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 2-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-11 of U.S. Patent No. 12150523 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the invention show each and every limitation set forth by the claims of the instant application.
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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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-4, 9-14 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Keating et al. (US 2010/0090477 A1) in view of Hamel et al. (US 2005/0105231 A1).
Regarding claim 2, Keating et al. discloses an apparatus comprising:
an energy storage device (energy storage device 240/340);
a kinetic energy generator (energy-harvesting mechanism 250/350), configured to be manipulated (see, e.g., Fig. 2: energy- harvesting mechanism 250/350 is placed in sole of shoe/footwear 130) to induce a voltage output, the kinetic energy generator (energy-harvesting mechanism 250/350) coupled to and configured to charge (see, e.g., §30) the energy storage device (energy storage device 240/340); and
a wireless transmission circuit (including RF transmitter/receiver 380), coupled to the volatile energy storage device (see Fig. 3), comprising an antenna having a minimum transmission energy (antenna of RF transmitter/receiver 380, no separate number given; see Fig. 3; furthermore, it is implicit that the antenna has a minimum transmission energy as it will not function with zero power input—the minimum amount of power required to transmit would therefore be the ‘minimum transmission energy’ );
However, Keating et al. appears to be silent regarding an electronic data storage and transmitting data once the energy storage device is charged to the minimum transmission energy level. Whereas it could be interpreted that such a data storage feature would be implicitly taught by the reference—since microcontroller 370 would require at least a memory to store an instruction set as well as an effective working memory to store sensor 360 data—as would reaching a minimum transmission threshold be required for data transmission—since, otherwise, not enough energy to send data would be stored and transmission would not be possible—the following is noted for expediting prosecution.
On the other hand, Hamel et al. (Figures 3a-5) discloses an article (energy harvesting circuit 18') comprising:
an energy storage device (e.g., energy storage 42, 42', which may be a capacitor or battery; see, e.g., §74, §99);
a wireless transmission circuit (StrainLink transmitter 44), coupled to the energy storage device (see, e.g., Fig. 3a), comprising an antenna (antenna 68) having a minimum transmission energy (energy threshold Vth1, see Abstract; §69, §78);
a kinetic energy generator (piezoelectric transducer (PZT) 20), configured to be manipulated to induce a voltage output, the kinetic energy generator coupled to and configured to charge (See, e.g., Fig. 3a) the energy storage device (energy storage 42, 42');
an electronic data storage (e.g., non-volatile memory 54 included in StrainLink transmitter), configured to store data (see §93);
wherein, upon the energy storage device charging to at least the minimum transmission energy, the energy storage device is configured to discharge energy to a wireless transmission circuit to enable the wireless transmission circuit to transmit the data stored in the electronic data storage (see, e.g., §78: when energy storage device reaches higher energy threshold of 6.3 volts, StrainLink transmitter 44 is powered to transmit data; see also, e.g., §93).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the apparatus of Keating et al. with the explicit teaching of an electronic data storage and associated functionality of transmission of stored data, as taught by Hamel et al., for the purpose of reducing maintenance for a wireless monitoring system by harvesting energy from an ambient source of energy and reducing energy consumption for powering a load to less than the harvested energy amount (see, e.g., §§ 14-16, §§86-87, §§90-93).
Regarding claim 3, the combination of Keating and Hamel further renders obvious that the kinetic energy generator is a piezoelectric generator (Keating: energy-harvesting mechanism 250/350 may be a piezoelectric disk or element; see §§28, 32).
Regarding claim 4, the combination of Keating and Hamel further renders obvious a sole (Keating: sole, no separate number given), wherein the piezoelectric generator (Keating: energy-harvesting mechanism 250/350) is positioned, at least in part, in relation to the sole (Keating: see, e.g., Fig. 2).
Regarding claim 9, the combination of Keating and Hamel further renders obvious that the piezoelectric generator (Keating: energy-harvesting mechanism 250/350) may be configured to generate a discrete energy output less than the minimum transmission energy upon a discrete flexing of the piezoelectric generator (Keating: energy-harvesting mechanism 250/350), and wherein the energy storage device (Keating: energy storage device 240/340) is configured to charge to at least the minimum transmission energy upon a plurality of discrete flexing events of the piezoelectric generator (Keating: see, e.g., §30: each flexing of energy- harvesting mechanism 250/350 results in mechanical energy being collected by harvesting module, then used to recharge, e.g., rechargeable energy storage device 340 either directly or under monitoring and regulation of power management unit 340).
Regarding claim 10, the combination of Keating and Hamel further renders obvious that the volatile energy storage device (Keating: energy storage device 240/340) may be a capacitor (Keating: see, e.g., §32).
