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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 9-15 in the reply filed on 02/18/2026 is acknowledged.
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 9-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-13 of U.S. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the Patent No. 11470910 are similar in cope to claims of the instant application.
Pending application #19006464
Patent No.11470910.
Claim 9. A motorized lacing system, comprising: a motor;
a spool, coupled to the motor, configured to spool and unspool a lace based on the turning of the motor; a processor circuit; and an optical encoder, comprising: an encoder defining a major axis and having a surface having a plurality of tabs; an optical sensor, positioned within optical range of the encoder, configured to output a signal to the processor circuit indicative of a detected one of the plurality of tabs;
and a beam break, positioned between the encoder and the optical sensor, wherein the optical sensor is positioned to view the plurality of tabs through the beam break; wherein the processor circuit is configured to operate the motor based, at least in part, on the signal as received from the optical sensor
Claim 8. A motorized lacing system, comprising: a motor, including a motor shaft;
a spool, coupled to the motor shaft, configured to spool and unspool a lace based on the turning of the motor shaft; a processor circuit; and an optical encoder, comprising: a three-dimensional encoder defining a major axis and having a surface having a plurality of tabs extending from a drum; an optical sensor, positioned within optical range of the three-dimensional encoder, configured to output a signal to the processor circuit indicative of a detected one of the plurality of tabs; and a beam break, positioned between the three-dimensional encoder and the optical sensor, forming a pair of slits, wherein the optical sensor is positioned to view the plurality of tabs through the pair of slits; wherein the processor circuit is configured to operate the motor based, at least in part, on the signal as received from the optical sensor.
10. The motorized lacing system of claim 9, wherein the optical sensor is a first optical sensor and further comprising a second optical sensor spaced apart from the first optical sensor.
9. The motorized lacing system of claim 8, wherein the optical sensor is a first optical sensor and further comprising a second optical sensor spaced apart from the first optical sensor.
Claims 9-15 are rejected on the ground of nonstatutory double patenting.
Applicant must filed terminal disclaimer to overcome the rejection as discussed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY K TRIEU whose telephone number is (571)270-3495. The examiner can normally be reached 8-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Timothy K Trieu/Primary Examiner, Art Unit 3732
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