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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-11 and 13-19 of U.S. Patent No. 12,100,977. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending independent claims recite fewer limitations than those already patented. The parent patent would anticipate the limitations of the pending claims.
Claim 1 covers the same scope as patented claim 1. Every limitation that is pending in the current claim has already been patented. The parent claim frame, while not explicitly defined as “coupled to the frame” would clearly be coupled in this manner. The preamble of the parent patent claim recites that eyewear comprises the processor – this would indicate that the processor is coupled to the eyewear frame. The pending claim adds a description of what the message is “configured to instruct” within an unclaimed power charger. This is descriptive of information within the message and does not further limit the structure of the eyewear (or processor) itself. Lastly, the pending claim adds that the SOC determination is “as a function of the time period”, while this language is not present in the parent patent claim 1, it is clearly implied. The only manner by which the specification discloses that the eyewear/processor can determine is the SOC is by analyzing the time period.
Pending claims 2-7 repeat the limitations of parent patent claims 2-7, respectively. The only apparent difference is that the pending claim recites a “transceiver” (claim 5) where the parent patent refers to it as a “transmitter” (claim 5). But claims 6-7 define this component in exactly the same structural terms. While a “transceiver” implies bidirectional communication – not such structure or functionality is explicitly present in the pending claims. If the parent application were applied as a reference, its transmitter would anticipate the pending claims’ transceiver.
Claim 8 recites fewer limitations that patented claim 8. Every limitation that is pending in the current claim has already been patented. Pending claim 8 recites that the SOC determination is “as a function of the timer period” – this corresponds to the parent patent limitation of “detect a time period”. Thus, even though different language is used, the scope of the claims are the same.
Claims 9-14 repeat the limitations of claims 9-14, respectively. The change from “transmitter” to “transceiver” (claim 12) does not affect the scope of the claims, as discussed above.
Claim 15 recites the same limitations as patented claim 15. The description of what the message is “configured to instruct” does not further limit the structure of the computer-readable medium or processor. It is directed to what the charger can infer/extrapolate” from the message, it does not actually define how the message is created by the processor. The last step of determining includes “as a function of the time period”, which corresponds to parent patent claim 15’s “detecting, by the processor, a time period”, as noted above.
Claims 16-20 repeat the limitations of claims 16-20, respectively. The change to “transceiver” (claim 19) does not affect the scope of the claims, as discussed above.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-11 and 13-19 of U.S. Patent No. 11,527,895. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending independent claims recite fewer limitations than those already patented. The parent patent would anticipate the limitations of the pending claims.
Claim 1 recites fewer limitations than grandparent patented claim 1. Every limitation that is pending in the current claim has already been patented.
Claims 2-7 repeat the limitations of grandparent patented claims 2-4, 1 and 6-7, respectively. Any slight differences in wording in these claims does not affect the scope of the claim.
Claim 8 recites fewer limitations that patented claim 8. Every limitation that is pending in the current claim has already been patented.
Claims 9-14 repeat the limitations of grandparent patented claims 9-11, 8 and 13-14, respectively. Any slight differences in wording in these claims does not affect the scope of the claim.
Claim 15 recites fewer limitations that patented claim 15. Every limitation that is pending in the current claim has already been patented.
Claims 16-20 repeat the limitations of grandparent patented claims 16-19 and 15, respectively. Any slight differences in wording in these claims does not affect the scope of the claim.
Claim Objection
Claim 8 is objected to because it recites that the eyewear processor is configured to instruct the charger “to stop sending a wireless power signal for a time period that is correlated to the [] SOC” and that it determines the SOC as a function of that same time period – but the wireless power charger itself (lines 2-3) is not defined as having the structure necessary to do this.
Claim 8 simply defines the charger as “configured to send a wireless power signal”. The charger should also be configured to: a) receive the data message; b) sense its battery SOC; and c) create the time period (by stopping the wireless power signal) as a function of the SOC.
Conclusion
The claims would be allowable once a Terminal Disclaimer is filed (for both parent patents). As discussed in both parent applications, the prior art does not teach or suggest a wireless transmitter having a battery that communicates the SOC of its battery to a receiver by encoding the SOC into the time period that the transmitter stops sending wireless power. Similarly, the prior art does not teach or suggest the receiver half of this functionality – name that the receiver (the eyewear) that is configured to send a data message to instruct the transmitter to encode its SOC and then determine the SOC through the time period.
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/ADI AMRANY/Primary Examiner, Art Unit 2836