the motor based upon information received from the rotational position sensor. Schwantes discloses a door system including a sensor (see col. 9, lines 1-5) configured to detect a rotational position of the output shaft; wherein the control assembly is configured to control operation of the motor based upon information received from the rotational position sensor. In view of Schwantes, it would have been obvious to one with ordinary skill before the effective filing date of the claimed invention to provide Kowalczyk a sensor in order to detect and enable the module operates more efficiency.
Claim(s) 11, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US No. 6,588,153 to Kowalczyk in view of US No. 10,947,764 to Langenberg et al. (‘Langenberg’).
Re claims 11, 12: Kowalczyk discloses basic structures of the claimed invention as stated above but does not disclose expressly further comprising a user interface connected with the control assembly;
wherein the user interface comprises a first side and a second side opposite the second side; wherein the first side of the user interface includes a first input; wherein the second side of the user interface includes a second input; and wherein each of the first input and the second input is operable to adjust a first operating characteristic of the retrofit module. Langenberg discloses door closer diagnostics system, including input/output device 204 allow an interface connects to the input/output device 204 (Fig. 2). In view of Langenberg, it would have been obvious to one with ordinary skill before the effective filing date of the claimed invention to provide Kowalczyk an input/output port for connecting an interface in order to effectively communicate with a door opening system or the retrofit module.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see attached PTO-892).
Contact Information
Any inquiry concerning this communication or earlier communication from the examiner should be directed to CHI Q. NGUYEN whose telephone number is (571) 272-6847. The examiner can normally be reached on Monday-Friday from 7AM-5PM or email: chi.nguyen@uspto.gov. If attempt to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Brian Mattei can be reached at (571) 270-3238. 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. For more information about the PAIR system, see http://pairdirect.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197.
/CHI Q NGUYEN/
Primary Examiner, Art Unit 3635
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