DEVICES, SYSTEMS AND METHODS FOR
FLOORING PERFORMANCE TESTING
FIRST OFFICE ACTION
DRAWINGS
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) since element number “108” has been used to designate more than one element, specifically the plurality of zones (paragraph 25 & 27), the processing unit (paragraph 31), and the sensor (paragraph 31).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d). If the changes are not accepted by the Examiner, the Applicant will be notified and informed of any required corrective action in the next Office Action. The objection to the drawings will not be held in abeyance.
TITLE
The submitted title has been considered and approved.
ABSTRACT
The submitted abstract has been considered and approved.
SPECIFICATION
The submitted specification has been considered and approved.
CLAIMS
In the event that the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the rationale supporting the rejection would be the same.
35 U.S.C. § 112(a)
In accordance with 35 U.S.C. 112(a), the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1 - 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention.
Independent claims 1, 10, and 15 each set forth that the system comprises a plurality of sensors wherein each sensor has a plurality of zones associated therewith and is configured to measure a value of at least one parameter in at least one of the plurality of zones associated therewith. Therefore, the claim requires the sensor to only measure one parameter in one zone. However, the specification sets forth that a parameter (ie. capacitance) is measured in each of a plurality of zones. In other words, the system’s operation is disclosed as being dependent on the parameter being measured in each of the plurality of zones. Thus, the claimed subject matter is in disagreement with and not supported by the subject matter of the specification as originally filed.
Claims 1 - 20 are also rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement because the claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The specification sets forth that a parameter (ie. capacitance) is measured in each of a plurality of zones and that the system’s operation is dependent on the parameter being measured in each of the plurality of zones. Thus, uncertainty exists as to how the system could operate if the sensor was to only measure the parameter in one zone as required in each of the independent
claims 1, 10, and 15. In other words, one having ordinary skill in the art armed with the Applicant’s disclosure would be subject to undo experimentation to operate the Applicant’s invention as claimed.
Dependent claim 11 also calls for system operation to be based on a parameter value in just one of the plurality of zones.
35 U.S.C. § 112(b)
In accordance with 35 U.S.C. 112(b), 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.
Claim 11 is 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 joint inventors regard as the invention.
Independent claim 10 sets forth a processing unit which transmits a data packet and a data analysis device which receives the data packet. However, claim 11, which depends from claim 10, sets forth that the data analysis device transmits the data packet which appears to contradict claim 10. Clarification if not correction is requested.
Non-Statutory 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/proces/file/efs/guidance/eTD-info-Isp.
Claims 1 - 5, 8 - 12, and 15 - 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,105,061. Although the claims at issue are not identical, they are not patentably distinct from each other as is follows.
With respect to independent claim 1, patent claim 1 sets forth the subject matter thereof.
With respect to claim 2, patent claim 2 sets forth the subject matter thereof.
With respect to claim 3, patent claim 4 sets forth the subject matter thereof.
With respect to claim 4, patent claim 5 sets forth the subject matter thereof.
With respect to claim 5, patent claim 6 sets forth the subject matter thereof.
With respect to claim 8, patent claim 9 sets forth the subject matter thereof.
With respect to claim 9, patent claim 10 sets forth the subject matter thereof.
With respect to independent claim 10, patent claim 11 sets forth the subject matter thereof.
With respect to claim 11, patent claim 13 sets forth the subject matter thereof.
With respect to claim 12, patent claim 14 sets forth the subject matter thereof.
With respect to independent claim 15, patent claim 16 sets forth the subject matter thereof.
With respect to claim 16, patent claim 17 sets forth the subject matter thereof.
With respect to claim 17, patent claim 18 sets forth the subject matter thereof.
With respect to claim 18, patent claim 16 suggests the subject matter thereof.
With respect to claim 19, patent claim 16 sets forth the subject matter thereof.
With respect to claim 20, patent claim 10 sets forth the subject matter thereof.
Allowable Subject Matter
After a search of the prior art, dependent claims 6, 7, 13, and 14 are believed to be distinct over the prior art.
With respect to claim 6, the prior art fails to teach or suggest that the data analysis device is operable to forecast an expected lifespan of the floor covering based on the parameter value and previously measured parameter values associated with the sensor underlayment unit.
With respect to claim 7, the prior art fails to teach or suggest that the data analysis device is operable to predict field performance of the floor covering based on the value of the parameter and previously measured parameter values associated with the sensor underlayment unit.
With respect to claim 13, the prior art fails to teach or suggest that the data analysis device is operable to forecast an expected lifespan of the floor covering based on the parameter value and previously measured parameter values associated with the sensor underlayment unit.
With respect to claim 14, the prior art fails to teach or suggest that in order to determine whether the foot strike is unique, the data analysis device is configured to compare a time stamp
of the data packet to a time stamp of at least one other data packet comprising the previously measured parameter values.
CITED DOCUMENTS
The Applicant’s attention is directed to the “PTO-892” form for the relevant art made of record at the time of this Office Action.
CONTACT INFORMATION
Any inquiry concerning this communication from the Examiner should be directed to Eric S. McCall whose telephone number is 571-272-2183. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eric S. McCall/
Primary Examiner
Art Unit 2855
Prosecution Insights