DETAILED ACTION
Response to Arguments
Applicant's arguments filed 08/22/2025 have been fully considered but they are not persuasive.
With respect to the 35USC112 rejection, at the top of page 10, the applicant appears to take a position that the ferrous pieces in claim 6, and other claims, are the same as ferromagnetic pieces 148 in the disclosure. This is the interpretation that will be used by the examiner.
With respect to the rejection of claim 6, the applicant argues on page 11 that it is unclear what is the ferrous piece in the prior art. In view of the more definite position taken by the applicant in the disclosure with respect to the ferrous piece, the ferrous piece in the claim 6 rejection is interpreted by the examiner as structure 22 in the prior art.
The applicant argues that the prior art does not teach any position where the field generated through the contact interfaces is independent of the ferrous piece. This argument is not persuasive because the field is generated by the permanent magnet, not by the ferrous piece and is thus independent of the ferrous piece.
With respect to claim 1, the applicant argues on page 12 that “…neither Engelsted or Hinger, alone or in combination, teach, disclose, or suggest at least "a pole plate removably coupled to the housing", as required by independent claim 1.” This argument is not persuasive because any structure in the device can be removed from the housing and is thus removable. There are no details claimed about specifics of how the pole plate is removably coupled to the housing.
With respect to claim 5, on page 14, the applicant argues that the Engelsted does not teach that the magnetic platter maintains a first rotational orientation relative to the pole plate while it translates linearly. This argument is not persuasive because the magnetic platter of Engelsted maintains its rotational orientation in at least one axis while it translates linearly. No further details about maintaining rotational orientation are claimed.
With respect to claim 13, the applicant argues that the prior art does not teach the two states as claimed in claim 13. This argument is not persuasive because the two states are shown by Engelsted in figures 2 and 2a, and are also shown by Hinger. All of the claimed magnetic field functionality limitations are also produced by the structure of the prior art.
New claim 22 does not appear to further limit claim 5 because claim 22 recites a first orientation which is broader than a first rotational orientation, and is thus already included in claim 5. Thus claim 22 is rejected together with claim 5.
The double patenting rejection is maintained because the terminal disclaimer has not been approved at the time of writing of this office action.
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 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 (including claims 1 and 7) and claim 24 (including claim 22) of U.S. Patent No. 12100545. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims is the same.
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) 6-8 and 12 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Engelsted et al. (US 3121193).
In re claim 6, Engelsted, in figures 1-4, discloses a magnetic coupling device for magnetic coupling to a ferromagnetic workpiece, comprising: a housing defining an axis within an interior of the housing; at least one permanent magnet (24) supported by the housing, the at least one permanent magnet is diametrically magnetized with a north-pole side and a south-pole side and is moveable along the axis between a first position and a second position; a workpiece contact interface supported by the housing and adapted to contact the ferromagnetic workpiece (as seen in the figures); and a ferrous piece (22) supported by the housing and magnetically accessible from the interior of the housing, wherein with the at least one permanent magnet in the first position a first magnetic circuit is formed with the at least one permanent magnet and the ferrous piece and with the at least one permanent magnet in the second position a second magnetic circuit is formed (two positions with two magnetic circuits formed are best shown in figures 2-3) with the at least one permanent magnet and the ferromagnetic workpiece through the workpiece contact interface independent of the ferrous piece (the circuit is formed because of the presence of the magnetic field generated by the permanent magnet; this occurs independently of the ferrous piece), and wherein the ferrous piece is located above a lower edge of the at least one permanent magnet in the first position and the second position (as seen in the figures).
In re claim 7, Engelsted, in figures 1-4, discloses an actuator (26,28) coupled to the at least one permanent magnet, the actuator operable to move the at least one permanent magnet between the first position and the second position.
In re claim 8, Engelsted, in figures 1-4, discloses that the at least one permanent magnet includes a plurality of spaced apart permanent magnets (24).
In re claim 12, Engelsted, in figures 1-4, discloses that the ferrous piece is completely positioned between a first end of the housing and a second end of the housing (in the same way as shown by the applicant).
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) 1-5, 11, 13-15, and 18-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Engelsted et al. (US 3121193) in view of Hinger (US 3477050).
