Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
This is a Non-Final office action responsive to the Patent Owner’s response of 10/24/2025. The action addresses reissue application 15/081,292 ("the '292 Reissue Application" or "instant reissue application") filed 03/25/2016.
Reissue application 15/081,292 is a reissue of US Patent Application 11/856,381 (file date 09/17/2007; issue date 03/25/2014 as US 8,682,361 B2).
US Patent Application 11/856,381 claims foreign priority to JP 2007-27167, filed 03/20/2007.
A certified copy of the Foreign Priority document (39 page entry; received 09/18/2007) is found in the prosecution file of US patent application 11/856,381.
Because the instant reissue application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act ("AIA ") will govern this reissue proceeding and all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. 37 CFR 1.171 through 1.178 are rules directed to reissue.
Because the effective filing date of the related original patent application (11/856,381) that the reissue application is based on is not on or after March 16, 2013, the AIA First Inventor to File ("AIA -FITF") provisions do not apply. Instead, the earlier 'First to Invent' provisions apply.
The broadening reissue application 15/081,292 is timely filed (03/25/2016) based on filing within two years of the issue date of US 8,682,361 B2 (03/25/2014).
Litigation
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which US 8,682,361 is or was involved. These proceedings would include any trial at the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Based on Examiner's independent review of US 8,682,361 and the prosecution history, no ongoing proceeding before the office or current ongoing litigation involving the US 8,682,361 patent is found. Also, based upon the Examiner's independent review patent itself and the prosecution history, the Examiner cannot locate any previous reexaminations, supplemental examinations, or certificates of correction. The original patent issued with claims 1-24 ("Patented Claims").
Prosecution History
A non-final office action (08/06/2010) rejected claims 1-25 as anticipated by US 2003/0078032 to Pei et al. and as obvious over 2007/0130476 to Mohanty.
Applicant argues (11/08/2010) that Pei failed to teach a home network service system having a home network control apparatus which, among other features:
“determines if the receiver number of the text message matches a registered number of the home network control apparatus, transmits the converted control signal to the home network device when the receiver number matches the registered number of the home network control apparatus, and does not transmit the converted control signal to the home network device when the receiver number does not match the registered number of the home network control apparatus.”
While amending as follows:
…“a text message processor to receive a text message including a control signal, the text message being sent from a transceiver having a sender number to a receiver number; and
a home network control apparatus to control a home network device according to the received text message by converting the control signal of the text message to a converted control signal using a protocol compatible with the home network device to be controlled and transmitting the converted control signal to the home network device,
wherein the home network control apparatus determines if the receiver number of the text message matches a registered number of the home network control apparatus, transmits the converted control signal to the home network device when the receiver number matches the registered number of the home network control apparatus, and does not transmit the converted control signal to the home network device when the receiver number does not match the registered number of the home network control apparatus.”
Applicant argues that the combination of Pei and Mohanty fails to cure the deficiency noted supra, and, additionally the prior art combination is not obvious.
The Examiner disagreed (12/10/2010, Final office action) with Applicant’s arguments and maintained the rejections.
Applicant filed an RCE (03/10/2011). Limitations of claim 2 were added to claim 1 (claims 1 and 3-25 pending & claim 2 cancelled).
While amending as follows:
…“a text message processor to receive a text message including a control signal, the text message being sent from a transceiver having a sender number to a receiver number; and
a home network control apparatus to control a home network device according to the received text message by converting the control signal of the text message to a converted control signal using a protocol compatible with the home network device to be controlled and transmitting the converted control signal to the home network device,
wherein the home network control apparatus determines if the receiver number of the text message matches a registered number of the home network control apparatus, transmits the converted control signal to the home network device when the receiver number matches the registered number of the home network control apparatus, and does not transmit the converted control signal to the home network device when the receiver number does not match the registered number of the home network control apparatus, and
the home network control apparatus converts the control signal to correspond to command data matching the control signal of the text message using the protocol compatible with the home network device, the command data being selected from prestored command data.”
