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 .
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 § 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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-20 of U.S. Patent No. 11,865,882. Although the claims at issue are not identical, they are not patentably distinct from each other because the scopes of the claims are essentially the same. For example:
Claim 15 of the patent discloses 1 of the instant application. Although claim 15 does not disclose a controller and a memory, it would have been obvious to one skilled in the art to utilize computer with controller and memory to perform the disclosed method;
Claims 16-20 of the patent disclose claims 2-6 of the instant application, respectively.
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.
Claim(s) 1-8 and 12-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Engler (EP 0509137 A1) (hereinafter rejections rely on provided equivalent English machine translation) in view of Schutt (US 6,285,278 B1).
Regarding claims 1 and 12, Engler discloses a method and a fifth wheel configured for coupling to a kingpin of a towed trailer (e.g. Fig. 1 & [0026]), the fifth wheel comprising:
a movable component that moves as the fifth wheel locks onto the kingpin (e.g. [0026] & movable component 428, 454 in Fig. 15 correspond to components of a locking assembly as shown in Fig. 1);
a sensor (e.g. Fig. 15: 570’) in operative association with the fifth wheel and configured to sense movement of the movable component as the fifth wheel locks onto the kingpin and to generate corresponding data (e.g. [0019-0021, 0075]), and
a controller configured to receive the data, determine an operational state of the fifth wheel based on the data (e.g. [0020-0022, 0075]).
Engler fails to disclose, but Schutt teaches a controller configured to log the operational state of the fifth wheel on a memory of the controller such that operation and/or wear of the fifth wheel is observable over time (e.g. col 4 lines 30-46).
Thus, it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the teachings of Engler with the teachings of Schutt so as to allow user remotely retrieves previously stored data to assist coupling of the fifth wheel in the future.
Regarding claims 2 and 13, Engler discloses the operational state is at least one of a worn state, a locked state, or an unlocked state (e.g. [0019-0021]).
Regarding claims 3 and 14, Schutt teaches the controller is configured to determine presence of the kingpin in the fifth wheel and log the presence of the kingpin in the fifth wheel to the memory (e.g. col 4 lines 30-46 and claim 7).
Regarding claims 4 and 15, Engler discloses generating an alert, with an indicator, when the fifth wheel is in the worn state (e.g. [0020, 0022]).
Regarding claims 5 and 16, Schutt teaches the data stored to the memory can be remotely accessed (e.g. col 4 lines 30-46).
Regarding claim 6, Schutt teaches the sensor is a Hall Effect sensor (e.g. [0042] but fails to teach the sensor is a 3D Hall Effect sensor. However, the examiner is taking Official notice that 3D Hall Effect sensor and Hall Effect sensor are known alternative in the art. It would be obvious to one skilled in the art to utilize any known in the art sensors in the claimed invention since it is merely simple substitutions of one known element with another. The modification would have yielded only predictable results to one skilled in the art.
Regarding claims 7 and 17, Engler discloses a magnet (e.g. Fig. 15: 572’) coupled to the movable component such that the magnet is moved with the movable component; and
wherein the sensor is configured to sense the magnetic flux of the magnet such that change in the magnetic flux sensed by the sensor corresponds to the movement of the movable component (e.g. Fig. 15: 570’ & [0075]).
Regarding claims 8 and 18, Engler discloses the sensor is configured to sense magnetic flux of the movable component such that change in the magnetic flux sensed by the sensor corresponds to the movement of the movable component (e.g. Fig. 15: 570’ & [0075]).
Allowable Subject Matter
Claims 9-11 and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAM WAN MA whose telephone number is (571) 270-3693. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached at 571-270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KAM WAN MA/Examiner, Art Unit 2688
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