DETAILED NON- FINAL OFFICE ACTION
This action is responsive to Applicant’s filing the instant application on 04/07/2022. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Reissue
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. This reissue application was filed 04/07/2022. Thus, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 made in this application are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 10,616,039 is or was involved. These proceedings would include interferences, reissues, reexaminations, 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 mate-rial to patentability of the claims under consideration in this reissue appli-cation.
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.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Response to Amendment
Amended claims 1 – 20 have been reviewed. The amendments filed in the Response do not comply with 37 CFR 1.173. Specifically, amended claims do not comply with 37 CFR 1.173(c)&(d).
Claims
Applicant is also notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(c),
“(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.”
The Remarks do not show the specific teachings to the specific amended limitations of the claims. Applicant merely states what claims were amended and the teachings are somewhere in the argument section of the Response without any mapping to specific sections of the specification to show support for the specific amendments. As seen in MPEP 1453 V. D. Amendment of New Claims, the status of a claim shows specific claims limitations amended and specifically maps those new and amended limitations to the sections of the specification that teach the amended claim limitation,
Example from MPEP 1453 V. D. Amendment of New Claims:
First Amendment (wherein claim 11 was first presented):
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Claim 11 (New). A knife comprising a handle portion and a notched blade portion.
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In the Remarks (supplied on a separate page):
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Status: The present application includes pending claims 1-11, with claims 1 and 11 being independent. With this amendment, applicant has added new independent claim 11. Support for this new claim is found in column 4, lines 26-41, column 5, lines 3-18, and column 6, lines 5-15.
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Second Amendment (wherein claim 11 is amended):
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Claim 11 (New, amended). A fishing knife comprising a bone handle portion and a notched blade portion.
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In the Remarks (supplied on a separate page):
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Status: The present application includes pending claims 1-11, with claims 1 and 11 being independent. With this amendment, applicant has amended new independent claim 11 as described below.
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Claim 11: Claim 11 is amended to add "fishing" before "knife" and "bone" before "handle". Support for these changes is found in column 4, lines 34-41 and column 6, lines 5-8, respectively.
Claims 1 – 20 have amendment markings that do not comply with 37 CFR 1.173(d),
(d) Changes shown by markings. Any changes relative to the patent being reissued that are made to the specification, including the claims but excluding "Large Tables" (§ 1.58(c) ), a "Computer Program Listing Appendix" (§ 1.96(c) ), a "Sequence Listing" (§ 1.821(c) ), and a "Sequence Listing XML" (§ 1.831(a) ) upon filing or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
If the next response does not comply with 37 CFR 1.173, the response will be held “Non-Compliant” and a shortened statutory period for reply to this letter is set to expire ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer, from the mailing date of the next Office Action.
Claim Rejections - 35 USC § 251
Claims 1 – 20 are rejected under 35 U.S.C. 251 as being an impermissible 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). The reissue application contains claim(s) that are broader than the issued patent claims. 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.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(I)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(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.”
(Step 1: MPEP 1412.02(A)) In the instant case and by way of the preliminary amendment, Applicant seeks to broaden previously allowed claims in this reissue at least by deleting/omitting the patent claim language requiring, “… billing unit configured to calculate a cost according to the failure processing history, wherein, when the CPE has a failure, the smart device is further configured to analyze state information collected according to a diagnosis scenario, process the failure, and transmit a failure processing history to the maintenance service server, wherein the short-range wireless communication is different from the home Internet service- wherein the application further comprises a data collection unit configured to collect device data including either one or both of log information and packet capture information from the CPE when a failure cause cannot be analyzed by the state analysis unit, and wherein the maintenance service server further comprises: a troubleshooting database (DB) configured to store a failure cause and failure action information corresponding to the failure cause, a cause analysis unit configured to analyze the failure cause by using received device data, and an action search unit configured to search the troubleshooting DB for the failure action information by using the analyzed failure cause; and the failure processing unit of the smart device is further configured to receive the failure action information from the maintenance service server, and instruct the CPE to take a failure action according to the failure action information”, which was specifically stated by the Examiner as a reasons for allowance in parent application 15/714,586 in the Notice of Allowance dated 11/20/2019 with regards to the Independent claims.
(Step 2: MPEP 1412.02(B)) The record of the prior 15/714,586 application prosecution indicates that the Final Action dated 085/29/2019 indicated allowable subject matter, then claims 2 – 6, and 8 – 10. The Applicant cancelled then claims 2 and 8 and applied their limitations to independent claims 1 and 7, respectively. Previous claim 7 was renumbered to independent claim 6. These limitations, in combination with the other indicated allowable subject matter, lead to the allowance of the claims. Subject matter is previously surrendered during the prosecution of the original application by reliance on an argument/statement made by the Examiner that a limitation of the claim(s) defines over the art. It is noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Therefore, in the instant application the claimed limitations are surrendered subject matter and the broadening of the reissue claims, as noted above, are clearly in the area of the surrendered subject matter, (See above “Step 1” for fully amended claim language that is underlined and specifically determined as the surrendered subject matter.).
