Prosecution Insights
Last updated: October 04, 2026
Application No. 19/200,881

MEASURING INSTRUMENT AND POWER RECEIVING MODULE

Non-Final OA §102§103
Filed
May 07, 2025
Priority
May 21, 2024 — JP 2024-082732 +1 more
Examiner
PEREZ BORROTO, ALFONSO
Art Unit
2836
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
MITUTOYO Corporation
OA Round
1 (Non-Final)
74%
Grant Probability
Favorable
1-2
OA Rounds
1y 6m
Est. Remaining
93%
With Interview

Examiner Intelligence

Grants 74% — above average
74%
Career Allowance Rate
407 granted / 554 resolved
+5.5% vs TC avg
Strong +19% interview lift
Without
With
+19.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
18 currently pending
Career history
576
Total Applications
across all art units

Statute-Specific Performance

§101
1.5%
-38.5% vs TC avg
§103
45.4%
+5.4% vs TC avg
§102
31.0%
-9.0% vs TC avg
§112
17.2%
-22.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 554 resolved cases

Office Action

§102 §103
DETAILED ACTION Status of the Application This office action is a non-final rejection in response to the filing of the applicant’s response to the notice of non-compliant amendment on 07/15/2025 and applicant’s response to the election / restriction filed on 07/09/2026. 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 election without traverse of Fig. 5 (Species D) provided in claims 1-8 in the reply filed on 07/15/2026 and 04/09/2026 is acknowledged. Claims 9-10 are directed to non-elected invention, therefore claims 9-10 are withdrawn from consideration. Claim Rejections - 35 USC § 102 3. 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. 4. 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. 5. Claims 1-3,7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zeine et al, US Patent Application Publication (US 2016/0301240 A1). Regarding claim 1, Zeine et al discloses a power receiving module (500) (see Fig 5 and par. [0062]-[0070]) housed in a portable measuring instrument (Fig 5, par. [0064]: “portable electronic device can be any portable or mobile electronic device that is powered by rechargeable or non-rechargeable batteries, e.g., game controllers, remote controls, alarm systems, etc. The portable electronic devices can also be devices with less standardized rechargeable batteries such as, for example, mobile phones, tablet computers, etc.”), wherein the measuring instrument (Fig 5, par. [0064]: “portable electronic device can be any portable or mobile electronic device that is powered by rechargeable or non-rechargeable batteries, e.g., game controllers, remote controls, alarm systems, etc. The portable electronic devices can also be devices with less standardized rechargeable batteries such as, for example, mobile phones, tablet computers, etc.”) includes: a housing portion (505) that is capable of housing a standard battery (530) having a standardized size (see Fig 5 and par. [0064]-[0065], in addition it has been held that the recitation that an element is “capable of” perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138), and a lid portion (lid for standard form factor “not shown”, par. [0065], also par. [0068] discloses one or more batteries of a portable electronic device to which it is removably attached) that covers the standard battery (530) while the standard battery (530) is housed in the housing portion (505), and the power receiving module (500) has a first portion having the same shape as the standard battery (530) and a second portion having the same shape as the lid portion (see Fig 5 and par. [0064],[0065], par. [0065] particularly disclosing: “the housing 505 is configured in dimensions that conform to standardized battery dimensions. The example of FIG. 5 with terminal caps 540a and 540b is not shown to scale. The housing 505 can be configured in cylindrical or non-cylindrical cell battery form factors, camera battery form factors, button cell battery form factors, etc. For example, the standard form factor can be, among other form factors, AA, AAA, C, D, 4.5-vot, 9-volt, Lantern (spring) battery form factors. Furthermore, in some embodiments, the standard form factor can be a form factor that is configured to power mobile devices, including, but not limited to, mobile phone batteries, tablet computer batteries, etc. Example wirelessly chargeable battery apparatuses are shown and discussed in cylindrical form factor. However, as discussed herein, the wirelessly chargeable battery apparatuses are not limited to cylindrical form factors”, also see Fig 5 disclosing the wireless power reception apparatus 500 having the same shape as the battery 530, and also the lid has the same shape), and includes a power receiving antenna (510) that receives power transferred from a wireless power transfer apparatus that transfers power wirelessly (see Fig 5, par. [0066]: “a wireless charging system, e.g., a wireless charger.”), PNG media_image1.png 550 793 media_image1.png Greyscale in addition, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. V. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). (see MPEP 2114). Furthermore, it has been held that a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Exparte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (See MPEP 2114)). Regarding claim 2, Zeine et al discloses the power receiving module according to claim 1, wherein the power receiving antenna (510) is provided in the second portion (see Fig 5 and par. [0064]-[0065]). Regarding claim 3, Zeine et al discloses the power receiving module according to claim 1, wherein the power receiving module (500) includes a secondary battery (par. [0063]: one or more batteries (or battery modules) 530) to be charged with power received by the power receiving antenna (510) (see Fig 5, par. [0062]-[0070]). Regarding claim 7, Zeine et al discloses the power receiving module according to claim 1, wherein the first portion and the second portion have a cylindrical shape, and a diameter of the first portion is smaller than a diameter of the second portion (see Fig 5, par. [0018], [0033],[0065] disclosing AA, AAA, C, D in which are cylindrical shape and one diameter is smaller (AAA) that a different battery diameter (D)). Regarding claim 8, Zeine et al discloses the power receiving module according to claim 1, further comprising: a secondary battery (par. [0063]: one or more batteries (or battery modules) 530) that is to be charged with power received by the power receiving antenna (510) (see Fig 5, par. [0062]-[0070]); a charging circuit (520) that supplies, to the secondary battery (par. [0063]: one or more batteries (or battery modules) 530), power transferred from the wireless power transfer apparatus (see Fig 5, par. [0066]: “a wireless charging system, e.g., a wireless charger.”) (see Fig 5 and par. [0063],[0067]-[0069]); and a power transfer circuit (540a,540b) that transfers power received from the secondary battery (par. [0063]: one or more batteries (or battery modules) 530) to the measuring instrument (Fig 5, par. [0064]: “portable electronic device can be any portable or mobile electronic device that is powered by rechargeable or non-rechargeable batteries, e.g., game controllers, remote controls, alarm systems, etc. The portable electronic devices can also be devices with less standardized rechargeable batteries such as, for example, mobile phones, tablet computers, etc.”), wherein the measuring instrument (Fig 5, par. [0064]: “portable electronic device can be any portable or mobile electronic device that is powered by rechargeable or non-rechargeable batteries, e.g., game controllers, remote controls, alarm systems, etc. The portable electronic devices can also be devices with less standardized rechargeable batteries such as, for example, mobile phones, tablet computers, etc.”), wherein the charging circuit (520) is provided between the power receiving antenna (510) and the secondary battery (530) in the first portion, and the secondary battery (par. [0063]: one or more batteries (or battery modules) 530) is provided between the charging circuit (520) and the power transfer circuit (540a,540b) in the first portion (see Fig 5 and par [0064]-[0069]). Claim Rejections - 35 USC § 103 6. 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 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. 7. Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Zeine et al, US Patent Application Publication (US 2016/0301240 A1). Regarding claim 4, Zeine et al discloses the power receiving module according to claim 3 except for, wherein the power receiving module further includes a primary battery smaller than the standard battery. Zeine et al discloses plural batteries (par. [0063]) and different shapes for battery form factors and sizes (AA,AAA,C,D, 4.5 V, 9V) etc (par. [0065]) in which one ordinary skill in the art would appreciate that the batteries can be smaller than the standard battery. In addition, par. [0108] discloses “In some embodiments, multi-battery configurations can include multiple batteries integrated with wireless charging functionality. The multi-battery configurations can include multiple batteries with one or more integrated with wireless charging functionality and one or more comprising batteries that are chargeable/rechargeable via the one or more integrated with the wireless charging functionality”, Par. [0129] discloses: The above detailed description of embodiments of the disclosure is not intended to be exhaustive or to limit the teachings to the precise form disclosed above. While specific embodiments of, and examples for, the disclosure are described above for illustrative purposes, various equivalent modifications are possible within the scope of the disclosure, as those skilled in the relevant art will recognize. For example, while processes or blocks are presented in a given order, alternative embodiments may perform routines having steps, or employ systems having blocks, in a different order, and some processes or blocks may be deleted, moved, added, subdivided, combined, and/or modified to provide