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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "7" and "20" have both been used to designate a “box closure piece”.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “stator poles on stator sidewall 6” (¶[0082]).
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 7 is objected to because of the following informalities:
Change “axel” to –axle--. Appropriate correction is required.
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.
Claim 12 is 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.
Recitation “wherein the plurality of stator poles are in a first group of linearly arranged stator poles and a second group of linearly arranged stator poles, wherein the first and second group are not co-linear” is not described in the specification. To the extent this refers to structure shown in Fig.6 where “poles” [sic] of one sidewall 6 are circumferentially-offset relative to those of the other side wall, the scope of the claim language encompasses more than this, e.g., sidewalls which are not parallel to each other.
Claims 1-15 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.
In claim 1, recitation “a panel spanning the edge of each side wal[l] and interlocking with the stator pole” is vague and not idiomatic. Presumably this refers to box closure piece” 7/20 that spans between the edge of each stator side wall 6 (Figs.2-3&11).
Recitation “a housing having two side walls coupled by an axle…; a first plate disposed between the side walls and coupled to the axle…” The claimed “coupling” is vague and indefinite. The nature of the axle 1 coupling between the stator side walls 6 is different from the coupling between the first rotor plate 3 and the axle 1 (Fig.4). That is, the axle appears to couple the rotor plates in that they form a unitary piece, whereas the axle couples to the stator housing side walls in the sense of allowing relative motion between the rotor axle and the stator when the rotor rotates.
In claim 12, recitation “wherein the plurality of stator poles are in a first group of linearly arranged stator poles and a second group of linearly arranged stator poles, wherein the first and second group are not co-linear” is vague and indefinite.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 1-11 & 12-14, as best understood, are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No 12,184,144 (‘the Patent’). Although the claims at issue are not identical, they are not patentably distinct from each other as shown by the following side-by-side comparison:
Claim 1 of the Application
An electric device comprising:
a housing having two side walls coupled by an axle, each side wall having a stator pole at an edge of the side wall;
a wire strung between the stator pole of each side wall;
a panel spanning the edge of each side walls and interlocking with the stator pole;
a first plate disposed between the side walls and coupled to the axle; and
a magnet disposed at an edge of the first plate proximal to the wire.
Claim 1 of the Patent:
An electric device comprising:
a housing having a first outer wall and a second outer wall; an axle spanning between …the first and second outer walls; wherein each outer wall has 1) a plurality of stator poles…;
a wire strung between a stator pole of the first outer wall and a stator pole of the second outer wall…;
a panel spanning between the edge of each outer wall; wherein the panel is configured to interlock with the plurality of stator poles…;
a first rotor plate disposed between the outer walls, the axle passing through the first rotor plate; and
a magnet disposed at an edge of the first rotor plate proximal to the wire…;
Regarding claim 2, the language is encompassed by the language of “a wire strung between a stator pole of the first outer wall and a stator pole of the second outer wall in a zig-zag pattern” in claim 1 of the Patent.
Regarding claim 3, the language is encompassed by claim 2 of the Patent.
Regarding claim 4, the language is encompassed by claim 3 of the Patent.
Regarding claim 5, the language is encompassed by claim 4 of the Patent.
Regarding claim 6, the language is encompassed by claims 1 & 5 of the Patent.
Regarding claim 7 , the language is encompassed by claim 6 of the Patent.
Regarding claim 8, the language is encompassed by claim 7 of the Patent.
Regarding claim 9, the language is encompassed by claim 8 of the Patent.
Regarding claim 10, the language is encompassed by claim 10 of the Patent.
Regarding claim 11, the language is encompassed by claim 11 of the Patent.
Regarding claim 13 , the language is encompassed by the “plurality of panels” in claim 5 of the Patent.
Regarding claim 14, the language is encompassed by claims 6-7 & 9 of the Patent.
Claim 15 is rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 & 12 of the Patent in view of obvious design.
Regarding claim 15, the language is encompassed by claim 12 of the Patent except for a “plurality” of panels. But, simply duplicating elements of an invention would have been obvious before the effective filing date as a matter of obvious design.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BURTON S MULLINS whose telephone number is (571)272-2029. The examiner can normally be reached 9-5. 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, Tulsidas C Patel can be reached at 571-272-2098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BURTON S MULLINS/Primary Examiner, Art Unit 2834
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