Applicant argues (Remarks, 03/10/2011, pp. 8-9):
“There is no disclosure that the authentication or parsing is affected by the number of the device to which the SMS message was sent. There is further no disclosure that the parsing of block 340 is or should be performed prior to the authentication of block 330 or matching the number.
While the Examiner asserts that the SMS message can include an identification name of a device being controlled (e.g. “AC”), and takes official notice that it is well known in the art to substitute addresses with names, the Examiner’s taking official notice does not cure the above noted defect. Indeed, Pei et al. expressly states that authentication is performed using the sender number, and expressly uses the sender’s phone number as an example for a unique identifier (139012345670) in paragraph 0036. Where different levels of authentication are needed, they include passwords and “user side” cards. (Paragraph 0037). Pei et al. does not suggest using the device to be controlled as an authentication element, and it is only at the parsing stage that any misidentified device would be detected as set forth in paragraph 0034.
In order to cure this deficiency, the Examiner asserts that the address of the device to be controlled would be used for purposes of identification since there are only “a finite number of possibilities”. However, as demonstrated in paragraph 0037, Pei et al. envisioned a number of authentication and identification mechanisms, and all of them originating from the user/sender as opposed to using the address of the device to be controlled. As such, prior to parsing, there is no suggestion or evidence as to why the device address would be used instead of the user identifier (such as a phone number).
The Examiner indicates on page 4 of the Office Action that the device address is matched at the parsing stage and that request is transferred to the command generator only where the parsing detects a correct syntax and semantics, and if the device address is not properly identified, the request is not sent to the command generator. However, even assuming arguendo that the Examiner is correct as to the function of the Request Parser in block 340, it is noted that any such parsing occurs prior to the request being converted by the Command Generator in block 350. Thus, there is no suggestion that the request which is not forwarded for having an incorrect syntax or semantic was already converted into a control signal prior to being parsed in block 340, or that the parsing can even be completed where the request has an incorrect syntax or semantic. There is further no evidence as to why such a modification would be made, and it would appear that the requiring a full parsing of the request having an incorrect syntax or semantic is not even possible. As such, after parsing, there is no suggestion or evidence as to why the device address would be used instead to selectively send the parsed request to the Command Generator in block 350.”
A Notice of Allowance mailed (03/14/2013) indicating claims 1 and 3-25 (renumbered as 1-24) as allowable.
The following is an examiner’s statement of reasons for allowance:
(Notice of Allowance, 03/14/2013, pp. 2-3) With respect to claim 1 (and similarly recited in all independent claims), the prior art of record fails to disclose singly or in combination or render obvious that the home network control apparatus converts the control signal to correspond to command data matching the control signal of the text message using the protocol compatible with the home network device, the command data being selected from prestored command data. US 20030078032 A1 to Pei, Sun et al. and US 20070130476 A1 to Mohanty; Subhashis are the closest prior art relating to Applicant’s claimed invention. Pei discloses remote control apparatus, systems and methods based on a wireless message service. In an example embodiment, the system includes transmitting means for transmitting a wireless message and receiving means for receiving the wireless message. It has a control application server which has security checking means for ensuring safety of the system, command generator for generating a control command as a function of the received wireless message and communication means for transferring the control command to a device to be controlled. The control command is transferred to the device through a network. Mohanty discloses a remote wireless device is provided that operates a user interface specific to a particular target application or device. The wireless device receives information regarding the status or operation of the target's application, and uses that information to determine what information and controls to present to the remote user. The remote user views information regarding the target application, and makes desired control selections using the available controls. The wireless device generates a message according to the control selections, and transmits the message to the target device. The target device acts responsive to the control message, and updated operational information may be sent to the remote wireless device. The claimed invention distinguishes over Pei and Mohanty in that that “the home network control apparatus converts the control signal to correspond to command data matching the control signal of the text message using the protocol compatible with the home network device, the command data being selected from prestored command data” is not disclosed.
US Patent 8,682,361 issued 03/15/2014 with 24 claims.
