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 .
DETAILED ACTION
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.
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Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12580132. Although the claims at issue are not identical, they are not patentably distinct from each other because they are simply broader versions of the same claims.
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.
Claim(s) 16-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stockman et al (US 2015/0022991) “Stockman 991” in view of Stockman et al (US 11424077) “Stockman 077”.
The examiner notes that Claims 16 and 20 have an effective filing date of 01/14/2019, corresponding to filing of provisional application number 62/792,187, because the earlier applications do not support the cable-tied magnetic element embodiment recited. No 102(b)(2) exception has been invoked for Stockman ‘077.
In order to invoke common ownership to except a disclosure as prior art, the applicant (or the patent owner) must provide a statement that the disclosure of the subject matter on which the rejection is based and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention. The statement should either be on or begin on a separate sheet and must not be directed to other matters (37 CFR 1.4(c) ). The statement must be signed in accordance with 37 CFR 1.33(b).
Regarding claim 16 (which inherits the language of claim 2), Stockman ‘991 discloses [figs. 28 and 29] an apparatus (300) providing a plurality of selectable capacitance values [0126], the apparatus comprising: a plurality of capacitive devices (320)(321)(322) providing at least three capacitors each having a capacitance value [“capacitive elements” of 25 µF, 20 µF, and 10µF, respectively; paras. 0125 - 0126], each of the plurality of capacitive devices having a first capacitor terminal (40b)(41b)(42b) [respectively, “section terminal”; para. 0126]; a case (60) [para. 0125] receiving the plurality of capacitive devices; a cover assembly (80) [“interrupter cover assembly”; para. 0125] comprising: a cover (82) [“deformable circular cover”; para. 0082] mountable to the case [at cylindrical skirt (84); para. 0082], a common cover terminal (88) [para. 0128] having a contact extending from the cover [upstanding blade, as shown], three capacitor cover terminals (90)(91)(92) [para. 0126; see also Fig. 1], each corresponding to one of the at least three capacitors provided by the plurality of capacitive devices and each having at least one contact extending from the cover [upstanding blades, as shown], and three insulation structures (110), wherein each is configured to provide insulation for at least one of the three capacitor cover terminals [“insulator cups” not labelled in fig. 28, but as in figs. 1, 2, and 10; para. 0083]; and a plurality of conductors (50b)(51b)(52b)(104)(56) [conductors, terminal posts having distal ends (105) welded to foil tabs, in analogy with figs. 8 and 9; paras. 0083, 0088, and 0126; “52c” is a typo], wherein each conductor electrically connects one capacitor cover terminal (90)(91)(92) to its corresponding capacitive device of the plurality of capacitive devices (320)(321)(322), at least some of the conductors being frangibly connected to a respective capacitor cover terminal [to disconnect upon a pressure event as in fig. 24; para. 0112]; and wherein the apparatus may be connected to provide selected capacitance values in an electric circuit by attaching selected ones of the common cover terminal and capacitor cover terminals to conductors of the electrical circuit [paras. 0014, 0025, 0102].
Thus, Stockman ‘991 discloses the invention substantially as claimed. However, Stockman ‘991 does not disclose a monolithic magnetic element is configured to be positioned at an exterior of the case [inherited from base claim 19], wherein the monolithic magnetic element comprises a recess for receiving a cable tie to assist in holding the monolithic magnetic element to the case, as recited in claim 33.
In the same field of endeavor, Stockman ‘077 teaches a capacitor having external connections for providing a selectable capacitance value [fig. 2; col. 2, lines 1 -8]. Referring to figures 12A – 12C, Stockman ‘077 teaches a replacement capacitor unit (1200) having a monolithic magnetic element (1202) configured to be positioned at an exterior of the case (1212) [col. 20, lines 44 – 50], wherein the monolithic magnetic element comprises a recess (1204) for receiving a cable tie (1206) to assist in holding the monolithic magnetic element to the case [col. 20, lines 50 - 57]. Stockman ‘077 teaches that provision of a magnetic element in combination with the capacitor may provide sufficient magnetic attraction with the magnetically attractive mounting surface of an appliance (such as an air conditioner) to permit the capacitor to be mounted in the appliance at its intended mounting position, without being dislodged [col. 21, lines 16 – 26]. Stockman ‘077 further teaches that provision of a recess for receiving a cable tie prevents the magnetic element from sliding up and down the case, and permits the magnetic element to be secured to a case that is not sufficiently magnetically attractive to hold the element [col. 20, lines 57 – 67].
Since Stockman ‘991 disclose an intended use for replacement of air conditioner capacitors [para. 0109], it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to provide the selectable capacitance apparatus of Stockman ‘991 with a monolithic magnetic element configured to be positioned at an exterior of the case (60), wherein the monolithic magnetic element comprises a recess for receiving a cable tie to assist in holding the monolithic magnetic element to the case in the interest of permitting the apparatus to be mounted to a magnetically attractive surface of the appliance into which it is to be installed, even where the case does not have sufficient magnetic attraction, as taught by Stockman ‘077.
