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Applicant’s arguments regarding the restriction requirement are persuasive and the previous restriction requirement WITHDRAWN.
The confusion was a result of the inaccurate Figures wherein Figure 3 depicts the various subcomponents (control board, electronic return module) as comprising the Actuator as opposed to all of which are discrete components which can be clarified with corrected Figures.
Drawings
The drawings are objected to because Figure 3 shows the Control Board and Electronic Return Module as comprising the Actuator which does not appear to be the case. Furthermore, the Figures fail to provide the complete and accurate depiction of power and data/signal connections between the various components and instead presented what appears to be a simplistic depiction of block components with various unidentified connections and other connection missing. For example “utility power” connection is connected to the overall “Actuator” block but unclear how this achieved. And said Actuator is depicted as comprising the various components whereas it is now clear they are in fact discreet components and should be depicted as such.
New drawings are required that show: power connections and the power flow between the power components (often depicted as a solid line) and the data/communication connections between components (often shown with a dash line).
Furthermore, claimed subject matter essential to understand the invention is not show. Particularly the structure facilitating “at least one sensor (best understood as one of 314, 316, 318) configured to provide the at least one electrical parameter to the actuator (no circuitry or structure is provided to allow any of these sensor to provide such a signal to the Actuator (200) to monitor a health status (it is unclear the leap between providing a parameter to the actuator and “monitor a health status” as no circuitry to “monitor a health status” has been introduced to the claim and actuators as known in the art perform the act of actuating and not monitoring a health status so if this actuator is monitoring a health status it would be via additional health monitoring circuitry that has not been claimed as of yet) of the backup power to the actuator upon occurrence of a power event”
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The Specification fails to identify the structure used to perform the claim limitation of ““at least one sensor (best understood as one of 314, 316, 318) configured to provide the at least one electrical parameter to the actuator (no circuitry or structure is provided to allow any of these sensor to provide such a signal to the Actuator (200) to monitor a health status (it is unclear the leap between providing a parameter to the actuator and “monitor a health status” as no circuitry to “monitor a health status” has been introduced to the claim and actuators as known in the art perform the act of actuating and not monitoring a health status so if this actuator is monitoring a health status it would be via additional health monitoring circuitry that has not been claimed as of yet) of the backup power to the actuator upon occurrence of a power event”
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 1-14 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.
Regarding Claim 1
The claim limitation “at least one sensor configured to provide the at least one electrical parameter to the actuator (no circuitry or structure is provided in the claim to allow said sensor to provide such a signal to the actuator) to monitor a health status (it is unclear the leap between providing a parameter to the actuator and “monitor a health status” as no circuitry to “monitor a health status” has been introduced to the claim and actuators as known in the art perform the act of actuating and not monitoring a health status so if this actuator is monitoring a health status it would be via additional health monitoring circuitry that has not been claimed as of yet) of the backup power to the actuator upon occurrence of a power event” is unintelligible and improperly narrative in that is fails to include structure to perform the desired health status monitoring thereby creating an improperly narrative claim.
The claim should either remove the health monitoring limitations or include the circuitry that performs said monitoring as well as its interconnections to said other claimed circuitry.
Regarding Claim 2-
The claim is generally narrative and indefinite, failing to conform to current U.S. practice, because the language of the claim does not provide the necessary clarity and precision required thereby making the scope of the invention sought to be patented undeterminable from the language of the claim with any reasonable degree of certainty. The claim generally recites what the apparatus does, without requisite structure to perform said claimed operation.
Particularly, the following limitations are unclear:
2. The field replaceable electronic return module of claim 1, wherein the at least one electrical parameter includes a voltage level and wherein the actuator is configured to detect whether a health status of the backup power source is below a predefined health threshold based on the voltage level; and wherein the actuator is further configured to issue an alert signal to a user device or a monitoring system in response to detecting that the health status of the backup power source is below the predefined health threshold. (no structure claimed for said apparatus claim)
3. The field replaceable electronic return module of claim 2, wherein the predefined health threshold is a threshold that indicates the backup power source is nearing an end-of-life state. (no structure claimed for said apparatus claim)
4. The field replaceable electronic return module of claim 1, wherein the preselected fail-safe position was preselected from among a plurality of fail-safe positions. (no structure claimed for said apparatus claim)
The narrative language of the claims further fails to provide a clear-cut indication of the scope of the subject matter embraced by the claim as required by MPEP 2173.05(g), and is thus indefinite. The above functional language purports to define the invention by reciting 1) a problem to be solved OR 2) a function or result achieved by the invention, thereby making the boundaries of the claim scope ambiguous and unclear. The Examiner acknowledges that an apparatus may be claimed via positively recited structure and/or through use of functional language however said function must be tied to identifiable structure/component in order for said otherwise narrative language to functionally limit said structure (see MPEP 2114), else the claim simply becomes a narrative recitation of the desired function/result achieved of the device, as with the present case. As such, it is noted per MPEP 2114 that an apparatus must be distinguished from the prior art in terms of structure rather than function noting that apparatus claims cover what a device is, not what a device does (see MPEP 2114).