Recapture
Claims 1-29 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
During the prosecution of the ‘361 Patent (Application No.11/856,381), the Patent owner argued that the added limitations differentiated the claims from the prior art:
From claim 1:
“the text message being sent from a transceiver having a sender number to a receiver number;
…
wherein the home network control apparatus determines if the receiver number of the text message matches a registered number of the home network control apparatus,
transmits the converted control signal to the home network device when the receiver number matches the registered number of the home network control apparatus, and does not transmit the converted control signal to the home network device when the receiver number does not match the registered number of the home network control apparatus”
…
“the home network control apparatus converts the control signal to correspond to command data matching the control signal of the text message using the protocol compatible with the home network device, the command data being selected from prestored command data”
Specifically, claim 1 was amended as follows:
“A home network service system comprising:
a text message processor to receive a text message including a control signal, (1A2) the text message being sent from a transceiver having a sender number to a receiver number; and
a home network control apparatus to control a home network device according to the received text message by converting the control signal of the text message to a converted control signal using a protocol compatible with the home network device to be controlled and transmitting the converted control signal to the home network device,
(1C1) wherein the home network control apparatus determines if the receiver number of the text message matches a registered number of the home network control apparatus, (1C2) transmits the converted control signal to the home network device when the receiver number matches the registered number of the home network control apparatus, and (1C3) does not transmit the converted control signal to the home network device when the receiver number does not match the registered number of the home network control apparatus, and
(1D1) the home network control apparatus converts the control signal to correspond to command data matching the control signal of the text message using the protocol compatible with the home network device, (1D2) the command data being selected from prestored command data.”
Other independent claims were similarly amended.
With regard to new claim 1 (and corresponding dependents):
In considering this recapture rejection, the Examiner has evaluated the claims according to the recapture rule three-step process as set forth in In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65:
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(1) First, it was determined, in what respect, the reissue claims are broader in scope than the original patent claims. In the instant case the claims no longer include:
1A. The claim ambiguously notes that some processing is involved to acquire the control signal from the text message (“receive a text message including data corresponding to a control signal”); where data corresponding to a control signal is not the control signal itself. The claims later recitations of the text message are now with respect to a text message with data regarding a control signal.
1D. The claim recitation of “based on a home network protocol of the home network service not corresponding to a preset protocol, the home network protocol is converted into the preset protocol” is clearly not that same as “the home network control apparatus converts the control signal to correspond to command data matching the control signal of the text message using the protocol compatible with the home network device, the command data being selected from prestored command data”. Wording is now loosely defined as ‘based on’ rather than to directly ‘correspond to’.
Again claim was originally amended in the ‘381 application to positively recite “convert[ing] the control signal” (and all the entails), now the claim is amended to only conditionally implement the “identify…” and “transmit…” steps.
(2) Next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution. Here the below limitations were added to the claims on 11/8/2010 and 3/10/2011 to distinguish the '381 Application over the prior art:
1A. The claim ambiguously notes that some processing is involved to acquire the control signal from the text message (“receive a text message including data corresponding to a control signal”); where data corresponding to a control signal is not the control signal itself. The claims later recitations of the text message are now with respect to a text message with data regarding a control signal.
1D. The claim recitation of “based on a home network protocol of the home network service not corresponding to a preset protocol, the home network protocol is converted into the preset protocol” is clearly not that same as “the home network control apparatus converts the control signal to correspond to command data matching the control signal of the text message using the protocol compatible with the home network device, the command data being selected from prestored command data” (conditional conversion).
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(3) Finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. In this regard, the claims were not materially narrowed in related aspects or were narrowed in unrelated aspects, specifically noting:
Claims further note “based on a home network protocol of the home network service not corresponding to a preset protocol, the home network protocol is converted into the preset protocol”. This statement is shown to be not supported by the specification and nevertheless broadens the previous surrendered limitation.
Claims further note “based on no match… a request for re-transmittal of the text message is transmitted…”, but does not materially narrowed in other / related respects in a way that avoids the recapture rule.
