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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-2 and 4-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, while original claim 12 recites “the water container is a toilet tank,” and paragraph [0060] of the as-filed specification describes “The electrical energy extraction device 103 may include a first plate on the inside of the tank 101 and a second plate on the outside of the tank 101. The water in the inside of the tank 101 may typically have a lower temperature than the air in the ambient environment of the toilet 1100 and the tank 101. A current is provided from the electrical energy extraction device 103 in response to the difference in temperature”; the as-filed specification does not describe a toilet tank comprising a water passage within the toilet tank and configured to hold water; a first plate within the water passage of the toilet tank, and a second plate outside of the water passage, wherein a voltage between the first plate and the second plate is generated based on a difference between a temperature of the water in the water passage and an ambient temperature outside of the toilet tank, as recited in claim 1. Claims 2 and 4-9 are rejected due to their respective dependence on claim 1.
Claims 2 and 4-9 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. Specifically, claims 2 and 4-9 recite “the plumbing fixture,” however, there is insufficient antecedent basis for this limitation in the claim(s).
Claims 96-97 and 99-103 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, while original claim 12 recites “the water container is a toilet tank,” and paragraph [0060] of the as-filed specification describes “The electrical energy extraction device 103 may include a first plate on the inside of the tank 101 and a second plate on the outside of the tank 101. The water in the inside of the tank 101 may typically have a lower temperature than the air in the ambient environment of the toilet 1100 and the tank 101. A current is provided from the electrical energy extraction device 103 in response to the difference in temperature”; the as-filed specification does not describe a toilet tank comprising a water passage within the toilet tank and configured to hold water; wherein a voltage between the first plate and the second plate is generated based on a difference between a temperature of the water in the water passage and an ambient temperature, as recited in claim 96. Claims 97 and 99-103 are rejected due to their respective dependence on claim 96.
Claims 96-97 and 99-103 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. Specifically, claim 96 recites a toilet tank comprising: a water passage within the toilet tank and configured to hold water; a first plate within the toilet tank; and a second plate external to the toilet tank, rendering the claim indefinite because the manner in which the toilet tank comprises a second plate external to the toilet tank is unclear. Claims 97 and 99-103 are rejected due to their respective dependence on claim 96.
Claims 97 and 99-103 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. Specifically, claims 97 and 99-103 recite “the water consuming application,” however, there is insufficient antecedent basis for this limitation in the claim(s).
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-7, 9, 96-97 and 99-102 are rejected under 35 U.S.C. 103 as being unpatentable over Qi et al. (CN 205205915, see attached machine translation) in view of Griffiths et al. (US 2022/0320407).
Regarding claim 1, Qi discloses a toilet tank ([0008]).
While Qi does disclose a thermoelectric generator ([0017; 7 in Fig. 1), Qi does
not explicitly disclose a first plate within the toilet tank and a second plate outside of the toilet tank, wherein a voltage between the first plate and the second plate is generated based on a difference between a temperature of the water in the toilet tank and an ambient temperature outside of the toilet tank.
Griffiths discloses an apparatus for generating an electrical current from a temperature differential in an ablutionary fitting (abstract) and further discloses a first plate within having a projection configured to directly contact water carried in a first region of the fitting ([0011], heat transfer plate; 43 in Fig. 4), and a second plate ([0105]; the disclosed housing satisfies the limitation “a second plate”), wherein a voltage between the first plate and the second plate is generated based on a difference in temperature ([0105]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to achieve the thermoelectric energy generation of Qi using an ablutionary fitting, as disclosed by Griffiths, because as evidenced by Griffiths, generating electrical current from a temperature differential in an ablutionary fitting amounts to the use of a known component in the art for its intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when achieving the thermoelectric energy generation of Qi with an ablutionary fitting based on the teaching of Griffiths.
With regard to the location of the ablutionary fitting of modified Qi, it would have been obvious to one of ordinary skill in the art to place the ablutionary fitting of modified Qi in any location in the bathroom water circulation system, including the toilet tank, because such a modification amounts to the selection from among known designs for the extraction of thermoelectric energy from ablutionary systems.
Additionally, relocation of the thermoelectric device in the ablutionary system of modified Qi amounts to a rearrangement of parts, and it has been held that rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70 and since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, In re Einstein, 8 USPQ 167.
It is noted that with regard to the limitation “the second plate outside of the toilet tank,” it would have been obvious to one of ordinary skill in the art at the time the invention was filed to place the ablutionary fitting of modified Xi such that the housing of the ablutionary fitting is outside of the toilet tank because such a modification amounts to the rearrangement of parts of an invention, and it has been held that rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70 and since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, In re Einstein, 8 USPQ 167.
It is further noted that with regard to the limitation “wherein a voltage between the first plate and the second plate is generated based on a difference between a temperature of the water in the water passage and an ambient temperature outside of the toilet tank,” the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claim 96, Qi discloses a water consuming appliance comprising a toilet tank ([0008]).
While Qi does disclose a thermoelectric generator ([0017; 7 in Fig. 1), Qi does
not explicitly disclose a first plate within the toilet tank and a second plate outside of the toilet tank, wherein a voltage between the first plate and the second plate is generated based on a difference between a temperature of the water in the toilet tank and an ambient temperature outside of the toilet tank.
