DETAILED ACTION
Notice of Pre-AIA or AIA Status
I. The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
Continued Examination Under 37 CFR 1.114
II. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 13, 2026 has been entered.
Allowable Subject Matter
III. The following is a statement of reasons for the indication of allowable subject matter:
Claims 41 and 48 contain subject matter allowable over the prior art based on the amendments to the claims (see Claims, pages 2-5) and for the reasons given in applicant arguments/remarks (see Remarks, pages 6-11) received in the April 13, 2026 response to the Final Office Action dated April 1, 2026.
Claim 58 may be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C 101 set forth in this Office action for the reasons given above regarding claims 41 and 48.
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.
IV. Claims 58-60 are rejected under 35 U.S.C 101 because the claimed invention is directed to non-statutory subject matter.
Claim 58 recites “an application for execution on a cellular phone, the application comprising program instructions” in lines 1-27. The specification describes a cellular phone that may be equipped with software that provides the appropriately configured data package (see the specification, page 44 at paragraph [00182]). One skilled in the art would understand the claimed “application” to include a computer program based on the above description. The claimed “application" encompasses a computer program per se because it is comprised of " program instructions" which include software embodiments. Claims directed to computer programs are not considered to be within the statutory categories of invention. Therefore, claim 58 is rejected under 35 U.S.C 101 as being directed to non-statutory subject matter.
Claims 59-60 are dependent on claim 58 and are rejected for being directed to a computer program per se under 35 U.S.C 101 for the same reasons given above regarding claim 58.
The following rejection is based on the best possible interpretation of the claim language in light of the above rejection under 35 U.S.C 101.
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.
V. Claims 41-56 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, and 7-9 of U.S. Patent No. 10,104,425 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the 10,104,425 teach similar limitations on a device/system associated with state or status monitoring.
For example:
Regarding claim 41 the 10,104,425 patent teaches a centralized HUB (system) associated with security monitoring or appliance state monitoring (see the 10,104,425 patent, claim 1, col. 42, lines 28 and claim 9, col. 43, lines 26-27, detection of a change of a condition associated with a status of item reads on security monitoring or appliance state monitoring) the centralized HUB comprising: a wireless communication interface configured to communicate with a wireless communication network, the wireless communication network comprising a wireless local area network (WLAN) (see the 10,104,425 patent, claim 1, col. 42, lines 30-38); a memory storing identification information about a sensor; and a control circuit operatively coupled to the wireless communication interface and the memory (see the 10,104,425 patent, claim 1, col. 42, lines 39-41, memory implied for the processor to perform operations), the control circuit being configured to: initiate wireless communications over the wireless communication network (see the 10,104,425 patent, claim 1, col. 42, lines 36-41); generate a notification regarding a change in a monitored condition detected by the sensor based on a wireless signal received from the sensor in connection with identification of the sensor; and communicate, the notification via the wireless communication interface over the wireless communication network (see the 10,104,425 patent, claim 1, col. 42, lines 30-41 and claim 9, col. 43, lines 23-27), wherein the wireless communications are initiated in response to a configured data package provided by an application executing on a cellular phone, the configured data package comprising information for initiation of the wireless communications directed to one or more destination devices, the centralized HUB being one of the destination devices (see the 10,104,425 patent, claim 1, col. 42, lines 57-61).
Claim 42 is rejected for double patenting as well by claim 1 of the 10,104,425 patent.
Claim 43 is rejected for double patenting as well by claims 3-4 of the 10,104,425 patent.
Claim 44 is rejected for double patenting as well by claim 1 of the 10,104,425 patent.
Claim 45 is rejected for double patenting as well by claims 1 and 5 of the 10,104,425 patent.
Claim 46 is rejected for double patenting as well by claims 1 and 8-9 of the 10,104,425 patent.
Claim 47 is rejected for double patenting as well by claim 8 of the 10,104,425 patent.
Claim 48 is rejected for double patenting as well by claim 1 (see rejection of claim 41 above) of the 10,104,425 patent.
Claim 49 is rejected for double patenting as well by claims 3-4 of the 10,104,425 patent.
Claim 50 is rejected for double patenting as well by claim 1 of the 10,104,425 patent.
Claim 51 is rejected for double patenting as well by claims 1 and 3 of the 10,104,425 patent.
Claim 52 is rejected for double patenting as well by claims 1, 4 (imaging device), 7 of the 10,104,425 patent.
Claim 53 is rejected for double patenting as well by claims 1 and 7-9 of the 10,104,425 patent.
Claim 54 is rejected for double patenting as well by claim 8 of the 10,104,425 patent.
Claim 55 is rejected for double patenting as well by claim 1 of the 10,104,425 patent.
Claim 56 is rejected for double patenting as well by claim 1 of the 10,104,425 patent.
VI. Claim 57 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,104,425 in view of Patent No.: US 6,970,183 B1 to Monroe. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the 10,104,425 in view of Monroe teach similar limitations on communicating Interne data.
For example:
Regarding claim 57 the 10,104,425 patent teaches the limitations of claim 48 (see rejection of claim 48 by claim 1 of the 10,104,425 patent above) except for communicating Internet data to a cell phone.
Monroe teaches for communicating Internet data to a cell phone (see abstract, col. 10,lines 37-40 and Fig. 1, providing wireless video and/or image data using the internet to wireless devices reads on communicating Internet data to a cell phone).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the claims of the 10,104,425 patent adapt to include communicating Internet data to a cell phone because using Internet for communicated data to a wireless device is well-known in the art.
VII. Claims 58-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 11-12 of U.S. Patent No. 10,136,179 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the 10,136,179 teach similar limitations on generating a configured data package.
For example:
Regarding claim 41 the 10,136,179 patent teaches an application for execution on a cellular phone, the application comprising program instructions that, when executed by the application, cause the application (see the 10,136,179 patent, claim 9, col. 43, lines 50-52) to: generate a configured data package for initiating wireless communications over a wireless local area network (WLAN) involving a centralized HUB associated with security monitoring or appliance state monitoring (see the 10,136,179 patent, claim 9, col. 43, lines 47-53 and claim 12, col. 44, lines 5-7); the configured data package comprising network addressing information to initiate wireless communications directed at one or more destination devices, wherein the centralized HUB is one of the destination devices (see the 10,136,179 patent, claim 9, col. 43, lines 49-53); communicate the configured data package (see the 10,136,179 patent, claim 9, col. 43, lines 49-53), wherein a notification is communicated based on a detected change in a monitored condition after initiation of the wireless communications (see the 10,136,179 patent, claim 9, col. 43, lines 25-33 and claim 11, col. 44, lines 1-4); and wherein the notification is communicated based on a setting regarding when and how to communicate the notification (see the 10,136,179 patent, claim 9, col. 43, lines 34-41).
Claim 59 is rejected for double patenting as well by claim 12 of the 10,136,179 patent.
Claim 60 is rejected for double patenting as well by claim 12 (security device) of the 10,136,179 patent.
Response to Arguments
VIII. Applicant’s arguments with respect to claims 41-60 have been considered but are moot in view of the new grounds of rejection.
Conclusion
XI. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON J MILLER whose telephone number is (571)272-7869. The examiner can normally be reached M-F.
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/BRANDON J MILLER/Primary Examiner, Art Unit 2647
May 15, 2026
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