Regarding claim 19 (which inherits the language of claim 36), Stockman ‘991 discloses a system comprising: an apparatus (300) [figs. 28 and 29] providing a plurality of selectable capacitance values [0126], the apparatus comprising: a plurality of capacitive devices (320)(321)(322) providing at least three capacitors each having a capacitance value [“capacitive elements” of 25 µF, 20 µF, and 10µF, respectively; paras. 0125 - 0126], each of the plurality of capacitive devices having a first capacitor terminal (40b)(41b)(42b) [respectively, “section terminal”; para. 0126]; a case (60) [para. 0125] receiving the plurality of capacitive devices, a cover assembly (80) [“interrupter cover assembly”; para. 0125] comprising: a cover (82) [“circular cover”; para. 0082] mountable to the case [at cylindrical skirt (84); para. 0082], a common cover terminal (88) [para. 0128] having a contact extending from the cover [upstanding blade, as shown], three capacitor cover terminals (90)(91)(92) [para. 0126; see also Fig. 1], each corresponding to one of the at least three capacitors provided by the plurality of capacitive devices and each having at least one contact extending from the cover [upstanding blades, as shown], and three insulation structures (110), wherein each is configured to provide insulation for at least one of the three capacitor cover terminals [“insulator cups” not labelled in fig. 28, but as in figs. 1, 2, and 10; para. 0083]; and a plurality of conductors (50b)(51b)(52b)(104)(56) [conductors, terminal posts having distal ends (105) welded to foil tabs, in analogy with figs. 8 and 9; paras. 0083, 0088, and 0126; “52c” is a typo], wherein each conductor electrically connects one capacitor cover terminal (90)(91)(92) to its corresponding capacitive device of the plurality of capacitive devices (320)(321)(322), at least some of the conductors being frangibly connected to a respective capacitor cover terminal [to disconnect upon a pressure event as in fig. 24; para. 0112].
Thus, Stockman ‘991 discloses the invention substantially as claimed. However, Stockman ‘991 does not disclose a monolithic magnetic element is configured to be positioned at an exterior of the case, wherein the monolithic magnetic element comprises a curved surface having a shape that substantially matches a shape of the exterior of the case, and a flat surface opposite the curved surface; [inherited from base claim 36], wherein the monolithic magnetic element comprises a recess for receiving a cable tie to assist in holding the monolithic magnetic element to the case, as recited in claim 37.
In the same field of endeavor, Stockman ‘077 teaches a capacitor having external connections for providing a selectable capacitance value [fig. 2; col. 2, lines 1 -8]. Referring to figures 12A – 12C, Stockman ‘077 teaches a replacement capacitor unit (1200) having a monolithic magnetic element (1202) configured to be positioned at an exterior of the case (1212) [col. 20, lines 44 – 50], the monolithic magnetic element comprising a curved surface (1208) having a shape that substantially matches a shape of the exterior of the case [col. 21, lines 46 – 48], and a flat surface (1210) opposite the curved surface [col. 21, lines 9 - 10] wherein the monolithic magnetic element comprises a recess (1204) for receiving a cable tie (1206) to assist in holding the monolithic magnetic element to the case [col. 20, lines 50 - 57]. Stockman ‘077 teaches that providing the capacitor with a magnetic element having a flat surface, may provide sufficient magnetic attraction with the magnetically attractive flat mounting surface of an appliance [such as an air conditioner; col. 21, lines 11 – 14]) to permit the capacitor to be mounted in the appliance at its intended mounting position, without being dislodged [col. 21, lines 16 – 26]. Stockman ‘077 further teaches that providing a recess for receiving a cable tie prevents the magnetic element from sliding up and down the case, and permits the magnetic element to be secured to a case that is not sufficiently magnetically attractive to hold the element [col. 20, lines 57 – 67]. One skilled in the art would have appreciated that providing the magnetic element with a curved surface substantially matching the outer surface of the case provides an interface with greater surface area and results in a snugger, more stable attachment of the magnetic element.
Since Stockman ‘991 disclose an intended use for replacement of air conditioner capacitors [para. 0109], it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to provide the selectable capacitance apparatus of Stockman ‘991 with a monolithic magnetic element configured to be positioned at an exterior of the case (60), ], the monolithic magnetic element comprising a curved surface having a shape that substantially matches a shape of the exterior of the case, and a flat surface opposite the curved surface, wherein the monolithic magnetic element comprises a recess for receiving a cable tie to assist in holding the monolithic magnetic element to the case in the interest of permitting the apparatus to be mounted to a magnetically attractive surface of the appliance into which it is to be installed, even where the case does not have sufficient magnetic attraction as taught by Stockman ‘077, and in the interest of permitting the magnetic element to be more securely fastened to the capacitor.
Regarding claim 17, Stockman ‘991, as modified by Stockmann ‘077, further teaches that the monolithic magnetic element comprises a projection (Fig. 13, 1314) that comprises the curved surface (Fig. 13, 1308).