As noted above, the Applicant asserted that the added and argued limitations corresponding to the conditional transmission of already converted control signals patentably distinguish the claimed invention from the prior art. The reissue claims do not recite this limitation. Furthermore, the claims appear to slowly attempt to write out something that was previously positively recited. Specifically, the original patented claims stated that the system received ‘a text message including a control signal’, now in this amendment the claims note that the received text message includes data corresponding to a control signal.
Claims 2-6 depend on claim 1, accordingly, claims 1-6 are rejected under 35 U.S.C. 251 for attempting to recapture surrendered subject matter.
Claims 7-10 are similarly rejected under 35 U.S.C. 251 for attempting to recapture surrendered subject matter. Where these claims remove the idea of a conversion being based on the receiver number (matching a registered number) and not converting when a receiver number does not match the registered number. Where the conversion is now said to be ‘in response to identifying the command data matches the received text message’.
Again claim 7 was originally amended in the ‘381 application to positively recite limitations that now only conditionally occur (“…based on…”)
The added concept of “based on no match… a request for re-transmittal of the text message is transmitted…”, does not materially narrowed in other / related respects in a way that avoids the recapture rule.
Claims 8-10 depend on claim 7, accordingly, claims 7-10 are rejected under 35 U.S.C. 251 for attempting to recapture surrendered subject matter.
Claims 11-24 are similarly rejected under 35 U.S.C. 251 for attempting to recapture surrendered subject matter. Where these claims remove the idea of a conversion being based on the receiver number (matching a registered number) and not converting when a receiver number does not match the registered number. Where the conversion is now said to be ‘in response to identifying the command data matches the received text message’.
Again claims 11, 12, 14, 19, 21, 23, and 24 were originally amended in the ‘381 application to positively recite limitations that now only conditionally occur (“…based on…”)
The added concept of “based on no match… a request for re-transmittal of the text message is transmitted…”, does not materially narrowed in other / related respects in a way that avoids the recapture rule.
Claims 13, 15-18, 20, and 22, depend from claims 11, 12, 14, 19, 21, 23, and 24, accordingly, claims 11-24 are rejected under 35 U.S.C. 251 for attempting to recapture surrendered subject matter.
With regard to new claims 25 and 28 (and their corresponding dependents), which compare to previously allowed claims 7 and 19 respectively:
In considering this recapture rejection, the Examiner has evaluated the claims according to the recapture rule three-step process as set forth in In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65:
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(1) First, it was determined, in what respect, the reissue claims are broader in scope than the original patent claims. In the instant case the claims no longer include:
25/28A. The claims lack “the text message being sent from a sender number to a receiver number”
25/28B.The claims lack “a communication unit to transmit the converted control signal to the home network device” (or the like)
25/28C.The claim now teaches to “convert the control signal” when “identifying the command data that match the received text message” and “based on” matching the “receiver number” (obtained using the text message) and “stored registered number” (claim 25) / “converting the control signal” “in response to determining that the received text message matches the stored registered number” (claim 28) rather than “the protocol converter converts the control signal when the receiver number (matches the registered number of the home network control apparatus) and does not convert the control signal when the receiver number does not match the registered number.” (or the like)
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(2) Next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution. Here the below limitations were added to the claims on 11/8/2010 and 3/10/2011 to distinguish the '381 Application over the prior art:
25/28A. The claims lack “the text message being sent from a sender number to a receiver number”
25/28B.The claims lack “a communication unit to transmit the converted control signal to the home network device” (or the like)
25/28C.The claim now teaches to “convert the control signal” when “identifying the command data that match the received text message” and “based on” matching the “receiver number” (obtained using the text message) and “stored registered number” (claim 25) / “converting the control signal” “in response to determining that the received text message matches the stored registered number” (claim 28) rather than “the protocol converter converts the control signal when the receiver number (matches the registered number of the home network control apparatus) and does not convert the control signal when the receiver number does not match the registered number.” (or the like)
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(3) Finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. In this regard, the claims were not materially narrowed in related aspects or were narrowed in unrelated aspects, specifically noting:
Claims now note ‘wherein based on no match being identified between the receiver number and a registered number in the identifying, a request for a re-transmittal of the text message is transmitted where and the converted control signal is not transmitted’, but the conditional conversion does not occur if this step is executed (“no match”), leaving no “converted control signal”. It is further ambiguous if this is a three way match or “the converted control signal is not transmitted” is a result of the previously stated condition.
