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 .
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.
Claim Rejections - 35 USC § 112
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 1-22 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.
Claim 1:
The term “substantially” in claim 1 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how to establish the metes and bounds of substantially perpendicular. It is unclear at what measurement or term of degree Applicant regards a conductor is no longer substantially perpendicular and the claim fails to provide objective boundaries tied to measurement performance.
Claim 14:
The term “substantially” in claim 14 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how to establish the metes and bounds of substantially perpendicular. It is unclear at what measurement or term of degree Applicant regards a conductor is no longer substantially perpendicular and the claim fails to provide objective boundaries tied to measurement performance.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 14-15, 17 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rodriguez, Jr. Jr. et al. (US 20170363661 A1).
Claim 14:
Rodriguez, Jr. discloses a tool (abstract) comprising
a first portion (29, 30) and a second portion (12, 14) at least partially surrounding the first portion (29, 30) (figs. 1-5, [0010], [0011]);
wherein the first portion (29, 30) is configured to receive a conductor (36) during installation of the tool (figs. 1-5, [0010], [0011]); and,
wherein the second portion (12, 14) comprises a plurality of coil holding fingers configured to releasably retain a measurement coil (20) during installation (figs. 1-5, [0010], [0011]);
wherein the measurement coil (20) held by the second portion at least partially surrounds the conductor (36) when installed with the conductor positioned proximate a center of the curved shape and substantially perpendicular to a plane of the curved shape (figs. 1-5, [0010], [0011]).
Claim 15:
Rodriguez, Jr. discloses the tool according to claim 14, wherein the measurement coil (20) is bent into a curved shape when held by the second portion (12, 14) of the tool (figs. 1-5, [0010], [0011]).
Claim 17:
Rodriguez, Jr. discloses the tool according to claim 15, wherein the conductor (Rodriguez, Jr., 36) is located in a proximity of a center of the curved shape, and the conductor (Rodriguez, Jr., 36) is perpendicular to a plane of the curved shape (figs. 1-5, [0010], [0011]).
Claim 22:
Rodriguez, Jr. discloses the tool according to claim 14, wherein the measurement coil (Rodriguez, Jr., 20) is a Rogowski measurement coil (Rodriguez, Jr., 20) (figs 2-8, col. 5, lines 22-23).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4-5, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez, Jr. et al. (US 8,336,494) in view of Fernandes et al. (US 4,635,055).
Claim 1:
Rodriguez, Jr. discloses an apparatus (abstract) comprising:
a tool comprising a first portion (29, 30) and a second portion (12, 14) at least partially surrounding the first portion (29, 30), wherein the first portion (29, 30) is configured to receive a conductor (36) during installation (figs. 1-5, [0010]); and wherein the second portion (12, 14) comprises a plurality of coil-holding fingers (12, 14) configured to releasably retain a measurement coil (20) during installation (figs. 1-5, [0010]) and
a holder to be employed to install the tool holding the measurement coil (20) onto a conductor (36) (figs. 1-5, [0011] – see also annotated reproduction below),
wherein the measurement coil (20) held by the second portion at least partially surrounds the conductor (36) when installed with the conductor positioned proximate a center of the curved shape and substantially perpendicular to a plane of the curved shape (figs. 1-5, [0011]).
PNG
media_image1.png
640
842
media_image1.png
Greyscale
Rodriguez, Jr. fails to disclose a holder configured to be detachably attached to the tool. Instead, Rodriguez, Jr. discloses a holder (see annotated reproduction above).
Fernandes discloses an apparatus (abstract) comprising:
a tool (40) comprising a first portion (182, 184, 185, 186, 22) and a second portion (76, 81) at least partially surrounding the first portion (182, 184, 185, 186, 22), wherein the first portion (182, 184, 185, 186, 22) is configured to receive a conductor (42) and the second portion (76, 81) is configured to hold a measurement coil (48, 50) (figs 2-8, col 2. lines 12-19; col. 5, lines 22-23; and col. 5, lines 41-50) and
a holder (70) configured to be detachably attached to the tool, and detachable from the tool after installation to install the tool holding the measurement coil (48, 50) onto a conductor (42) (figs 2-8, col. 4, lines 54-61),
wherein the first portion (182, 184, 185, 186, 22) is configured to fit onto the conductor (42) during installation, and the measurement coil (48, 50) at least partially surrounds the conductor (42) when installed (figs.2-8, col. 5, lines 41-50).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the apparatus of Rodriguez, Jr. by providing a holder as taught by Fernandes to allow installation using a hot stick and subsequent removal of the holder while leaving the tool installed, thereby improving usability and safety during live-line installation (Fernandes, col. 5, lines 37-41). See MPEP §2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because both prior art references deal with live conductor installation; use measurement tools and holders; and Fernandes specifically resolves the temporary attachment problem.`
Claim 2:
Rodriguez, Jr. in view of Fernandes renders obvious the apparatus according to claim 1, wherein the measurement coil (Rodriguez, Jr., 20) is bent into a curved shape when held by the second portion (Rodriguez, Jr., 12, 14) of the tool (Rodriguez, Jr., figs. 1-5, [0010]-[0011]).
Claim 4:
Rodriguez, Jr. in view of Fernandes renders obvious the apparatus according to claim 2, wherein the conductor (Rodriguez, Jr., 36) is located in a proximity of a center of the curved shape, and the conductor (Rodriguez, Jr., 36) is perpendicular to a plane of the curved shape (Rodriguez, Jr., figs. 1-5, [0010]-[0011]).
Claim 5:
Rodriguez, Jr. in view of Fernandes renders obvious the apparatus according to claim 2, wherein the curved shape is circular (Rodriguez, Jr., figs. 1-5, [0018]).