Regarding claim 18, Stockman ‘991, as modified by Stockmann ‘077, further teaches that the monolithic magnetic element comprises a flat surface (Fig. 13, 1310) opposite the curved surface (Fig. 13).
Allowable Subject Matter
Claims 2-16, 19, and 21 would be allowed if the above double patenting rejection is overcome.
The following is an examiner’s statement of reasons for allowance:
Regarding independent claim 2, the prior art fails to teach or suggest, alone or in combination:
An apparatus providing a plurality of selectable capacitance values, the apparatus comprising: a plurality of capacitive devices providing at least three capacitors each having a capacitance value, each of the plurality of capacitive devices having a first capacitor terminal; a case receiving the plurality of capacitive devices; a cover assembly comprising: a cover mountable to the case, a common cover terminal having a contact extending from the cover, three capacitor cover terminals, each corresponding to one of the at least three capacitors provided by the plurality of capacitive devices and each having at least one contact extending from the cover, and three insulation structures, wherein each is configured to provide insulation for at least one of the three capacitor cover terminals; and a plurality of conductors, wherein each conductor electrically connects one capacitor cover terminal to its corresponding capacitive device of the plurality of capacitive devices, at least some of the conductors being frangibly connected to a respective capacitor cover terminal; wherein a monolithic magnetic element is configured to be positioned at an exterior of the case; and wherein the apparatus may be connected to provide selected capacitance values in an electric circuit by attaching selected ones of the common cover terminal and capacitor cover terminals to conductors of the electrical circuit.
Specifically, The prior art fails to teach or make obvious, alone or in combination, the limitation of “a cover assembly comprising: a cover mountable to the case, a common cover terminal having a contact extending from the cover, three capacitor cover terminals, each corresponding to one of the at least three capacitors provided by the plurality of capacitive devices and each having at least one contact extending from the cover, and three insulation structures, wherein each is configured to provide insulation for at least one of the three capacitor cover terminals; and a plurality of conductors, wherein each conductor electrically connects one capacitor cover terminal to its corresponding capacitive device of the plurality of capacitive devices, at least some of the conductors being frangibly connected to a respective capacitor cover terminal; wherein a monolithic magnetic element is configured to be positioned at an exterior of the case; and wherein the apparatus may be connected to provide selected capacitance values in an electric circuit by attaching selected ones of the common cover terminal and capacitor cover terminals to conductors of the electrical circuit” in combination with the other claim limitations.
Regarding independent claim 19, the prior art fails to teach or suggest, alone or in combination:
A system comprising: an apparatus providing a plurality of selectable capacitance values, the apparatus comprising: a plurality of capacitive devices providing at least three capacitors each having a capacitance value, each of the plurality of capacitive devices having a first capacitor terminal, a case receiving the plurality of capacitive devices, a cover assembly comprising: a cover mountable to the case; a common cover terminal having a contact extending from the cover; three capacitor cover terminals, each corresponding to one of the at least three capacitors provided by the plurality of capacitive devices and each having at least one contact extending from the cover; and three insulation structures, wherein each is configured to provide insulation for at least one of the three cover terminals, and a plurality of conductors, wherein each conductor electrically connects one capacitor cover terminal to its corresponding capacitive device of the plurality of capacitive devices, at least some of the conductors being frangibly connected to a respective capacitor cover terminal; and a monolithic magnetic element configured to be positioned at an exterior of the case, wherein the monolithic magnetic element comprises a curved surface having a shape that substantially matches a shape of the exterior of the case, and a flat surface opposite the curved surface.
Specifically, The prior art fails to teach or make obvious, alone or in combination, the limitation of “a cover assembly comprising: a cover mountable to the case; a common cover terminal having a contact extending from the cover; three capacitor cover terminals, each corresponding to one of the at least three capacitors provided by the plurality of capacitive devices and each having at least one contact extending from the cover; and three insulation structures, wherein each is configured to provide insulation for at least one of the three cover terminals, and a plurality of conductors, wherein each conductor electrically connects one capacitor cover terminal to its corresponding capacitive device of the plurality of capacitive devices, at least some of the conductors being frangibly connected to a respective capacitor cover terminal; and a monolithic magnetic element configured to be positioned at an exterior of the case, wherein the monolithic magnetic element comprises a curved surface having a shape that substantially matches a shape of the exterior of the case, and a flat surface opposite the curved surface” in combination with the other claim limitations.
Cited Prior Art
Horiuchi et al (US 6410184) teaches relevant art in Fig. 2.
Muranaka et al (US 4009425) teaches relevant art in Fig. 1-12.
Agnes et al (US 620689) teaches relevant art in Fig. 2.
Stockman et al (US 9859060) teaches relevant information in claims 1-19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P MCFADDEN whose telephone number is (571)270-5649. The examiner can normally be reached M-Thur 8am-9pm PST.
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/MICHAEL P MCFADDEN/ Primary Examiner, Art Unit 2848
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