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 .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
1. Claims 10, 13 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Yoon et al (USPN 2020/0081532).
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Regarding claim 10, Yoon discloses a computer-implemented method comprising:
providing, at a first time and via an electrical signal generator (a waveform generator 604 of a control circuit 600, see figure 6), a first signal (a positive voltage signal) to a first conductive member (302) of a first electrode assembly (30a-302c) and a second signal (an opposite voltage signal) to a second conductive member (306) of a second electrode assembly (306a-306c) (an electrostatic clutch 300 includes first and second electrode assembles, see figure 3) (see par. 0027, 0013),
wherein the first electrode assembly (302) is configured to not move relative to the second electrode assembly (306) based at least in part on the providing of the first signal and the second signal (see par. 0020); and
causing an increase in size of an opening (OP) to be inhibited based at least in part on the providing of the first and second signals (when applied voltage signals to the first and second electrodes, create an electrostatic force between the electrodes, causing an opening OP of the electrostatic clutch 300 to be inhibited shown in attached figure 3 above, see par. 0013), a textile (a textile includes 210, 213, see par. 0019) forming the opening and configured to be worn by a wearer (102).
Regarding claim 13, Yoon discloses wherein the first electrode assembly, the second electrode assembly (302, 306), and the electrical signal generator (604) are included in an electro-adhesive clutch (300) that is secured to the textile (210, 213) (see figure 2, the electrodes 302, 306, the generator 604 of the control circuitry are provide a compact clutch 300 and attached to the textile 210, 213, par. 0014).
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.
2. Claims 1-4, 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-10, 12 of U.S. Patent No. 12, 171, 282. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a system, comprising: a textile forming an opening and configured to be worn by a wearer; a first electrode assembly comprising a first conductive member; an elastic encasing within which the first assembly is positioned, the elastic encasing forming a first bond with the first conductive member at a first location of the elastic encasing; an electrical signal generator configured to provide a first signal to the first conductive member, wherein the first electrode assembly is configured to laterally slide relative to another component when at least the first signal is not applied and not move relative to the component when at least the first signal is applied; and a processor configured to cause an increase in size of the opening to be inhibited when at least the first signal is applied to the first electrode assembly and further configured to enable the increase in size of the opening when at least the first signal is not applied (see claim comparations table below).
USPN 12,171,282
Current application 18/948,421
Claims
Claims
1, 3, 10, 12
1
1, 2
2
1, 3
3
4
4
7
7
8
8
9
9
Allowable Subject Matter
3. Claims 19-20 are allowed over prior art of record.
The following is an examiner's statement of reasons for allowance:
The prior art of record neither anticipates nor renders obvious the claimed subject matter of the instant application as a whole either taken alone or in combination, in particular, prior art of record does not teach:
A system, comprising: the one or more processors, perform operations comprising: refraining from providing, at a first time, any signal to a first conductive member of a first electrode assembly and a second conductive member of a second electrode assembly, wherein the first electrode assembly is configured to move relative to the second electrode assembly based at least in part on the refraining; and enabling an increase in size of an opening based at least in part on the refraining from providing any signal, a textile forming the opening and configured to be worn by a wearer as recited in claim 19.
4. Claims 5-6, 11, 12, 14-15, 16-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANNY NGUYEN whose telephone number is (571)272-2054. The examiner can normally be reached M-F 8:00AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Lewis can be reached at 571-271-1838. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANNY NGUYEN/Primary Examiner, Art Unit 2838
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