(Step 3: MPEP 1412.02(C)) It is noted that the surrendered subject matter has been almost entirely eliminated from independent claims 1 and 6 in the reissue application. If surrendered subject matter has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 is proper. In the instant application, the newly amended independent claims 1 and 6, and new claim 16, do not teach the limitations stated above.. Additionally, reissue claims 1, 6, and 16 were not materially narrowed in other respects that relate to the surrendered subject matter to avoid recapture.
Therefore, improper recapture of broadened claimed subject matter surrendered in the application is clearly present in the instant reissue application.
Claim Rejections - 35 USC § 102
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 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 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, 6, 12, 13, 14, 16, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yae U.S. Pub. No. 2017/0118573.
Claim 1:
A remote maintenance system using a mobile communication network, the remote maintenance system comprising:
a troubleshooting database (DB) configured to store a failure cause and failure action information corresponding to the failure cause;
Yae teaches the use of multiple databases that contain similar information, (e.g., ¶¶ 0094 et seq.).
a maintenance service server configured to:
communicate with a smart device, wherein the smart device is further configured to communicate with customer premises equipment (CPE) through short-range wireless communication and the CPE is configured to connect to a network service provider and to provide a data service different from the short-range wireless communication;
Yae teaches a “smart device” of types similar to a cellular phone attempting to connect to a Bluetooth system via the Bluetooth protocol and experiencing an error, (e.g., ¶¶ 10 – 12 et seq.). The user’s cell phone and/or vehicle Bluetooth device having the ability to communicate the error to a server system with databases to determine the appropriate solution via mobile communications different from Bluetooth, (WCDMA, CEDMA, LTE/LTE-Advanced, and Wi-Fi), (e.g., ¶¶ 0087– 0090, 0107 – 0109 et seq.). The information can be sent and received by either the Bluetooth device or the user’s cell phone, (e.g., ¶¶ 0090 – 0093, 0097 – 0098, 0107 – 0109, 0120 – 0123).
when the CPE has a failure, analyze a failure cause using device data received by the smart device from the CPE via the short-range wireless communication and transmitted to the maintenance service server over a mobile communication network;
Yae teaches a “smart device” as a “user device” that may include, but is not limited to, a smartphone, a laptop computer, a wearable device, or the like, and may be any device as long as the user device 320 can Bluetooth-communicate with the vehicle Bluetooth device 310, attempting to connect to a Bluetooth system via the Bluetooth protocol and experiencing an error, (e.g., ¶¶ 10 – 12 et seq.). The user device and/or vehicle Bluetooth device having the ability to communicate the error to a server system with databases to determine the appropriate solution via mobile communications different from Bluetooth, (WCDMA, CEDMA, LTE/LTE-Advanced, and Wi-Fi), (e.g., ¶¶ 0087– 0090, 0107 – 0109 et seq., and Figures 4 &5). The information can be sent and received by either the Bluetooth device or the user device, (e.g., ¶¶ 0090 – 0093, 0097 – 0098, 0107 – 0109, 0120 – 0123, and Figures 4 &5).
search the troubleshooting DB for the failure action information using the analyzed failure cause; and
Yae teaches the use of different databases to aid in troubleshooting the issues between the user device and the Bluetooth device, (e.g., ¶¶ 0094, 0097, and 0098).
“[0094] The compatibility management server 330 may be configured to include a compatibility manager 331, a compatibility problem processor 332, a compatibility problem database 333, and a compatibility problem solution database 334.
[0097] When a software and/or firmware version to be updated corresponding to the detected error is present in the compatibility problem solution database 334, the compatibility manager 331 may immediately transmit the corresponding software and/or firmware as the corresponding update target to the vehicle Bluetooth device 310 and/or the user device 320 through the established session.
[0098] In addition, when a software and/or firmware version that can overcome detected error is present in the compatibility problem solution database 334, the compatibility manager 331 may transmit a predetermined guide message indicating that the corresponding problem is overcome and then update is provided, to the vehicle Bluetooth device 310 and/or the user device 320 and then transmit the corresponding error information and the device information to an analysis center 360.”
Yae further teaches using said databases to determine the issues at hand based on the error type, (e.g., ¶¶ 0099 – 0102 et seq., and 0117 et seq., and Figures 4 &5).
transmit the failure action information to the smart device wherein the smart device is further configured to instruct the CPE to take a failure action according to the failure action information.
As stated above, the user device and/or the Bluetooth device can send and receive information from the server depending on their wireless communication capabilities, see above cited areas. Yae further teaches updating the user device and/or Bluetooth device via sending software and/or firmware to either the user device and/or Bluetooth device, see above cited areas. The server system can also send the needed update information for the Bluetooth device to the user device via the wireless communication network 340 and have the user device transmit the software and/or firmware to update the Bluetooth device and therefore taking “a failure action according to the failure action information”, (e.g., ¶¶ 0103 et seq., and Figures 4 &5).
