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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: modulator component in claim 3 and demodulator component in claim 4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-16 of U.S. Patent No. 12,171,398 (henceforth ‘398). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the present application Claim 1 of ‘398, unless noted
A system comprising: a first electrical circuit configured to provide data; a second electrical circuit electrically isolated from the first electrical circuit; and
A system comprising: a first electrical circuit; a second electrical circuit electrically isolated from the first electrical circuit;
(claim 2) data provided by the first electrical circuit
a free space optics interface assembly comprising: a housing defining a free space chamber in the housing,
a free space optics interface assembly, the free space optics interface assembly comprising a housing defining a free space chamber in the housing,
an optical transmitter in the housing at a first end of the free space chamber, the optical transmitter electrically coupled to the first electrical circuit and configured to optically transmit modulated light representative of the data into the free space chamber,
an optical receiver in the housing at a second end of the free space chamber opposite the first end, the optical receiver electrically coupled to the second electrical circuit and configured to receive the modulated light transmitted into the free space chamber,
an optical transmitter having an input that is electrically coupled to the first electrical circuit, and
(claim 2) the optical transmitter is at a first end of the free space chamber and configured to optically transmit, into the free space chamber, modulated light representative of data provided by the first electrical circuit;
an optical receiver having an output that is electrically coupled to the second electrical circuit;
(claim 2) the optical receiver is at a second end of the free space chamber opposite the first end and is configured to receive the modulated light transmitted by the optical transmitter into the free space chamber.
a first end plate secured to a first end flange of the housing, a second end plate secured to a second end flange of the housing,
(claim 7) a first end plate secured to a first end flange of the housing… a second end plate secured to a second end flange of the housing
a first elastic material in the first end plate and located to compress against the first end flange of the housing when the first end plate is secured to the first end flange of the housing, and
a second elastic material in the second end plate and configured to compress against the second end flange of the housing when the second end plate is secured to the second end flange of the housing;
(claim 7) a first O-ring in the first end plate and located to compress against the first end flange of the housing when the first end plate is secured to the first end flange of the housing; and
a second O-ring within the second end plate and located to compress against the second end flange of the housing when the second end plate is secured to the second end flange of the housing;
wherein the first elastic material and the second elastic material hermetically seal the optical transmitter and the optical receiver within the housing.
(claim 7) wherein the first and second O-rings hermetically seal the optical transmitter and the optical receiver within the housing.
Claim 2 is anticipated by claim 2 of ‘398
Claim 3 is identical to claim 3 of ‘398
Claim 4 is identical to claim 4 of ‘398
Claim 5 is identical to claim 11 of ‘398
Claim 6 is identical to claim 5 of ‘398
Claim 7 is identical to claim 6 of ‘398
Claim 8 is anticipated by claim 1 of ‘398
Claim 9 is identical to claim 8 of ‘398
Claim 10 is identical to claim 9 of ‘398
Claim 11 is identical to claim 12 of ‘398
Claim 12 is identical to claim 13 of ‘398
Claim 13 is identical to claim 14 of ‘398
Claim 14 is identical to claim 15 of ‘398
Claim 15 is identical to claim 16 of ‘398
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6, 8-9, 11 and 13-18 of U.S. Patent No. 11,690,495 (henceforth ‘495). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the present application Claim 16 of ‘495, unless noted
A system comprising: a first electrical circuit configured to provide data; a second electrical circuit electrically isolated from the first electrical circuit; and
A medical system comprising: a first electrical circuit… configured to provide data; a second electrical circuit… electrically isolated from the first electrical circuit
a free space optics interface assembly comprising: a housing defining a free space chamber in the housing,
a free space optics interface assembly comprising a housing defining a free space chamber in the housing
an optical transmitter in the housing at a first end of the free space chamber, the optical transmitter electrically coupled to the first electrical circuit and configured to optically transmit modulated light representative of the data into the free space chamber,
an optical receiver in the housing at a second end of the free space chamber opposite the first end, the optical receiver electrically coupled to the second electrical circuit and configured to receive the modulated light transmitted into the free space chamber,
an optical transmitter in the housing at a first end of the free space chamber, the optical transmitter having input pins that are electrically coupled to the first electrical circuit … and configured to optically transmit modulated light representative of the data into the free space chamber
an optical receiver in the housing at a second end of the free space chamber opposite the first end, the optical receiver having output pins that are electrically coupled to the second electrical circuit and configured to receive the modulated light transmitted into the free space chamber,
a first end plate secured to a first end flange of the housing, a second end plate secured to a second end flange of the housing,
a first end plate secured to a first end flange of the housing …
a second end plate secured to a second end flange of the housing
a first elastic material in the first end plate and located to compress against the first end flange of the housing when the first end plate is secured to the first end flange of the housing, and
a second elastic material in the second end plate and configured to compress against the second end flange of the housing when the second end plate is secured to the second end flange of the housing;
a first O-ring in the first end plate and located to compress against the first end flange of the housing when the first end plate is secured to the first end flange of the housing, and a second O-ring in the second end plate and configured to compress against the second end flange of the housing when the second end plate is secured to the second end flange of the housing
wherein the first elastic material and the second elastic material hermetically seal the optical transmitter and the optical receiver within the housing.
