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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,138,527. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader and recite the function of the machine of devoid of any structures responsible for carrying them out. Such claims encompass those previously recited and would act to extend the right already granted.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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 inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 1, 15 and 21, a control system “configured to” and “structured to be able to configure” is indefinite as it imparts no clear structure capable of meeting the recited function. Here the scope of such is that it can include mechanical systems or computer systems. In the context to the former, pg. 7 of specification only discloses, “a control, drive and selection system (unit) 9 connected to the movable drawbar 6 and to the control device 8 and configured to allow the movable drawbar 6 to move, when required, to at least a third operating position allowing the string 3 to be slackened by the release of a further, second working length different from the first working length of string 3 released when the second operating position is reached.” No further broader structures are disclosed and as such there exists no support in the specification for the scope of a broader claim that would include any and all mechanisms capable of carrying out the recited function. Here the scope of the claim is not commensurate with the scope of the disclosure and lacks support.
Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains 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.
This is a scope of enablement issue. Here the claim sets forth the functional capabilities without limits on the structures necessary to perform them. While the specification gives examples, it fails to show all structures that would be capable of performing such a function. Most broadly, a person operating mechanism of strings and pulley can perform the control function of the machine. However, such is not disclosed or enabled. Here the scope of the claim attempts to cover any and all structures capable of performing the desired function of the machine either currently or not yet invented.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claims 1, 15 and 21, a control system “configured to” and “structured to be able to configure” is indefinite as it imparts no clear structure capable of meeting the recited function. Apparatus claims are defined by the structures recited and not by how they are intended to function. [A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Functional claiming, absent of the and clear recitation of the structures necessary or responsible to perform the function, render the claim indefinite as one cannot determine the structures one is seeking to exclude others from infringing upon. A claim written with the intent of precluding one from practicing any and all structures known and not yet invented of functioning in the same manner renders the claim indefinite. Where the control system may be interpreted as computer-implemented, the specification fails to disclose any adequate algorithm to perform the recited functions. Applicant cannot rely on the knowledge of a person of ordinary skill in the art to supply the missing software code.
In claim 1, “the predetermined position of ln. 11 lacks a proper antecedent. “The release of a first working length” and “the string release” lacks a proper antecedent and is inferential render the claim unclear. Such a recitation implies a letting go or some structure capable there of which has not been previously recited.
The scope of claim 11 is not clear since one cannot determine how a control system “controls play” and the steps or structures required to do so. Claims 13 recite a list of systems and device without any structural relationship between them. As such one cannot determine the scope of the claim merely from the list of elements without specifying how they are structurally connected together to make the device.
Claims 14 and 20 are narrative and fails to specify the structures necessary to perform the desired functional capabilities. No “configurations” are previously recited rendering the recitation unclear.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 15-21 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Eyre 3,073,596.
As to claims 15 and 21, Eyre shows a bowling setter for a bowling center system for positioning pins 19 at predetermined points with a plurality of strings 26 with a pulley system 29 operatively configured to manage a predetermined length of each string. Sensing means 62 is considered a control system structured to be able to configure release of the strings in longer or shorter lengths depending on a type of operating configuration, which comprises: a first position of game preparation as shown in fig. 3 in which the strings are in a first length; a second operating game position in which the strings are in a second length as shown in fig. 2 by pins IX and III when the pins are in a lowered position onto the bowling lane into a predetermined position; and a third operating game position shown by pins V and I in which the strings are in a third length in which the string is slackened by release of a working length different from the second length when the pins are in the lowered position. Similarly with respect to claim 21, a third operating game position in which the string is further slackened by release of a second working length greater than the first working length when the pins are on the bowling lane is considered shown by fig. 2.
Elements 62 and 64 are considered stabilizing units with openings as called for by claims 16 and 17.
As to claims 18 and 20, the reversing switch 18 can be describe as a unit capable of measuring the length of the string or a system control that controls the play o of the string between operating configurations.
The actuating lever 76 is considered capable of being described as a tensioning element that modify the length of the string to a corresponding pin.
Conclusion
Claims 5-8 and 18 are treated as a mean-plus-function limitation and limited to the disclosed corresponding structure in the drive motor unit 17 of a brushless motor with Hall effect sensor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Nicholas Weiss at (571)270-1775.
If attempts to reach the examiner by telephone are unsuccessful, communication via email at the above address may be found more effective. Where current PTO internet usage policy does not permit an examiner to initiate communication via email, such are at the discretion of the applicant. However, without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me by responding to this inquiry by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Pierce whose telephone number is (571)272-4414 and E-mail address is bill.pierce@USPTO.gov. For emergency assistance, supervisory assistance can be obtained with Nicholas Weiss at (571)270-1775.
/WILLIAM M PIERCE/ Primary Examiner, Art Unit 3711
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