Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-16 of U.S. Application 19/065,846 filed on February 27, 2025 are presented for examination.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 12-15 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 9-12 of prior U.S. Patent No. 12265194. This is a statutory double patenting rejection.
App 19/065,846
US Pat No. 12265194
12. A stud finder, comprising: a housing; a capacitive sensor comprising at least a first electrode, the capacitive sensor configured to measure a capacitance as the housing is moved across a surface
9. A stud finder, comprising:
a housing;
a capacitive sensor comprising at least a first electrode, the capacitive sensor configured to measure a capacitance as the housing is moved across a surface;
a processor configured to receive data from the capacitive sensor and analyze the data to determine a location of the stud; an indicator configured to indicate the presence of a stud to a user;
a processor configured to receive data from the capacitive sensor and analyze the data to determine a location of the stud;
an indicator configured to indicate the presence of a stud to a user;
and wherein the stud finder comprises a charge phase in which a charging capacitor charges the capacitive sensor.
and
wherein the stud finder comprises a charge phase in which a charging capacitor charges the capacitive sensor.
Claims 13-15 are also rejected as they are identical to claims 10-12 of App No 12265194.
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 1-11 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12265194 Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1 and 8 incorporates the same limitations as 1 and 4 of US Pat No 12265194.
App 19/065,846
US Pat No 12265194
1. A stud finder, comprising: a housing; a capacitive sensor disposed in the housing and configured to detect a change in capacitance; a charging capacitor; a sampling capacitor;
1. A stud finder, comprising:
a housing;
a capacitive sensor disposed in the housing and configured to detect a change in capacitance;
a charging capacitor;
a sampling capacitor;
a charge transfer engine configured to measure a capacitive change in the capacitive sensor; and an indicator configured to indicate the presence of a stud to a user;
a charge transfer engine configured to measure a capacitive change in the capacitive sensor; and
an indicator configured to indicate the presence of a stud to a user;
wherein the stud finder is configured to have a charge phase in which the charging capacitor charges the capacitive sensor; and wherein the stud finder is configured to have a transfer phase in which charge from the capacitive sensor is transferred to the sampling capacitor
wherein the stud finder is configured to have a charge phase in which the charging capacitor charges the capacitive sensor; and
wherein the stud finder is configured to have a transfer phase in which charge from the capacitive sensor is transferred to the sampling capacitor.
wherein the capacitive sensor comprises a first electrode and a second electrode.
4. wherein the capacitive sensor comprises a first electrode and a second electrode.
App 19/065,846
US Pat No 12265194
8. A stud finder, comprising: a housing; a capacitive sensor disposed in the housing and configured to detect a change in capacitance;
1. A stud finder, comprising:
a housing;
a capacitive sensor disposed in the housing and configured to detect a change in capacitance;
a charging capacitor; a sampling capacitor; a charge transfer engine configured to measure a capacitive change in the capacitive sensor; and an indicator configured to indicate the presence of a stud to a user;
a charging capacitor;
a sampling capacitor;
a charge transfer engine configured to measure a capacitive change in the capacitive sensor; and
an indicator configured to indicate the presence of a stud to a user;
wherein the capacitive sensor comprises a first electrode and a second electrode.
4. wherein the capacitive sensor comprises a first electrode and a second electrode.
Claims 2-7 and 9-11 are also rejected as they are identical to claims 2,3,5-8 and 5,7, and 8 respectively.
Allowable Subject Matter
Claims 1-16 would be allowable if rewritten or amended to overcome the rejection(s) under (35 U.S.C. 101) double patenting rejection set forth in this Office action.
Regarding claim 1, the prior art of record taken alone or in combination fail to teach or suggest a stud finder, comprising: a charging capacitor; a sampling capacitor; a charging capacitor; a sampling capacitor; wherein the stud finder is configured to have a transfer phase in which charge from the capacitive sensor is transferred to the sampling capacitor in combination with the other limitations of the claim.
Claims 2-7 are also objected to as they depend on claim 1.
Regarding claim 8, the prior art of record taken alone or in combination fail to teach or suggest a stud finder, comprising: a housing; a capacitive sensor disposed in the housing and configured to detect a change in capacitance; a charging capacitor; a sampling capacitor; a charge transfer engine configured to measure a capacitive change in the capacitive sensor in combination with the other limitations of the claim.
Claims 9-11 are also objected to as they depend on claim 8.
Regarding claim 12, the prior art of record taken alone or in combination fail to teach or suggest a stud finder, comprising: wherein the stud finder comprises a charge phase in which a charging capacitor charges the capacitive sensor in combination with the other limitations of the claim.
Claims 13-15 are also objected to as they depend on claim 12.
Regarding claim 16, the prior art of record taken alone or in combination fail to teach or suggest a stud finder, comprising: further comprising an inductive sensor disposed in the housing, the inductive sensor surrounding the capacitive sensor in a radial direction such that there is a gap between the inductive sensor and the capacitive sensor; wherein the inductive sensor comprises at least two inductive coils in combination with the other limitations of the claim.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Clauss et al (USPGPub 20050040817): discloses measuring for locating enclosed objects.
Steber et al (USPGPub 20030201783): discloses stud finder that has capacitance to measure an object behind a wall.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC E HAWKINS whose telephone number is (571)272-2647. The examiner can normally be reached Monday-Friday 7:30am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Judy Nguyen can be reached at (571) 272-2258. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC E HAWKINS/Primary Examiner, Art Unit 2858