Griffiths discloses an apparatus for generating an electrical current from a temperature differential in an ablutionary fitting (abstract) and further discloses a first plate within having a projection configured to directly contact water carried in a first region of the fitting ([0011], heat transfer plate; 43 in Fig. 4), and a second plate ([0105]; the disclosed housing satisfies the limitation “a second plate”), wherein a voltage between the first plate and the second plate is generated based on a difference in temperature ([0105]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to achieve the thermoelectric energy generation of Qi using an ablutionary fitting, as disclosed by Griffiths, because as evidenced by Griffiths, generating electrical current from a temperature differential in an ablutionary fitting amounts to the use of a known component in the art for its intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when achieving the thermoelectric energy generation of Qi with an ablutionary fitting based on the teaching of Griffiths.
With regard to the location of the ablutionary fitting of modified Qi, it would have been obvious to one of ordinary skill in the art to place the ablutionary fitting of modified Qi in any location in the bathroom water circulation system, including the toilet tank, because such a modification amounts to the selection from among known designs for the extraction of thermoelectric energy from ablutionary systems.
Additionally, relocation of the thermoelectric device in the ablutionary system of modified Qi amounts to a rearrangement of parts, and it has been held that rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70 and since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, In re Einstein, 8 USPQ 167.
It is noted that with regard to the limitation “the second plate outside of the toilet tank,” it would have been obvious to one of ordinary skill in the art at the time the invention was filed to place the ablutionary fitting of modified Xi such that the housing of the ablutionary fitting is outside of the toilet tank because such a modification amounts to the rearrangement of parts of an invention, and it has been held that rearranging parts of an invention involves only routine skill in the art while the device having the claimed dimensions would not perform differently than the prior art device, In re Japikse, 86 USPQ 70 and since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, In re Einstein, 8 USPQ 167.
It is further noted that with regard to the limitation “wherein a voltage between the first plate and the second plate is generated based on a difference between a temperature of the water in the water passage and an ambient temperature,” the limitation is directed to the manner in which the apparatus is intended to be used, and a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claims 2 and 97, modified Qi discloses all the claim limitations as set forth above. Modified Qi further discloses the first plate is formed from a first metal and the second plate is formed from a second metal (Griffiths – [0127]).
Regarding claims 4 and 99, modified Qi discloses all the claim limitations as set forth above. Modified Qi further discloses a battery configured to store charge from the voltage between the first plate and the second plate (Griffiths – [0091]).
Regarding claims 5 and 100, modified Qi discloses all the claim limitations as set forth above.
With regard to the limitation “a wireless radio operable from current induced from the voltage between the first and second plates,” the limitation is directed to the manner in which the apparatus is intended to be used, and it is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. See MPEP 2111.02, 2112.01 and 2114-2115.
Regarding claims 6 and 101, modified Qi discloses all the claim limitations as set forth above. Modified Qi further discloses a controller configured to receive a user input and activate an electrical component from current induced from the voltage between the first plate and the second plate in response to the user input (Griffiths – [0114] discloses a switch controlling LEDs).
Regarding claims 7 and 102, modified Qi discloses all the claim limitations as set forth above. Modified Qi further discloses an indicator operable from current induced from the voltage between the first and second plates (Griffiths – [0113], [0114], [0118]).
Regarding claim 9, modified Qi discloses all the claim limitations as set forth above. Modified Qi further discloses a switch configured to activate an electrical component from current induced from the voltage between the first plate and the second plate (Griffiths – [0114]).
Claims 8 and 103 are rejected under 35 U.S.C. 103 as being unpatentable over Qi et al. (CN 205205915) in view of Griffiths et al. (US 2022/0320407) as applied to claims 1 and 96, and further in view of Korea Institute of Civil Engineering and Building (KR 102527203B1, see previously attached machine translation, hereinafter referred to as Korea Institute).
Regarding claims 8 and 103, modified Qi discloses all the claim limitations as set forth above.
Modified Qi does not explicitly disclose a conditioning circuit.
Korea Institute discloses a thermoelectric power generation apparatus (abstract) and further discloses a conditioning circuit ([0048],[0049]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to include a conditioning circuit, as disclosed in Korea Institute, in the circuitry of modified Qi, because as evidenced by Korea Institute, including a conditioning circuit in the circuitry of a thermoelectric power generation apparatus amounts to the use of a known component in the art for its intended purpose to achieve an expected result, and one skilled in the art would have a reasonable expectation of success when including a conditioning circuit in the circuitry of modified Qi based on the teaching of Korea Institute.
Relevant Prior Art
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Campbell et al. "Energy-harvesting thermoelectric sensing for unobtrusive water and appliance metering.”
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 4-9, 96-97, and 99-103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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 TAMIR AYAD whose telephone number is (313) 446-6651. The examiner can normally be reached Monday - Friday, 8:30am - 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Barton can be reached at (571) 272-1307. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/TAMIR AYAD/ Primary Examiner, Art Unit 1726
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