In re claim 1, Engelsted, in figures 1-4, discloses a magnetic coupling device for magnetic coupling to a ferromagnetic workpiece, comprising: a housing having an axis extending between a first end portion of the housing and a second end portion of the housing; a ferrous piece arranged at least a first distance from the second end portion of the housing; a pole plate removably coupled (any part of the device can be removed from the housing) to the housing; and a magnetic platter supported by the housing, the magnetic platter including a plurality of permanent magnet portions (24) interposed between a plurality of ferromagnetic pole piece portions (22); and wherein the magnetic platter is linearly translatable within the housing along the axis to at least each of a first state and a second state (as discussed in column 3 paragraph 2, lines 30-35 of the specification), the magnetic platter being arranged adjacent to the ferrous piece such that the magnetic coupling device establishes a first magnetic circuit through the ferrous piece and provides a first magnetic field at the workpiece contact interface of the magnetic coupling device when the magnetic platter is in the first state and the magnetic platter being arranged spaced apart from the ferrous piece such that the magnetic coupling device provides a second magnetic field at the workpiece contact interface of the magnetic coupling device when the magnetic platter is in the second state, the second magnetic field being a non-zero magnetic field strength (inherent function of the claimed structure). Engelsted does not disclose a plurality of projections. Hinger however discloses a similar device having a plurality of projections which define a workpiece contact interface (as seen in figures 1 and 2). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a contact surface with projections as taught by Hinger in the device of Engelsted in order to improve grip on uneven objects.
In re claim 2, Engelsted, in figures 1-4, discloses that the pole plate has a plurality of openings to receive a plurality of non-ferromagnetic members (as best seen in figures 2 and 3).
In re claim 3, Engelsted modified by Hinger discloses that a first one of the plurality of ferromagnetic pole piece portions of the magnetic platter is positioned above a first one of the plurality of projections of the pole plate in both the first state and the second state and a second done of the plurality of ferromagnetic pole piece portions of the magnetic platter is positioned above a second one of the plurality of projections of the pole plate in both the first state and the second state (inherent function of the shown structure, see figures 2 and 3 of Engelsted for best view).
In re claim 4, Engelsted modified by Hinger discloses that a first one of the plurality of ferromagnetic pole piece portions of the magnetic platter is positioned completely above a first one of the plurality of projections of the pole plate in both the first state and the second state and a second one of the plurality of ferromagnetic pole piece portions of the magnetic platter is positioned completely above a second one of the plurality of projections of the pole plate in both the first state and the second state (inherent function of the shown structure, see figures 2 and 3 for best view), a first non-ferromagnetic member (16 in Engelsted) is positioned between the first one of the plurality of projections of the pole plate and the second one of the plurality of projections of the pole plate.
In re claims 5 and 22, Engelsted, in figures 1-4, discloses a magnetic coupling device for magnetic coupling to a ferromagnetic workpiece, comprising: a housing having an axis extending between a first end portion of the housing and a second end portion of the housing; a ferrous piece arranged at least a first distance from the second end portion of the housing; a pole plate defining a workpiece contact interface accessible from the second end portion of the housing, and a magnetic platter supported by the housing, the magnetic platter including a plurality of permanent magnet portions (24) interposed between a plurality of ferromagnetic pole piece portions (22); and wherein the magnetic platter is linearly translatable within the housing along the axis while maintaining a first rotational orientation relative to the pole plate (rotational orientation is maintained in at least two axis) to at least each of a first state and a second state, the magnetic platter being arranged adjacent to the ferrous piece such that the magnetic coupling device establishes a first magnetic circuit through the ferrous piece and provides a first magnetic field at the workpiece contact interface of the magnetic coupling device when the magnetic platter is in the first state and the magnetic platter being arranged spaced apart from the ferrous piece such that the magnetic coupling device provides a second magnetic field at the workpiece contact interface of the magnetic coupling device when the magnetic platter is in the second state, the second magnetic field being a non-zero magnetic field strength (inherent function of the claimed structure), and wherein a first one of the plurality of ferromagnetic pole piece portions of the magnetic platter is positioned completely above a first one of the plurality of projections of the pole plate in both the first state and the second state and a second one of the plurality of ferromagnetic pole piece portions of the magnetic platter is positioned completely above a second one of the plurality of projections of the pole plate in both the first state and the second state (inherent function of the shown structure, see figures 2 and 3 for best view), and a first non-ferromagnetic member (16). Engelsted does not disclose a plurality of projections. Hinger however discloses a similar device having a plurality of projections which define a workpiece contact interface (as seen in figures 1 and 2). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a contact surface with projections as taught by Hinger in the device of Engelsted in order to improve grip on uneven objects.