Regarding claim 11, the combination of Keating and Hamel further renders obvious a controller (Hamel: controller 46) configured to cause the wireless transmission circuit to transmit the activity data based, at least in part, on receiving an indication that the volatile energy transmission device has a charge of at least the minimum transmission energy (Hamel: see, e.g., §60: Electrical power generated in PZT 20 is rectified in rectifier 40, stored in electrical storage device 42, and once sufficient energy has been stored, is provided to a load, such as wireless sensing module 44, by means of controller 46).
Claims 12-14 are interpreted and rejected using the same reasoning as claims 2-4 above.
Claims 19-21 are interpreted and rejected using the same reasoning as claims 9-11 above.
Claims 4, 8, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Keating et al. (US 2010/0090477 A1) in view of Hamel et al. (US 2005/0105231 A1) and further in view of Chang et al. (US 2013/0074375 A1).
Regarding claim 4, the combination of Keating and Hamel renders obvious the claimed invention, including, it appears, that the piezoelectric generator may be positioned within the sole (Keating: see, e.g., Fig. 2: energy-harvesting mechanism 250 appears to be “positioned within” the sole of shoe 130).
However, whereas Keating may not explicitly discuss positioning “within the sole,” the following is noted for expediting prosecution.
On the other hand, Chang et al. (Figure 1) discloses a wearable article (shoe 1) including a piezoelectric generator and further comprising a sole (sole 11, vamp 12, insole 13), and
Regarding claims 4, wherein the piezoelectric generator (first generator unit 23, which may be a piezoelectric element, see §22) is positioned within the sole (see Fig. 1); and
Regarding claims 8, Chang discloses a sole (sole 11, vamp 12, insole 13) having a major surface, wherein the piezoelectric generator (first generator unit 23, which may be a piezoelectric element, see §22) is substantially coextensive to and conformal with the major surface of the sole (see Fig. 1: first generator unit 23 is coextensive to and conformal with insole 13).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the apparatus of Keating et al. with the explicit teaching of placement of the generator within the sole, as taught by Chang et al., where Keating et al. appears silent regarding specific details of the location of the generator, and Chang et al. teaches a suitable location for the generator, where the selection of a known configuration based on its suitability for its intended use supports a prima facie obviousness determination (MPEP §2144.07).
Claims 14 and 18 are interpreted and rejected using the same reasoning as claims 4 and 8 above.
Claims 5-7 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Keating et al. (US 2010/0090477 A1) in view of Hamel et al. (US 2005/0105231 A1) and further in view of Mullen (US 2005/0258717 A1).
Regarding claims 5-7, the combination of Keating and Hamel renders obvious the claimed invention but appears to be silent regarding the possibility of utilizing a plurality of piezoelectric generators and associated positioning.
On the other hand, Mullen (Figure 6) discloses an apparatus (shoe 600), comprising:
Regarding claim 5, a plurality of piezoelectric generators (piezoelectric arrays 610, 640 including generators 619) and wherein the plurality of piezoelectric generators are positioned in discrete and separate locations in the wearable article (see, e.g., Fig. 6: both at heel and toe of shoe 600); and
Regarding claim 6, a first piezoelectric generator (e.g., piezoelectric array 610) of the plurality of piezoelectric generators is positioned proximate a forefoot of the wearable article (see, e.g., Fig. 6) and wherein a second piezoelectric generator (e.g., piezoelectric array 640) of the plurality of piezoelectric generators is positioned proximate a heel of the wearable article (see, e.g., Fig. 6); and
Regarding claim 7, a sole (sole, no separate number given, see, e.g., §50), wherein the plurality of piezoelectric generators are distributed substantially evenly with respect to the sole (see, e.g., Figs. 6, 7).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the apparatus of Keating et al. with the use and distribution of a plurality of piezoelectric generators, as taught by Walker, where Keating et al. appears silent regarding specific details of the number and location(s) of the piezoelectric generator, and Walker teaches a suitable plurality of units and locations for the generators, where the selection of a known configuration based on its suitability for its intended use supports a prima facie obviousness determination (MPEP §2144.07).
Furthermore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to arrange the piezoelectric generators in any of a number of arrangements, including “substantially evenly with respect to the sole,” etc., for the purpose of maximizing energy generated, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claims 15-17 are interpreted and rejected using the same reasoning as claims 5-7 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC M BLOUNT whose telephone number is (571)272-2973. The examiner can normally be reached M-F 9:00a - 5:30p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Quan Wang can be reached on 571-272-3114. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ERIC M. BLOUNT
Primary Examiner
Art Unit 2685
/Eric Blount/Primary Examiner, Art Unit 2685