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 .
Claims 1-15 are pending in this application.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 8, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haines et al. U.S. Patent Application 2011/0216451 (hereinafter “Haines”) and further in view of Neiger et al. U.S. Patent No. 6,339,525.
Regarding Claim 1, Haines discloses a method of self-testing a protection device interrupter (refer to Abstract and [0059]) comprising; monitoring components in the protection device interrupter to determine whether the components are operational (refer to abstract and [0059]), however Haines does not teach the monitoring during an arrangement chosen from (a) a line hot arm and a line neutral arm of the protection device interrupter being disconnected, respectively from a load hot arm and a load neutral arm of the protection device interrupter; and (b) the line hot arm and the line neutral arm of the protection device interrupter being connected, respectively, to the load hot arm and the load neutral arm of the protection device interrupter and a load connected to the protection device interrupter via the load hot arm and the load neutral is drawing zero current. However Neiger teaches the monitoring during an arrangement chosen from (a) a line hot arm and a line neutral arm of the protection device interrupter being disconnected, respectively from a load hot arm and a load neutral of the protection device interrupter; and (b) the line hot arm and the line neutral arm of the protection device interrupter being connected, respectively, to the load hot arm and the load neutral of the protection device interrupter and a load connected to the protection device interrupter via the load hot arm and the load neutral is drawing zero current (refer to col. 16 lines 35-46). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Haines to include the monitoring of Neiger to provide the advantage of detecting and preventing a fault before power is provided to prevent damage to an apparatus.
Regarding claim 8, Haines and Neiger teach the method of claim 1, further comprising disabling connection of the line hot arm and the line neutral arm to, respectively, the load hot arm and the load neutral arm when the monitored components are determined to be nonoperational during either of the arrangement (a) and the arrangement (b) (refer to Haines [0091], [0101] and [0224]).
Regarding claim 9, Haines and Neiger teach the method of claim 1, wherein the monitoring comprises monitoring a characteristic associated with at least a selected one of the components in the protection device interrupter chosen from a coil, analog signal conditioning circuitry, and an analog to digital input of a digital processor in the protection device interrupter (refer to Haines [0091], [0101] and [0224]).
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 2-7 and 10-15 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4, 6, 7, 13, 8, 9, 11, 12, and 10, respectively, of prior U.S. Patent No. 12,306,252. This is a statutory double patenting rejection.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 10,591,546 (hereinafter “’546”), claim 1 of U.S. Patent No. 11,644,507 (hereinafter “’507”), claims 1, 4-7, and 9-11 of U.S. Patent No. 11,940,498 (hereinafter “’498”), and/or claims 1, 5, and 13 of U.S. Patent No. 12,306,252 (hereinafter “’252”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘507, claim 1 of ‘498, and claim 1 of ‘252 each contain all of the limitations of claim 1 of the instant application; claim 5 of ‘498 contains all of the limitations of claim 2 of the instant application; claim 6 of ‘498 contains all of the limitations of claim 3 of the instant application; claim 7 of ‘498 contains all of the limitations of claim 4 of the instant application; claim 4 of ‘498 contains all of the limitations of claim 5 of the instant application; claim 5 of ‘498 contains all of the limitations of claim 6 of the instant application; claims 1 and 2 of ‘546 contain all of the limitations of claim 7 of the instant application; claim 6 of ‘498 and claim 5 of ‘252 each contain all of the limitations of claim 8 of the instant application; claim 1 of ‘498, claim 2 of ‘507, and claim 13 of ‘252 each contain all of the limitations of claim 9 of the instant application; claim 2 of ‘498 and claims 1 and 2 of ‘507 each contain all of the limitations of claim 10 of the instant application; claim 6 of ‘498 and claim 7 of ‘507 each contain all of the limitations of claim 11 of the instant application; claim 7 of ‘498 and claim 10 of ‘507 each contain all of the limitations of claim 12 of the instant application; claim 9 of ‘498 and claim 8 of ‘507 each contain all of the limitations of claim 13 of the instant application; claim 10 of ‘498 and claim 9 of ‘507 each contain all of the limitations of claim 14 of the instant application; claim 8 of ‘498 and claim 11 of ‘507 each contain all of the limitations of claim 15 of the instant application.
Allowable Subject Matter
Claims 2-7 and 10-15 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if rewritten or amended to overcome the Double Patenting rejection(s) set forth in this Office action.
The following is an examiner’s statement of reasons for the indication of allowable subject matter: Claims 2-7 and 11-15 are indicated as containing allowable subject matter because prior art fails to teach or suggest, either alone or in combination all of the limitations of claim 2, especially wherein the protection device interrupter performs current sensing using at least one current sensing coil and the monitoring comprises using, during the arrangement, capacitively coupling of at least one of the line hot arm and the line neutral arm in the protection device interrupter with respect to the at least one current sensing coil to determine whether the monitored components are operational during the arrangement. Claims 3-7 and 11-15 are indicated as containing allowable subject matter based on their dependency on claim 2.
Claim 10 is indicated as containing allowable subject matter because prior art fails to teach or suggest, either alone or in combination all of the limitations of claim 10, especially wherein the monitoring a characteristic comprises using a noise signal associated with the components during the arrangement; and the disabling connection of the line hot arm and the line neutral arm to, respectively, the load hot arm and the load neutral arm is performed when the noise signal meets a designated criterion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN J COMBER whose telephone number is (571)272-6133. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thienvu V Tran can be reached on 5712701276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN J COMBER/Primary Examiner, Art Unit 2839
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