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 .
Information Disclosure Statement
The list(s) of references is/are of extensive length. Additionally, there exists a
significant lack of clarity as to how a large percent of the listed references could possibly
be material to patentability of the presently claimed invention. Forcing an examiner to
find a needle in a haystack is probative of bad faith (Molins PLC V. Textron, Inc., 48
F.3d 1172 (Fed. Cir. 1995)). Such acts of cloaking relevant references by inclusion in a
long list of citations may not comply with Applicant's duty of disclosure (Penn Yah
Boats', Inc. V. Sea Lark Boats', Inc., 359 F. Supp. 948 (S.D. Fla. 1972)). Similarly, failing
to highlight to an examiner buried references disclosing a particularly relevant
embodiment to the pending claims has been found to be misrepresentation, resulting in
holding patents unenforceable due to inequitable conduct (Golden Valley
Microwave Foods' Inc. V. Weayer Popcorn Co. Inc., 837 F. Supp. 1444, 1477 (N.D. Ind.
1992); Penn Yah Boats', Inc. V. Sea Lark Boats', Inc., 359 F. Supp. 948,965 (S.D. Fla.
1972)).
Each non-patent literature document listed in the information disclosure statements and not crossed-through has been considered only to the extent of the title of the document or, if lacking a title, the first word of the first page. Each foreign patent document listed in the information disclosure statements and not crossed-through has been considered only to the extent of the country from which the document originates and the document number. Each communication from the U.S.P.T.O. or a foreign patent authority, listed in the information disclosure statements, and not crossed-through has been considered only to the extent of the application number, the country or authority from which the communication originates, the communication type, and the date the communication was mailed or, if a different date appears on the document instead of a mailing date, the different date. Each document listed in the information disclosure statements that is (1) not a U.S. Patent or U.S. Publication, (2) not covered by one of the preceding sentences in this paragraph, and (3) not crossed-through has been considered only to the extent of the first word of the first page. If Applicant(s) desires Examiner perform further consideration of the references, Applicant(s) must provide a concise explanation of why the information is being submitted, how the information is understood to be relevant, and whether one or more are highly relevant with pinpoint citations to specific pages and specific lines (See, MPEP § 609.04(a)(III), final paragraph, Provision of these explanations with specific citations to pages and lines is encouraged by the Office).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 15-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea comprising mathematical concepts. This judicial exception is not integrated into a practical application because the claim recites reducing an impulse response of a resonant system to Fourier components at the resonant frequency to create a reduced-form impulse response; using reduced-form impulse response together with historical drive-phase and drive-amplitude information to determine a predicted current state of the resonant system; and using the reduced-form impulse response, predicted current state, and desired output to generate a final drive amplitude and final phase. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because these limitations describe mathematical relationships and mathematical calculations performed using representation of an impulse response, historical drive information, and a desired output. Mathematical relationships, mathematical formulas or equations, and mathematical calculations fall within the “mathematical concepts” grouping of abstract ideas identified in MPEP §2106.04(a)(2). Wherein the additional limitations such as historical data, equation, filtering, and converting the data in digital signal as shown in dependent claims do not integrate the mathematical concepts into practical application or provide significant more.
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.
Claims15-25 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-11 of prior U.S. Patent No. 12,347,304 B2. This is a statutory double patenting rejection. Because claims 15-25 contain the same Fourier reduction, environmental adjustment, equation, filtering, digital/analog signal, recursive impulse response, measurement, multiple sub-elements, coupled-array, and matrix-equation. Therefore, claims 15-25 are considered as statutory “same invention” double patenting under 35 U.S.C. §101.
Claims 1-5 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-5 of prior U.S. Patent No. 11,704983 B2. This is a statutory double patenting rejection. Because claims 1-5 recites creating ultrasonic haptic feedback, producing acoustic field, defining the focus point/path, and moving the focus point to produce little audible sound, add the same smooth-phase, reduced-high-frequency, smooth-radius, and curvature/end-point limitations. Therefore, claims 1-5 are considered as statutory “same invention” double patenting under 35 U.S.C. §101.
Claims 8-13 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 6-11 of prior U.S. Patent No. 11,704,983 B2. This is a statutory double patenting rejection. Because claims 8-13 recites limitations subdivides the path into multiple focal points, and respectively cover smooth phase, reduced high-frequency content, smooth radius, tighter distribution near curvature/endpoints, and filtering spatial location as same limitations recited in claims 6-11 as disclosed in U.S. Patent N0. 11/704,983 B2 with dependency numbering shifted. Therefore, claims 8-13 are considered as statutory “same invention” double patenting under 35 U.S.C. §101.
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 6, 7, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6. 11-14 of U.S. Patent No. 11,704,983 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the same inventive concept and limitations as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACK K WANG whose telephone number is (571)272-1938. The examiner can normally be reached M-F 9AM - 5PM.
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, Brian Zimmerman can be reached at 571-272-3059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACK K WANG/Primary Examiner, Art Unit 2686
