Notice of Pre-AIA or AIA Status
This is a first office action on the merits of application SN 18/984,551 and filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 8, 11, 12 and 19 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.
The term “silent” in claim 8 and 19 is a relative term which renders the claim indefinite. The term “silent” 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.
Claim 11 recites the limitation "leg gearbox" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 1-21 of U.S. Patent No. 12,207,730. Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite a height adjustment system with a drive system, a worm gearbox, and an interconnection gearbox.
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.
Claim(s) 1-4, 7, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over by US Patent 8,640,562 to Pettersson in view of US Patent 10,758,039 to Allen.
Pettersson teaches
1. A height adjustment system for a surface, the height adjustment system comprising: a drive system including: a motor (4); and an output shaft (3) operatively coupled to the worm gearbox, the output shaft extending in a first horizontal direction (as best seen in figure 1); and an interconnection gearbox (2) coupled to the drive system, the interconnection gearbox to convert rotation of the output shaft to rotation of an interconnection shaft () in a second horizontal direction (as best seen in figure 2a) different than the first horizontal direction, the interconnection gearbox including a first cover (20a) coupled to a second cover (20b) of the worm gearbox, the output shaft extending through the interconnection gearbox (as best seen in figure 1).
Pettersson does not expressly disclose a worm gearbox connected to the motor shaft.
Allen teaches a motor (20) with an output shaft (26) having a worm gear (34) and a ring gear (36).
Before the effective filing date of the claimed invention it would have been obvious for a person ordinary skill in the art to modify the system of Pattersson to use a worm gear box to connect the shaft as taught by Allen properly gear the motor to the shaft to allow for the legs to be raised or lowered.
Regarding claim 2, Allen teaches
2. wherein the worm gearbox includes a worm gear assembly (34) to transmit rotation of the motor to the rotation of the output shaft.
Regarding claim 3, Allen teaches
3. wherein the worm gear assembly includes: a worm (34) coupled to the motor; and a gear (36) coupled to the output shaft, the gear including a plurality of teeth () that mesh with threads of the worm.
Regarding claim 4, Allen teaches
4. wherein the gear includes a bore (figure 10B), the output shaft extending through the bore.
Regarding claim 7, Allen teaches
7. wherein the worm gear assembly is self-locking (as best seen in figure 10B, the gear ratio while not specified would result in a structure would only move once powered and is therefore considered “self-locking”).
Regarding claim 8, Pettersson in view of Allen teaches
8. wherein the motor is a silent motor (there is no standard disclosed to determine what makes a motor silent and therefore the examiner considers both motors or one of the motors of Pettersson and Allen would be silent).
Regarding claim 9, Pettersson in view of Allen teaches
9. wherein the interconnection gearbox includes helical teeth engaging the interconnection shaft to convert the rotation of the output shaft to rotation of the interconnection shaft.
Further regarding claims 5, Pettersson in view of Allen does not expressly disclose the material of worm gear and worm wheel. Before the effective filing date of the claimed invention it would have been obvious to one having ordinary skill in the art make the worm gear metal and the worm wheel a composite material, since it has been held to be within the general skill of a worker in the art to select a known material (metal, steel, brass, aluminum, or composite) on the basis of its suitability (durability, cost, performance or weight) for the intended use as a matter of obvious design choice. See MPEP 2144.07
Further regarding claim 6, Pettersson in view of Allen does not expressly disclose the particular gear ratio. Before the effective filing date of the claimed invention it would have been obvious to one having ordinary skill in the art make the gear ratio 20, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum value involves only routine skill in the art. See MPEP 2144.07
Claim(s) 11-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 8,640,562 to Pettersson in view of US Patent 10,758,039 to Allen as applied to claim 1above, and further in view of US Patent 9,723,916 to Chen.
Pattersson in view of Allen discloses every element as claimed and discussed above except an interconnection shaft extending in the second direction to a leg gear box.
Chen teaches three legs (6) with actuators (18,34) connected to shafts (3) via gear boxes to form a L-shape table as best seen in figure 1. Before the effective filing date of the claimed invention, it would have been obvious for a person of ordinary to modify the system of Pettersson in view of Allen by adding an interconnecting shaft and a third leg as taught by Chen to form a L-shaped table.
Further regarding claim 17, Pettersson in view of Allen does not expressly disclose the particular gear ratio. Before the effective filing date of the claimed invention it would have been obvious to one having ordinary skill in the art make the gear ratio 20, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum value involves only routine skill in the art. See MPEP 2144.07
Further regarding claims 18, Pettersson in view of Allen does not expressly disclose the material of worm gear and worm wheel. Before the effective filing date of the claimed invention it would have been obvious to one having ordinary skill in the art make the worm gear metal and the worm wheel a composite material, since it has been held to be within the general skill of a worker in the art to select a known material (metal, steel, brass, aluminum, or composite) on the basis of its suitability (durability, cost, performance or weight) for the intended use as a matter of obvious design choice. See MPEP 2144.07
Allowable Subject Matter
Claims 10 and 20 would be allowable if a terminal disclaimer is filed to overcome the double rejection(s) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY MICHAEL AYRES whose telephone number is (571)272-8299. The examiner can normally be reached Monday - Friday 11:30-8.
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, Dan Troy can be reached at (571) 270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY M AYRES/Examiner, Art Unit 3637
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