Claims 6, 12, 13, 14, 16, and 19 claim similar limitations as claim 1 and is therefore rejected for similar cited reasons as stated above.
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 2, 5, 7, 9, and 10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yae U.S. Pub. No. 2017/0118573, in view of Cerami et al., U.S. Patent No. 6,901,530, herein after “Cerami”, in further view of Passaretti et al. U.S. Patent No. 10,740,169, hereinafter “Passaretti”.
Claim 2:
The remote maintenance system of claim 1, wherein, for transmitting the failure action information to the smart device, the maintenance service server is further configured to:
report the received device data to a maintenance specialist when the maintenance service server is unable to analyze a failure cause or when failure action information corresponding to the analyzed failure cause is not found in the trouble shooting DB;
As closely interpreted by the Examiner, Yae teaches all that is similar in nature with regards to a trouble shooting DB. Yae does not specifically teach reporting the received device data to a maintenance specialist. Cerami teaches such an act when a fault can not be automatically resolved by their proactive network management system. Technicians may be dispatched by the system to fix the faults, (e.g., 5:22 – 6:26 et seq., 9:40 – 11:17 et seq.). It would have been obvious to one or ordinary skill in the art at the time the invention was filed to utilize a maintenance specialist if a failure is not found in the DB because utilizing a “maintenance specialist” or technician would allow the system to better handle faults and failure that my need more troubleshooting. Performing such would also allow a system to update the DB with the resolution to the new failure so that future failures may be automatically resolved by the DB and have the technicians troubleshoot other issues.
receive, from the maintenance specialist, the analyzed failure cause and corresponding failure action information; and
As closely interpreted by the Examiner, Cerami teaches this limitation as per the same cited areas above, (e.g., 5:22 – 6:26 et seq., 9:40 – 11:17 et seq.). It would have been obvious to one or ordinary skill in the art at the time the invention was filed to utilize a maintenance specialist as similarly stated above.
update the troubleshooting DB with the received failure cause and the corresponding failure action information.
As closely interpreted by the Examiner, Passaretti more clearly teaches updating the troubleshooting DB with the solutions, (e.g., 2:33 – 55 et seq.). It would have been obvious to one or ordinary skill in the art at the time the invention was filed to combine Passaretti’s updating of the database with Yae and Cerami because if a technician is able to solve a failure, it would be advantageous to store said solution to the failure so other technicians do not have to redo work that was already performed, (e.g., 8:36 - 9:54 et seq.). Therefore, making a more efficient use of time and resources.
Claims 5, 7, 9, and 10 teach similar limitations as claims 1- 2 and are therefore rejected for similar reasons as stated above.
Claims 3, 8, 11, 12, 15, 18, and 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yae, Cerami, and Passaretti in further view of Lamb U.S. Patent No. 9,264,523.
Claim 3:
The remote maintenance system of claim 2, wherein the maintenance service server is further configured to:
deliver the received device data to a remote maintenance specialist; and
As stated above, Yae in view of Cerami, in further view of Passaretti teach this limitation as similarly stated in the above rejections, see cited areas of their specifications and reasons for combining.
request a console connection with the CPE from the smart device according to a console connection request from the remote maintenance specialist, wherein the CPE is further configured to remotely provide a console connection to a console connection program at a remote site through the smart device.
Lamb more specifically teaches this limitation. More specifically, the act of connecting a console device, see Figs. 1 and 2, to a smart device via diagnostic application 150, also see Fig. 2, in order to have a technician aid in trouble shooting an issue with a CPE. ae teaches the use of multiple databases, (e.g., Figs. 1 – 4 and the sections of the specification that support these figures.). It would have been obvious to one or ordinary skill in the art at the time the invention was filed to combine Lamb with Yae, Cerami, and Passaretti’s because of similar reasons stated above and utilizing a remote technician and their troubleshooting equipment would allow the failure to be solved more efficiently without the technician having to visit the sight where the failure has occurred, see Lamb’s “Background”.
Claims 8, 11, 12, 15, 18, and 20 teach similar limitations as claims 1-3 and are therefore rejected for similar reasons as stated above.
Conclusion
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID E. ENGLAND whose telephone number is (571)272-3912. The examiner can normally be reached on M-F 8:00-5:00.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, Michael Fuelling can be reached on 571-270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID E. ENGLAND
Primary Examiner
Art Unit 3992
/DAVID E ENGLAND/Primary Examiner, Art Unit 3992
Conferee:
/Roland Foster/ Primary Examiner, Art Unit 3992/MICHAEL FUELLING/Supervisory Patent Examiner, Art Unit 3992