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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,372,476. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim is anticipated.
Patent 12,372,476 Application 19/237,331
1.A system for monitoring a characteristic of a sheet of material that travels in a machine direction, the system comprising:
a first member disposed adjacent to a first side of the sheet, wherein the first member has a first proximal end and a first distal end, and has (i) a first sensor positioned at the first distal end, and (ii) a second sensor positioned between the first proximal end and the first distal end;
a second member disposed adjacent to a second side of the sheet wherein the second member has a second proximal end and a second distal end, and wherein the first member and the second member are parallel and define a measurement gap through which the sheet of material travels;
and driving means for driving the first member and the second member back and forth along a scanning path such that the first sensor measures a characteristic of the sheet from a first edge of the sheet to a mid-point of the sheet along a width of the sheet and the second sensor measures a characteristic of the sheet from the mid-point of the sheet to a second edge of the sheet.
1.A system for monitoring a property of a continuous sheet of material that travels in a machine direction and wherein the sheet has a first side and a second side which comprises:
a first member disposed adjacent to the first side of the sheet, wherein the first member has a first proximal end and a first distal end, and has (i) a first sensor means for measuring a property of the sheet and which is positioned at the first distal end, and (ii) a second sensor means for measuring a property of the sheet and which is positioned between the first proximal end and the first distal end;
a second member disposed adjacent to the second side of the sheet wherein the second member has a second proximal end and a second distal end and wherein the first member and second member are parallel and define a measurement gap through which the continuous sheet of material travels;
and means for driving the first member and second member back and forth along a cross direction so that the first sensor and second sensor measure a property of the sheet at a plurality of locations of the sheet of material.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 0522711 A2.
Claim 1
EP 0522711 A2 discloses a system (See Fig. 2) for monitoring a property of a continuous sheet of material (Fig. 2, Ref. 1; moving web) that travels in a machine direction and wherein the sheet (Fig. 2, Ref. 1) has a first side and a second side (moving web has a top and bottom equivalent to first and second side) which comprises: a first member (Fig. 2, Ref. 2; Ref. 3a; sensing elements being mounted on an upper portion of the frame) disposed adjacent to the first side of the sheet (Fig. 2, Ref. 1), wherein the first member (Fig. 2, Ref. 2; frame) has a first proximal end and a first distal end (The Frame Ref. 2 has a first proximal end located on the side of Ref. 6; and a second distal end located on the side of Ref. 8 show in Fig. 2), and has (i) a first sensor means (Fig. 2, Ref. 3a, linear array of sensing elements) for measuring a property of the sheet (Fig. 2, Ref. 1) and which is positioned at the first distal end (sensing element positioned on the distal end on the side of Ref. 8), and (ii) a second sensor (Fig. 2, Ref. 3a; multiple sensing elements on frame) means for measuring a property of the sheet (Fig. 2, Ref. 1) and which is positioned between the first proximal end and the first distal end (Fig. 2, Ref. 3a shows a sensor element located in the middle of the frame which is positioned between the proximal end and distal end); a second member (Frame located on side that holds Ref. 3b) disposed adjacent to the second side of the sheet (Fig. 2, Ref. 1) wherein the second member (Frame located on side that holds Ref. 3b) has a second proximal end and a second distal end (The frame that holds Ref. 3b has a second proximal end located on the side of Ref. 6; and a distal end located on the side of Ref. 8 show in Fig. 2) and wherein the first member and second member are parallel (Frame members holding Ref. 3a and 3b are parallel) and define a measurement gap (gap is seen in Fig. 2 were sheet Ref. 1 travels) through which the continuous sheet of material travels (Col. 12, lines 19-25); and means for driving (Fig. 2, Ref. 6; drive means) the first member and second member (Frame holding Ref. 3a and 3b) back and forth along a cross direction (See arrows Fig. 2) so that the first sensor and second sensor (Fig. 3a; sensing elements) measure a property of the sheet (Fig. 2, Ref. 1) at a plurality of locations of the sheet of material (Col. 12, lines 19-36; Col. 12-13, lines 50-27).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL PATRICK STAFIRA whose telephone number is (571)272-2430. The examiner can normally be reached M-F 6:30am-3pm.
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/MICHAEL P STAFIRA/Primary Examiner, Art Unit 2877 October 9, 2026
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