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 .
Claim Objections
Claims 2-4 are objected to because of the following informalities:
In claims 2-4, "resistive" should be changed to --resistance-- for consistency;
In claim 4, "a temperature regulator" should be changed to --the temperature regulator-- or --said temperature regulator--.
Appropriate correction is required.
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.
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Claims 1, 2 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,331,918. Although the claims at issue are not identical, they are not patentably distinct from each other because they are anticipated thereby see table below:
Application claims
Patented claims
Remarks
1
1
All limitations included; a temperature regulator anticipated as a thermal switch.
2
1
All limitations included
4
1
All limitations included; a temperature regulator anticipated as a thermal switch.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,331,918 in view of claims 9-10 of U.S. Patent No. 11,754,275.
Claim 1 of U.S. Patent No. 12,331,918 discloses the elongate resistive (resistance) heating element; but does not clearly show the Indium Tin Oxide trace. Claims 9-10 of U.S. Patent No. 11,754,275 teaches the Indium Tin Oxide trace.
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify/combine claim 1 of U.S. 12,331,918 with claims 9-10 of U.S. 11,754,275 for purpose of providing an advantageous way of its unique optical and electrical properties, acting as a thin-film electrode that lets light through while conducting electricity.
Claims 1, 2 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 8 and 9 of U.S. Patent No. 11,231,171. Although the claims at issue are not identical, they are not patentably distinct from each other because they are anticipated thereby see table below:
Application claims
Patented claims
Remarks
1
1 and 8
All limitations included; a temperature regulator anticipated as a thermal switch.
2
3, 4, 8 and 9
All limitations included; the covering is a tubular segment; the thermal switch in thermally conductive contact with the tubular segment. Thus, the thermal switch in thermally conductive contact with the covering.
4
1, 3, 4, 8 and 9
All limitations included; the covering is a tubular segment; the thermal switch in thermally conductive contact with the tubular segment. Thus, the thermal switch in thermally conductive contact with the covering.
Claim 3 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 11,231,171 in view of claims 9-10 of U.S. Patent No. 11,754,275.
Claims 1 and 8 of U.S. Patent No. 11,231,171 discloses the elongate resistive (resistance) heating element; but does not clearly show the Indium Tin Oxide trace. Claims 9-10 of U.S. Patent No. 11,754,275 teaches the Indium Tin Oxide trace.
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify/combine claims 1 and 8 of U.S. 11,231,171 with claims 9-10 of U.S. 11,754,275 for purpose of providing an advantageous way of its unique optical and electrical properties, acting as a thin-film electrode that lets light through while conducting electricity.
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, 2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gillner et al. [U.S. 6,396,026 B2] in view of Runfola et al. [U.S. 6,601,983 B1].
Regarding claim 1, Gillner et al. discloses a heater [a heating wire 2, figure 1, abstract] for an environment, comprising: an elongate resistance heating element [a core 21 made from chromium-nickel, figure 3]; a thermally transmissive, temperature mitigating, and electrically insulative cover [a matt black layer of paint 23] configured to surround at least a portion of the elongate resistance heating element [a core 21 made from chromium-nickel] (figures 1 and 3).
However, Gillner et al. does not clearly show the temperature regulator associated with the heating element.
Runfola et al. teaches the temperature regulator [thermal switch 13'] connected with the heating element [resistive heating element 12'] (figure 6, column 1 lines 41-52).
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify/combine the heater of Gillner et al. with the temperature regulator (the thermal switch) as taught by Runfola et al. for purpose of providing an advantageous way of that such an assembly provide no heating when it is not needed so as to conserve energy and reduce stress. Thus, the thermal switch that closes only when the temperature is low enough for ice and snow to accumulate thereon.
Regarding claims 2 and 4, Runfola et al. teaches the temperature regulator comprises a thermal switch [13'] electrically coupled in series with the elongate resistive heating element [12'] (figure 6). While Gillner et al. discloses the cover [a matt black layer of paint 23] of the elongate resistance heating element [a core 21 made from chromium-nickel] (figure 3). The motivation is the same as above.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gillner et al. and Runfola et al. in view of Salter et al. [U.S. 2018/0320884 A1].
Regarding claim 3, Gillner et al. and Runfola et al. disclose the heater having the elongate resistive heating element. However, they do not clearly show the elongate resistive heating element comprises an Indium Tin Oxide trace.
Salter et al. teaches a heater 50 being formed with a film of indium tin oxide (ITO) (figures 2-4, paragraph [0042]).
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify/combine the heater of Gillner et al. and Runfola et al. with the film of indium tin oxide (ITO) as taught by Salter et al. for purpose of providing an advantageous way that the ITO layer forming the heater is a substantially visually transparent medium that can be used to form a heater element and other conductive signal lines for forming the heater. As such, the heater will remain substantially invisible to a user looking through the outer lens.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAO Q TRUONG whose telephone number is (571)272-2383. The examiner can normally be reached M-F 7 am - 3 pm.
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BAO Q. TRUONG
Primary Examiner
Art Unit 2875
/BAO Q TRUONG/ Primary Examiner, Art Unit 2875