Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status
This office action is in response to the Amendments filed 31 December 2025. As directed by applicant, claims 1, and 9 are amended, and claims 2-3 and 11-12 are cancelled. No claims are cancelled. This is a Non-Final Rejection.
Specification
The specification is objected to.
The use of the term “ZigBee” and Near Field Communication (NFC), which are trade names or a marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The amendment filed 5 May 2022 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. In The added material which is not supported by the original disclosure is as follows: Under Amendments to the Specification, the clause “which are hereby fully incorporated by reference in their entirety for all purposes as if fully set forth herein” is new matter. Specifically, the effective filing date of the National Application is the filing date of the earlier Korean Application No. 10-2019-0140414, filed on November 5, 2019, as the National Stage Application properly claims priority to the International PCT application and the Korean Application, which was filed earlier. Any further incorporation by reference beyond this date is improper, so the Incorporation by Reference, filed for the first time on 5 May 2022, is improper.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 1, 4- 10 and 13-15 contains the trademark/trade name “Zigbee ®” or Near Field Communication (NFC), which are trademarks . (All the claims are thus rejected as depending on a rejected claim). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a type of wireless communication and, accordingly, the identification/description is indefinite.
Please contact Examiner regarding any questions or concerns.
Allowable Subject Matter
Claims 1, 4-10, 13-15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE H SAMUELS whose telephone number is (571)272-2683. The examiner can normally be reached 9AM-5PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached at 571-270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE H SAMUELS/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761
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