Claims further note ‘wherein, based on the protocol compatible with the home network device not being identified’; ‘wherein based on no match being identified between the receive number and a registered number in the identifying’; ‘and the converted control signal is not transmitted’, the converting of the control signal corresponding to the identified command data is based on a preset protocol’. This statement is shown to be not supported by the specification. Again, it is unclear whether ‘the converted control signal is not transmitted’ is a result of the prior two conditions, or just a statement.
As noted above, the Applicant asserted that the added and argued limitations corresponding to the transmission from sender number to a receiver number; determining if the receiver number of the text message matches a registered number; and the protocol converter converts the control signal when the receiver number (matches the registered number of the home network control apparatus) and does not convert the control signal when the receiver number does not match the registered number patentably distinguish the claimed invention from the prior art. The reissue claims do not recite this limitation.
Claims 26, 27, and 29 depended from claims 25 and 28, accordingly, claims 25-29 are rejected under 35 U.S.C. 251 for attempting to recapture surrendered subject matter.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 25-29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, the claims note:
“wherein, based on the protocol compatible with the home network device not being identified wherein based on no match being identified between the receive number and a registered number in the identifying the converted control signal is not transmitted, the converting of the control signal corresponding to the identified command data is based on a preset protocol”
Where support in the specification cannot be found for this added ambiguous limitation.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 25-29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regard to the limitation of claims 25 and 28, it is ambiguous if this is a three way match or “the converted control signal is not transmitted” is a result of the previously stated condition. It is further unclear whether “the converted control signal is not transmitted” is a result of the prior two conditions, or just a statement.
Claim Rejections - 35 USC § 251
Claims 25-29 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows:
“wherein, based on the protocol compatible with the home network device not being identified wherein based on no match being identified between the receive number and a registered number in the identifying the converted control signal is not transmitted, the converting of the control signal corresponding to the identified command data is based on a preset protocol”
Prior Art
As previously noted, the prior art of record does not teach the limitation of ‘wherein based on no match being identified between the receiver number and a registered number in the identifying, a request for a re-transmittal of the text message is transmitted where the converted control signal is not transmitted ’, but as described above in detail this conditional statement as well as others in the claim raise recapture and 112 issues.
Response to Arguments
The arguments submitted on 10-24-2025 are fully considered by are not persuasive.
I. Recapture
1.
Patent Owner argues that the amendment alleviates the rejection noting “what is now being transmitted to the receiver number is not a text message including the control signal but rather a text message and a control signal sent separately”.
In response, the Examiner respectfully submits that the amendment now notes “receive a text message including data corresponding to a control signal”. This amendment makes clear the text message used throughout the rest of the claim doesn’t ‘include a control signal’ but merely ‘data corresponding to a control signal’.
2.
Patent Owner presents their view “claim 1 still recites “converting the control signal of the text message”.
In response, the Examiner respectfully submits that this feature is now located within a conditional statement.
3. – 5.
No arguments presented.
6.
Comment is directed at new claim amendment, that appears to be supported.
II.
No arguments presented.
III.
No argument presented, issues further addressed above.
Rejections under 35. U.S.C. 112(a).
Arguments are moot in view of the amendment. New issues are addressed above.
Rejections under 35. U.S.C. 112(b).
Arguments are moot in view of the amendment. New issues are addressed above.
Rejections under 35. U.S.C. 103(a)
Arguments are moot in view of the amendment.
Summary
Claims 1-29 are REJECTED.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS G BONSHOCK whose telephone number is (571)272-4047. The examiner can normally be reached on M-F 7:15 - 4:45.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached on 571-272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS G BONSHOCK/Primary Examiner, Art Unit 3992
Conferees:
/MICHAEL ROSWELL/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992