Claim 6
The claim limitation “compact” is a relative term.
Regarding Claim 8
The claim method steps “wherein the at least one sense circuit is configured to provide the at least one electrical parameter to the actuator to monitor a health status of the backup power source” are unintelligible. The steps lack steps connecting providing power to the actuator (noting an actuator in the art is known to open/close actuate and any other operations therefore require said circuitry to be explicitly claimed, such as the operation of monitoring health) and that of “monitor a health status”).
Regarding Claim 9
The method step of “actuator is further configured to issue an alert signal to a user device or a monitoring system in response to detecting that the health status of the backup power source is below the predefined health threshold” directed to said “actuator” is unintelligible since actuators in the art are known to actuate (generator linear/rotary motion) and not issue alert signals unless further circuitry is provided. Therefore the claim should comprise said circuitry, such as “the actuator further comprising a controller microcontroller configured to issue an alert signal to a user device or a monitoring system in response to detecting that the health status of the backup power source is below the predefined health threshold”
Because of the great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claim(s), it is not proper to reject the present claim(s) 1-14 on the basis of prior art. (See MPEP 2173.06 and In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 15-18, and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wheeler US 2025/0343437.
Wheeler teaches:
15. An actuator for a controlled device, comprising:
a control board (26, FIGs 6 and 8);
a microcontroller (68, FIG8) mounted on the control board (26); and
a field replaceable ([0014] emphasis on “easily replaceable shrink wrapped packs”) electronic return module (20, FIGs 2 and 5) configured to be connected to the control board and having a backup power source therein (22, 24), the backup power source configured to store backup power thereon;
wherein the field replaceable electronic return module is configured to provide the backup power to the actuator upon occurrence of a power event [0013]; and
wherein the microcontroller (of said controller board) is configured to cause the actuator to move the controlled device from a current position to a preselected fail-safe position upon occurrence of the power event using the backup power (see [0025-0027, 0053]).
16. The actuator of claim 15, wherein the field replaceable electronic return module is further configured to provide a voltage level of the backup power source to the microcontroller; and wherein the microcontroller is configured to detect whether a health status of the backup power source is below a predefined health threshold based on the voltage level, and issue an alert signal to a user device or a monitoring system in response to detecting that the health status of the backup power source is below the predefined health threshold (see [0027]).
17. The actuator of claim 16, wherein the predefined threshold is a threshold that indicates the is nearing an end-of-life state (see [0027]).
18. The actuator of claim 15, wherein the preselected fail-safe position was preselected from among a plurality of fail-safe positions [0016].
20. The actuator of claim 15, wherein the field replaceable electronic return module (20, FIG 3) has a compact size and shape configured to allow the module to be inserted into a module compartment in the actuator (inside of housing of the actuator as shown in FIG5).
Claim Rejections - 35 USC § 103
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) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wheeler US 2025/0343437 in view of HJERTVIKREM US 2019/0229591.
Wheeler teaches wherein the backup power source includes batteries however fails to teach:
19. The actuator of claim 15, wherein the backup power source includes one or more supercapacitors.
HJERTVIKREM teaches a backup power source for an actuator wherein the backup power source includes one or more supercapacitors.
It would have been obvious to include the supercapacitor source as taught by HJERTVIKREM in place of or in addition to said sources of Wheeler with the motivation of its rapid response and high capacity, long cycle life and durability, compact and lightweight, low maintenance and safety, high surge capacity and particular suitability for short-term power backup.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL CAVALLARI whose telephone number is (571)272-8541. The examiner can normally be reached Mon-Fri 0900-18:30.
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, Rexford Barnie can be reached at (571)272-7492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL CAVALLARI/Primary Examiner, Art Unit 2836
Prosecution Insights