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 .
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.
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 1-2 and 12-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-9, and 11 of U.S. Patent No. 12,329,218. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of examined claims 1-2 and 12-16 would have been obvious over reference claims 1-3, 7-9, and 11 of Patent ‘218.
Regarding claim 1, Patent ‘218 claims an adaptive wearable article, comprising: a textile forming an opening configured to admit a body part of a wearer; and an electroadhesive clutch secured to the textile and extending around at least a portion of the opening, the electroadhesive clutch comprising: a first electrode assembly, comprising a first conductive member and at least one of: a first polymeric substrate applied to the first conductive member and having a stiffness greater than a stiffness of the first conductive member; or a first dielectric member coupled to the first conductive member; and an electrical signal generator configured to provide at least a first signal to the first conductive member of the first electrode assembly, wherein the first electrode assembly is configured to move relative another component when at least the first signal is not applied and the first electrode assembly is immobilized relative to the another component when the first signal is applied; wherein the electroadhesive clutch is configured to inhibit increasing a size of the opening when at least the first signal is applied to the first electrode assembly, and wherein the opening is enabled to increase in size when at least the first signal is not applied (see reference claim 1).
Regarding claim 2, Patent ‘218 claims a second electrode assembly comprising a second conductive member overlaying in part the first conductive member, and wherein the another component includes the second electrode assembly, the second electrode assembly comprising: a second conductive member; anda second polymeric substrate applied to the second conductive member, the second polymeric substrate having a stiffness greater than a stiffness of the second conductive member, wherein the first and second conductive members are proximate one another with the first and second polymeric substrates distal with respect to one another (see reference claim 1).
Regarding claim 12, Patent ‘218 claims wherein the electroadhesive clutch further comprises a waterproof encasing within which the first electrode assembly is positioned (see reference claim 2).
Regarding claim 13, Patent ‘218 claims wherein the waterproof encasing is an elastic waterproof encasing configured to return the first electrode assembly to a relaxed position when force is not placed on the elastic waterproof encasing (see reference claim 3).
Regarding claim 14, Patent ‘218 claims wherein the electroadhesive clutch further comprises a sensor, operatively coupled to a controller, configured to output a sensor signal based on a detected condition of the adaptive wearable article and wherein the controller is configured to receive the sensor signal as the input, and wherein the sensor is at least one of an accelerometer sensor, a gyro sensor, or a pressure sensor (see reference claims 7-9).
Regarding claim 15, Patent ‘218 claims a method of making an adaptive wearable article, comprising: forming a textile to include an opening configured to admit a body part of a wearer; and securing an electroadhesive clutch to the textile and extending around at least a portion of the opening, the electroadhesive clutch comprising: a first electrode assembly, comprising: a first conductive member; and at least one of a first polymeric substrate or a first dielectric member applied to the first conductive member and having a stiffness greater than a stiffness of the first conductive member; and an electrical signal generator configured to provide at least a first signals to the first conductive member, wherein the first electrode assembly is configured to move relative to a second electrode assembly when at least the first signal is applied and remain static relative to the second electrode assembly when at least the first signal is applied; wherein the electroadhesive clutch is configured to inhibit increasing a size of the opening when at least the first signal is applied, and wherein the opening is enabled to increase in size when at least the first signal is not applied (see reference claim 11).
Regarding claim 16, Patent ‘218 claims wherein the electroadhesive clutch further comprises: a second electrode assembly comprising a second conductive member overlaying in part the first conductive member, the second electrode assembly comprising: a second conductive member; and at least one of a second polymeric substrate or second dielectric member applied to the second conductive member, the second polymeric substrate having a stiffness greater than a stiffness of the second conductive member, wherein the first and second conductive members are proximate one another with the first and second polymeric substrates distal with respect to one another (see reference claim 11).
Therefore, examined claim 1-2 and 12-16 is not patentably distinct from reference claims 1-3, 7-9, and 11 of Patent ‘218.
This is a provisional nonstatutory double patenting rejection.
Claim Objections
Claim 2 objected to because of the following informalities:
“further comprising: a second electrode assembly” in lines 1-2 should be written “the another component comprising: a second electrode assembly”
Appropriate correction is required.
Claim 16 objected to because of the following informalities:
“wherein the electroadhesive clutch further comprises: a second electrode assembly” in lines 1-2 should be written “wherein the another component further comprises: a second electrode assembly”
Appropriate correction is required.
Allowable Subject Matter
The subject matter of claims 1-20 is found to be allowable.
The following is an Examiner’s statement of reasons for indicating allowable subject matter:
During the search of the prior arts, Yoon et al., (US 20200081532; hereinafter Yoon) and Cruz-Hernandez et al., (US 20160004308; hereinafter Cruz-Hernandez) were found to be pertinent to the claimed invention. However, it is Examiner’s position that Yoon and Cruz-Hernandez fail to disclose, teach, or suggest the claimed invention.
Regarding independent claims 1 and 15, Yoon (Figures 2-3) discloses an adaptive wearable article (200) and a method of making such article (200), wherein the wearable article comprises a textile (210) configured to be worn by a wearer, and an electroadhesive clutch (202) secured to the textile and comprising: a first electrode assembly (302) comprising a first conductive member; and an electrical signal generator (604) configured to provide at least a first signal to the first conductive member of the electrode assembly ([0019]-[0023]). However, Yoon fails to disclose, teach, or suggest “a first polymeric substrate applied to the first conductive member and having a stiffness greater than a stiffness of the first conductive member…wherein the first electrode assembly is configured to move relative another component when at least the first signal is not applied and the first electrode assembly is immobilized relative to the another component when the first signal is applied; wherein the electroadhesive clutch is configured to inhibit increasing a size of the opening when at least the first signal is applied to the first electrode assembly and wherein the opening is enabled to increase in size when the first signal is not applied,” as required by claims 1 and 15.
Similarly, Cruz-Hernandez (Figures 3-5) discloses an adaptive wearable article and a method of making such article, wherein the wearable article comprises a textile (see Figures 4-5) configured to be worn by a wearer, and an electroadhesive clutch (300 shown in figure 3) secured to the textile and comprising: a first electrode assembly (304) comprising a first conductive member ([0034]-[0037]); and an electrical signal generator configured to provide at least a first signal to the first conductive member of the electrode assembly ([0032]). However, Cruz-Hernandez also fails to disclose, teach, or suggest “a first polymeric substrate applied to the first conductive member and having a stiffness greater than a stiffness of the first conductive member…wherein the first electrode assembly is configured to move relative another component when at least the first signal is not applied and the first electrode assembly is immobilized relative to the another component when the first signal is applied; wherein the electroadhesive clutch is configured to inhibit increasing a size of the opening when at least the first signal is applied to the first electrode assembly and wherein the opening is enabled to increase in size when the first signal is not applied,” as required by claims 1 and 15.
Therefore, the subject matter of independent claims 1 and 15 is found to be allowable. The subject matter of claims 2-14 and 16-20 is also found to be allowable since these claims are dependent upon an allowable base claim.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
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/C.C.P./Examiner, Art Unit 3794
/EUN HWA KIM/Primary Examiner, Art Unit 3794
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