DETAILED ACTION
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claim limitation “a data collector, a processing unit, a status communication unit” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “unit” coupled with functional language “configured to receive data, configured to determine a condition status” without reciting sufficient structure to achieve the function.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) 1 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: a data collector and a processing unit (see para. 71) is disclosed in Applicant’s specification as a server and a computer; a status communication unit (see Para. 70) is disclosed in Applicant’s specification as a transmitter.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10,513,156. Although the claims at issue are not identical, they are not patentably distinct from each other because patent claims 1 and 2 combined teaches all the limitations of instant claim 1. Similarly, instant claim 2 is met by patent claims 3 and 4; instant claim 3 and 6 are met by patent claim 6, instant claim 4 is met by patent claim 7, instant claim 5 is met by patent claims 3 and 5. The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Claim Rejections - 35 USC § 102
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 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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hernandez Jimenez et al. (US 20140052332 A1).
In regard to claim 1, Hernandez Jimenez teaches a riding condition monitoring system comprising: a pump unit driven by tire deformation or rotation of a tire of a vehicle (Hernandez Jimenez, Para. 25, a tire pump in each of the tires 20, 22 to inflate the tires 20, 22 in case there is an insufficient amount of pressure in each of the tires 20, 22, or one or both of the tires 20, 22 suffers from a slow leak); and a data collector configured to receive data from one or more of the pump unit, a wheel of the vehicle, vehicle, road, driver, operator, a unit outside of vehicle, a pump unit, the tire, a status communication unit and the vehicle (Hernandez Jimenez, Para. 25, if the tire pump in one or both of the tires 20,22 stops working correctly, and one or both of the tires 20,22 continues to leak, the sensors 16A,16B detect the leak, and a signal is received by the control unit 18); and a processing unit configured to determine a condition status any one of the tire, wheel, vehicle, road, pump unit, driver or operator, from the received data (Hernandez Jimenez, Para. 25, which then communicates to the control unit 24 of the vehicle 12, and the control unit 24 commands the warning device 38 to alert the drive of the vehicle 12 that one or both of the pumps inside the tires 20,22 have malfunctioned, or that there is insufficient pressure in one or both of the tires 20,22), the received data including information from one or more of the following parameters: tire deformation; tire footprint size or length or area; tire pressure; tire underinflation; tire overinflation; accumulator pressure; altitude; ambient pressure; geographic coordinates; frequency of inflation cycles of the pump unit; frequency of re-circulation cycles of the pump unit; frequency of opening or closing a regulator of the pump unit; length of time of inflation; distance travelled; tire ambient temperature; vehicle ambient temperature; humidity of air inside of the tire; temperature of ambient air; output generated by an energy harvester of the pump unit; frequency of activation of an energy harvester of the pump unit; tire deflation speed; tire inflation speed; direction of wheel rotation; speed of wheel rotation; speed of vehicle; time of wheel in a stationary status; and characteristics of tire pressure changes over time (Hernandez Jimenez, Fig. 2, warning device 38 to alert the driver of low tire pressure; Para. 25, if the tire pump in one or both of the tires 20,22 stops working correctly, and one or both of the tires 20,22 continues to leak, the sensors 16A,16B detect the leak, and a signal is received by the control unit 18); a status communication unit configured to provide the condition status to the vehicle, driver, operator, a unit outside of vehicle, a data collector, a pump unit, the wheel or the tire (Hernandez Jimenez, Para. 25, the control unit 24 commands the warning device 38 to alert the drive of the vehicle 12 that one or both of the pumps inside the tires 20,22 have malfunctioned, or that there is insufficient pressure in one or both of the tires 20,22).
Allowable Subject Matter
Examiner has performed a full and complete search on the invention in the manner best interpreted by the Examiner. Claim 2-6 would be allowable once a Terminal Disclaimer is filed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to PTO-892, Notice of References Cited for a listing of analogous art.
Zhou et al. (US 20150174972 A1) teaches an intelligent tire pressure management system capable of real-time tire pressure monitoring, vehicle load detection, and automatic tire inflation and deflation for maintaining optimal tire pressure in a commercial vehicle. Additional functions include counting tire rotations for calculating and recording distance travelled for each tire, and detecting wheel sliding due to locked-up tires.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARMIN AKHTER whose telephone number is (571)272-9365. The examiner can normally be reached on Monday - Thursday 8:00am-5:00pm EST.
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, Davetta W Goins can be reached on (571) 272.2957. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHARMIN AKHTER/
Examiner, Art Unit 2689
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