alternative or subcombinations. Each of these processes or blocks may be implemented in a variety of different ways. Also, while processes or blocks are, at times, shown as being performed in a series, these processes or blocks may instead be performed in parallel, or may be performed at different times. Further, any specific numbers noted herein are only examples: alternative implementations may employ differing values or ranges.”, Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Zeine et al by including wherein the power receiving module further includes a primary battery smaller than the standard battery, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). In addition, the claimed size does not provide any unexpected results. Regarding claim 5, Zeine et al discloses the power receiving module according to claim 4, wherein the primary battery is detachably attached to the power receiving module (500) (see Fig 5 and par. [0062]-[0070], par. [0068] discloses one or more batteries of a portable electronic device to which it is removably attached). Regarding claim 6, Zeine et al discloses the power receiving module according to claim 4; Zeine does not clearly discloses wherein when remaining capacity of the secondary battery is equal to or greater than a threshold value, power of the secondary battery is transferred to an electric circuit of the measuring instrument, and when the remaining capacity is less than the threshold value, power of the primary battery is transferred to the electric circuit. However Zeine discloses par. [0063]: one or more batteries (or battery modules) 530, passing power to charging electronics 526, printed circuit board, physical wires or any electronic components, Also, par. [0068] discloses: “Among other functions, the RF circuitry 522 and the control circuitry 524 can perform the various control functions of a wireless power receiver as discussed in greater detail above with reference to FIG. 4. For example, the RF circuitry 522 and/or other components of the circuitry 520 can process the wireless power received via the one or more antennas 510 and convert received wireless RF Power to direct current (DC) power. In some embodiments, the RF Power is alternating current (AC) power. The charging electronics 526 can, among other functions, detect status information of the one or more batteries 530 and/or one or more internal battery of the portable electronic device to which the housing is attached and control the charging of the one or more batteries 530 based on this information. As discussed herein the one or more batteries 530 can store the DC power. In some embodiments, other storage technology can be used in lieu of or in addition to the one or more batteries. Alternatively, in some embodiments, the wirelessly chargeable battery apparatus may not include a battery but instead directly charge one or more batteries of a portable electronic device to which it is removably attached.”, therefore by performing various battery charging control schemes, the battery capacity and threshold values are managed in this operation; Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Zeine et al by including wherein when remaining capacity of the secondary battery is equal to or greater than a threshold value, power of the secondary battery is transferred to an electric circuit of the measuring instrument, and when the remaining capacity is less than the threshold value, power of the primary battery is transferred to the electric circuit in order to provide multi-battery configurations can include multiple batteries integrated with wireless charging functionality. The multi-battery configurations can include multiple batteries with one or more integrated with wireless charging functionality and one or more comprising batteries that are chargeable/rechargeable via the one or more integrated with the wireless charging functionality (Zeine, par. [0108]). Examiner Note 8. The examiner cites particular columns and lines numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. Conclusion 9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see the cited prior art in the PTO-892 form attached. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALFONSO PEREZ BORROTO whose telephone number is (571) 270-1714. The examiner can normally be reached on M-F (9am-4pm). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Taelor Kim can be reached on (571) 270-7166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ALFONSO PEREZ BORROTO/ Primary Examiner, Art Unit 2836
Read full office action

Prosecution Timeline

May 07, 2025
Application Filed
Apr 09, 2026
Response after Non-Final Action
Sep 21, 2026
Non-Final Rejection mailed — §102, §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
74%
Grant Probability
93%
With Interview (+19.1%)
2y 11m (~1y 6m remaining)
Median Time to Grant
Low
PTA Risk
Based on 554 resolved cases by this examiner. Grant probability derived from career allowance rate.

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