wherein the first and second O-rings hermetically seal the optical transmitter and the optical receiver within the housing.
Claim 2 is anticipated by claim 18 of ‘495, and by claim 1 of ‘495
Claim 3 is identical to by claim 3 of ‘495
Claim 4 is identical to claim 4 of ‘495
Claim 5 is identical to claim 11 of ‘495
Claim 6 is identical to claim 17 of ‘495
Claim 7 is identical to claim 6 of ‘495
Claim 8 is anticipated by claim 16 of ‘495
Claim 9 is identical to claim 8 of ‘495
Claim 10 is identical to claim 9 of ‘495
Claim 11 is anticipated by claim 16 of ‘495
Claim 12 is anticipated by claim 18 of ‘495
Claim 13 is anticipated by claim 18 of ‘495, and identical to claim 13 of ‘495
Claim 14 is identical to claim 14 of ‘495
Claim 15 is identical to claim 15 of ‘495
Allowable Subject Matter
Claims 1-15 would be allowable if the double patenting rejections set forth in this Office action are overcome.
The following is an examiner’s statement of reasons for allowance: The prior art fails to teach, among other features, a system comprising: an optocoupler and first and second circuits, the circuits electrically isolated from each other,
the optocoupler comprising a housing with a chamber therein, an optical transmitter and an optical receiver configured to be in optical communication with the optical transmitter through the chamber, the optical receiver electrically coupled to the second circuit,
the transmitter in the housing at one end of the chamber, wherein the transmitter is electrically coupled to the first circuit and is configured to optically transmit modulated light representative of data provided by the first circuit into the chamber,
the receiver at an other end of the chamber, the other end opposite the one end, the receiver configured to receive the modulated light,
first and second endplates respectively secured to first and second end flanges of the housing, the endplates having openings through which the pins of the transmitter and receiver respectively extend, elastic materials compressed against the respective end flanges so as to hermetically seal the transmitter and receiver within the housing.
Herring et al. (US 4,024,501) teaches an optocoupler having an optical transmitter electrically coupled to a first circuit, an optical receiver electrically coupled to a second circuit, and the circuits are electrically isolated from each other.
Engel et al. (US 2001/0048254 teaches an optocoupler having an optical transmitter electrically coupled to a first circuit, an optical receiver electrically coupled to a second circuit, and the circuits are electrically isolated from each other.
Guenter et al. (US 2008/0187013) teaches the above circuits, and the above optocoupler except for the endplates, flanges and elastic materials, wherein the transmitter and receiver are hermetically sealed within the housing.
Tay et al. (US 2013/0313447) teaches the above circuits, and the above optocoupler except for the endplates, flanges and elastic materials, wherein the transmitter and receiver are hermetically sealed within the housing.
There is no reason or suggestion provided in the prior art to modify the above prior art to teach the limitations as claimed above, and the only reason to modify the references would be based on Applicant's disclosure, which is impermissible hindsight reasoning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Engel et al. (US 2001/0048254)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON B FAIRCHILD whose telephone number is (571)270-5276. The examiner can normally be reached 8:30am-5pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Carey can be reached at (571) 270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON B FAIRCHILD/Primary Examiner, Art Unit 3795
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