In re claim 11, Engelsted, in figures 1-4, discloses the claimed device except for the spaced apart projections. Hinger however discloses a similar device having a plurality of projections which define a workpiece contact interface (as seen in figures 1 and 2). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a contact surface with projections as taught by Hinger in the device of Engelsted in order to improve grip on uneven objects.
In re claim 13, Engelsted, in figures 1-4, discloses a magnetic coupling device for magnetic coupling to a ferromagnetic workpiece, comprising: a housing having a passageway defining a passageway axis; a magnetic platter supported by the housing, the magnetic platter including a plurality of permanent magnet portions (24) interposed between a plurality of ferromagnetic pole piece portions (22); and wherein the magnetic platter is linearly translatable within the housing along the axis to at least each of a first position corresponding to a first state and a second position corresponding to a second state; in each state the plurality of ferromagnetic pole piece portions meeting the claimed alignment limitations; wherein the magnetic coupling device provides a first magnetic field at the workpiece contact interface of the magnetic coupling device when the magnetic platter is in the first state and the magnetic coupling device provides a second magnetic field at the workpiece contact interface when the magnetic platter is in the second state, the second magnetic field being a non-zero magnetic field strength and greater than the first magnetic field of the first state (inherent function of the shown structure). Engelsted does not disclose a plurality of projections. Hinger however discloses a similar device having a plurality of projections which define a workpiece contact interface (as seen in figures 1 and 2). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a contact surface with projections as taught by Hinger in the device of Engelsted in order to improve grip on uneven objects.
In re claim 14, Engelsted, in figures 1-4, discloses that the plurality of permanent magnet portions and the plurality of ferromagnetic pole piece portions of the magnetic platter form a linear array (as clearly seen in the figures).
In re claim 15, Engelsted, in figures 1-4, discloses an actuator (26,28) configured to linearly translate the magnetic platter between the first state and the second state.
In re claim 18, Engelsted modified by Hinger discloses a lower surface of the first one of the plurality of ferromagnetic pole piece portions of the magnetic platter matches an upper surface the first one of the plurality of projections, a lower surface of the second one of the plurality of ferromagnetic pole piece portions of the magnetic platter matches an upper surface the second one of the plurality of projections, and a lower surface of the third one of the plurality of ferromagnetic pole piece portions of the magnetic platter matches an upper surface the third one of the plurality of projections (as best shown by Engelsted in figures 2-3).
In re claim 19, Hinger teaches that the first one of the plurality of projections is a unitary piece (as shown in figures 1-2; any one of the shown projections meet this limitation).
In re claim 20, Engelsted modified by Hinger discloses that the plurality of projections are part of a pole plate, the pole plate having a plurality of openings to receive a plurality of non-ferromagnetic members (16 in Engelsted), a first one of the plurality of non-ferromagnetic members positioned between the first one of the plurality of projections and the second one of the plurality of projections and a second one of the plurality of non-ferromagnetic members positioned between the second one of the plurality of projections and the third one of the plurality of projections (this is best shown in figures 2-3 of Engelsted).
In re claim 21, Engelsted modified by Hinger discloses that the magnetic platter is only linearly translatable along the passageway axis (as seen in figure 2 of Engelsted).
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Engelsted et al. (US 3121193) in view of Rinkinen et al. (US 2017/0372825).
In re claims 9-10, Engelsted teaches the claimed device except for the sensor. Rinkinen, in figures 1-6 however, teaches a similar device having a sensor (119) operable to determine a magnetic flux through the workpiece contact interface. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adapted a sensor as taught by Rinkinen to the device of Engelsted to allow for automation of actuation of the device.
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Engelsted et al. (US 3121193) in view of Hinger (US 3477050) and Rinkinen et al. (US 2017/0372825).
In re claim 16, Engelsted, in figures 1-4, discloses the claimed device except for one of the claimed types of actuators. Rinkinen however teaches a similar device having a hydraulic actuation system. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adapted a hydraulic actuation system as taught by Rinkinen to the device of Engelsted/Hinger to allow for automation of actuation of the device.
In re claim 17, Engelsted, in figures 1-4, discloses the claimed device except for a sensor. Rinkinen however teaches a sensor (119) which monitors a position of the actuator. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adapted a sensor as taught by Rinkinen to the device of Engelsted/Hinger to allow for automation of actuation of the device.
Conclusion
THIS ACTION IS MADE FINAL. 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 Alexander Talpalatski whose telephone number is (571)270-3908. The examiner can normally be reached 10 AM - 6 PM PT.
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/Alexander Talpalatski/ Primary Examiner, Art Unit 2837