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 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 15, 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite.
Claims 15 recites “the watertight cavity.” This term lacks antecedent basis, and is being interpreted as referring to the “watertight compartment” disclosed in Claim 1.
Claim 20 recites “the thumbwheel.” This term lacks antecedent basis, and is being interpreted as referring to the “thumbwheel” disclosed in Claim 6.
These claims should be amended to resolve these antecedent basis issues, consistent with the Specification.
Double Patenting Rejections
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 1-25 are rejected as being unpatentable over Montague (U.S. Patent 12,246,811 B2).
Claims 1, 4 are rejected on the grounds of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 12,246,811. Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 1 of the Instant application states: a wireless remote controller comprising:
A watertight body forming a watertight compartment;
A throttle control body disposed on the watertight body and outside of the watertight compartment, wherein the throttle control body is movable relative to the watertight body;
At least one magnet affixed to the throttle control body such that the at least one magnet moves with the throttle control body relative to the watertight body;
A magnetic sensor disposed within the watertight compartment configured to produce magnetic field data in a first direction and a second direction perpendicular to the first direction;
A processor disposed within the watertight compartment and operably coupled to the magnetic sensor, the processor configured to determine a position of the throttle control body relative to the watertight body from the magnetic field data based at least in part on an angle of magnetic flux between the first direction and the second direction, the processor generating a control signal based at least in part on the determined position of the throttle control body; and
Communication circuitry operably coupled to the processor configured to communicate control signals to a remote device.
Claim 4 states wherein the processor is further configured to calculate the angle of magnetic flux between the first direction and the second direction, and wherein to determine the position of the throttle control body relative to the watertight body includes determining an angular position of the throttle control body relative to the watertight body based at least in part on the angle of magnetic flux between the first direction and the second direction.
Claim 1 of the reference teaches a wireless remote controller for a personal watercraft, the remote controller comprising:
A watertight body forming a watertight compartment;
A thumbwheel disposed on an upper surface of the watertight body and outside of the watertight compartment, the thumbwheel defining an axis of rotation, wherein the thumbwheel is rotatable about the axis relative to the watertight body;
One or more magnets affixed to the thumbwheel such that the one or more magnets rotate with the thumbwheel relative to the watertight body;
A magnetic sensor disposed within the watertight compartment configured to output magnetic field data in a first direction and magnetic field data in a second direction perpendicular to the first direction;
A processor disposed within the watertight compartment and operably coupled to the magnetic sensor, the processor configured to calculate an angle of magnetic flux between the first direction and second direction based at least in part on the magnetic field data in the first direction and magnetic field data in the second direction and determine an angular position of the thumbwheel relative to the watertight body based at least in part on the angle of magnetic flux, the processor generating a control signal based at least in part on the determined position of the thumbwheel; and
Communication circuitry operably coupled to the processor configured to communicate control signals to an associated personal watercraft.
Claims 1, 4 of the Instant Application and Claim 1 of the reference are directed to a control system for a remote device that uses a watertight body housing a control input with a plurality of input settings primarily arranged along a longitudinal axis of the watertight body, wherein inputs to the watertight body create magnetic field data that are communicated to the remote device as control signals. In Claim 1, the following terms, phrases, and limitations have been changed in the following ways:
The term “thumbwheel” in the reference has been changed to “throttle control body” in the Instant Application. However, Claims 6, 7, 20, 22 of the Instant Application disclose wherein the throttle control body includes a thumbwheel. The Examiner has interpreted the “thumbwheel 424” (Paragraph 104, Figure 9A) as being substantially similar to the “throttle control mechanism” 424 (Paragraph 104, Figure 9A).
The term “rotatable”/”rotates” in the reference has been changed to “movable”/”moves” in the Instant Application.
The term “one or more magnets” in the reference has been changed to “at least one magnet” in the Instant Application.
The phrase “output magnetic field data” in the reference has been changed to “produce magnetic field data” in the Instant Application.
The limitation “a processor disposed within the watertight compartment and operably coupled to the magnetic sensor, the processor configured to calculate an angle of magnetic flux between the first direction and second direction based at least in part on the magnetic field data in the first direction and magnetic field data in the second direction and determine an angular position of the thumbwheel relative to the watertight body based at least in part on the angle of magnetic flux, the processor generating a control signal based at least in part on the determined position of the thumbwheel” in the reference has been changed to “a processor disposed within the watertight compartment and operably coupled to the magnetic sensor, the processor configured to determine a position of the throttle control body relative to the watertight body from the magnetic field data based at least in part on an angle of magnetic flux between the first direction and the second direction, the processor generating a control signal based at least in part on the determined position of the throttle control body” in the Instant Application. Both limitations teach a processor disposed within a watertight compartment that generates control signals based on the position of an input device relative to and disposed within the watertight compartment, wherein the signals are generated based on magnetic field data created by an angle of magnetic flux between a first and second direction.
The limitation “communicate control signals to an associated personal watercraft” in the reference has been changed to “communicate control signals to a remote device” in the Instant Application. However, Claims 19, 24, 25 of the Instant Application disclose a method of controlling a personal watercraft.
Claims 2, 3, 5-18, 20, 21, 23-25 in the Instant Application are only grammatically different from their corresponding claims in the reference by adapting the claim language to correspond to the “throttle control body” disclosed in the Instant Application, rather than the “thumbwheel” taught in the reference.
Claims 19, 22 in the Instant Application use substantially different language from their corresponding claims in the reference, but are not substantially different in scope. Claim 19 in both claims sets refer to substantially the same limitations set forth in Claim 1 in both claim sets, but claim a method rather than a machine. Claim 22 in both claim sets disclose determining a lateral position of a thumbwheel along an axis of a controller.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL W ARELLANO whose telephone number is (571)270-0102. The examiner can normally be reached M-F 7:30-4:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ramon Mercado, can be reached on (571) 270-5744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL W ARELLANO/Examiner, Art Unit 3658
/ELLIS B. RAMIREZ/ Primary Examiner, Art Unit 3658
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