Claim 7:
Rodriguez, Jr. in view of Fernandes renders obvious the apparatus according to claim 1; and Rodriguez, Jr. in view of Fernandes fails to disclose the first portion and the second portion form a one-piece structure of flexible material. Instead, Rodriguez, Jr. in view of Fernandes discloses portions of the apparatus comprising a flexible material (thermoplastic type of material) (Rodriguez, Jr., [0014]). MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” See MPEP 2144.04(V)(B)). A person of ordinary skill is also a person of ordinary creativity, not an automaton. Therefore, it would have been within the level of ordinary skill in the art for one having ordinary skill in the art to modify the device taught by Rodriguez, Jr. in view of Fernandes to provide one-piece construction, without modification of the functionality of the device. Thus, Rodriguez, Jr. in view of Fernandes renders obvious applicant’s claimed invention as recited by claim 7.
Claim 11:
Rodriguez, Jr. in view of Fernandes renders obvious the apparatus according to claim 1; wherein the measurement coil (Rodriguez, Jr., 20) and the tool are integrated into a single unit (figs. 1-5, [0010 and [0011]).
Claim 13:
Rodriguez, Jr. in view of Fernandes renders obvious the apparatus according to claim 1, wherein the measurement coil (Rodriguez, Jr., 20) is a Rogowski coil (figs. 1-5, [0010], [0011], [0001] and [0009]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez, Jr. in view of Fernandes as applied to claim 1 above, and further in view of Tang et al. (US 2016/0116504 A1).
Claim 3:
Rodriguez, Jr. in view of Fernandes renders obvious the apparatus according to claim 1; and Rodriguez, Jr. in view of Fernandes fails to disclose the measurement coil is implemented on a printed circuit board having a form factor of a curved shape arranged to be held by the second portion of the tool. Instead, Rodriguez, Jr. in view of Fernandes discloses a generic Rogowski coil.
Tang discloses a Rogowski coil (abstract) wherein the Rogowski coil is implemented on a printed circuit board (PCB), wherein the printed circuit board (PCB) has a form factor of a curved shape arranged to be held by the second portion of the tool (fig. 3, [0002] and [0014]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have swapped the generic Rogowski coil of Rodriguez, Jr. in view of Fernandes for the PCB Rogowski coil of Tank since it was known that generic Rogowski coils and PCB Rogowski coils are analogues for use in current measuring devices (Tank, [0003]). See MPEP § 2143 B which describes the prima facie obviousness of simple substitution of one known element for another to obtain predictable results. It would have been further obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the apparatus of Rodriguez, Jr. in view of Fernandes by providing a PCB Rogowski coil as taught by Tang in order to overcome the disadvantages of traditional closed Rogowski coils. See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results (Tank, [0014]).
Claims 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez, Jr. and Fernandes et al (US 4,635,055).
Claim 16:
Rodriguez, Jr. in view of Fernandes discloses the tool according to claim 14; and Rodriguez, Jr. in view of Fernandes fails to disclose the measurement coil is implemented on a printed circuit board having a form factor of a curved shape arranged to be held by the second portion of the tool. Instead, Rodriguez, Jr. in view of Fernandes discloses a generic Rogowski coil.
Tang discloses a Rogowski coil (abstract) wherein the Rogowski coil is implemented on a printed circuit board (PCB), wherein the printed circuit board (PCB) has a form factor of a curved shape arranged to be held by the second portion of the tool (fig. 3, [0002] and [0014]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have swapped the generic Rogowski coil of Rodriguez, Jr. in view of Fernandes for the PCB Rogowski coil of Tank since it was known that generic Rogowski coils and PCB Rogowski coils are analogues for use in current measuring devices (Tank, [0003]). See MPEP § 2143 B which describes the prima facie obviousness of simple substitution of one known element for another to obtain predictable results. It would have been further obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to improve the apparatus of Rodriguez, Jr. in view of Fernandes by providing a PCB Rogowski coil as taught by Tang in order to overcome the disadvantages of traditional closed Rogowski coils. See MPEP § 2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results (Tank, [0014]).
Claim 18:
Rodriguez, Jr. in view of Fernandes renders obvious the apparatus according to claim 14; and Rodriguez, Jr. in view of Fernandes fails to disclose the first portion and the second portion form a one-piece structure of flexible material. Instead, Rodriguez, Jr. in view of Fernandes discloses portions of the apparatus comprising a flexible material (thermoplastic type of material) (Rodriguez, Jr., [0014]). MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” See MPEP 2144.04(V)(B)). A person of ordinary skill is also a person of ordinary creativity, not an automaton. Therefore, it would have been within the level of ordinary skill in the art for one having ordinary skill in the art to modify the device taught by Rodriguez, Jr. in view of Fernandes to provide one-piece construction, without modification of the functionality of the device. Thus, Rodriguez, Jr. in view of Fernandes renders obvious applicant’s claimed invention as recited by claim 18.
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 1368, 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, 362 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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,174,223. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-22 are anticipated by and/or rendered obvious over claims 1-22 of U.S. Patent No. 12,174,223.
Response to Arguments
Applicant’s arguments, see Applicant Arguments/Remarks Made in an Amendment, filed 12 January 2026, with respect to the rejection(s) of claim(s) 1 and 14 under 35 U.S.C. 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Rodriguez, Jr. (US 2017/0363661 A1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gris et al. (US 5,414,400) discloses a Rogowski coil comprising at least one printed circuit plate provided with a circular cutout.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Lee A Holly/Primary Examiner, Art Unit 3726
Prosecution Insights