NON-FINAL REJECTION
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 .
Election/Restrictions
Applicant's election with traverse of Group I with claims 15-24 in the reply filed on 11/05/2025 is acknowledged. The traversal is on the ground(s) that “…claim 35 is directed to the "second device" recited in claim 15, and recites features analogous to the second device features of claim 15. Thus, claim 35 and its dependent claims are directed to an apparatus specifically designed for carrying out the method recited in claim 15 and its dependent claims. Accordingly, Applicant respectfully submits that Group I and Group II should be classified as a process and an apparatus specifically designed for carrying out said process as defined in 37 CFR 1.475(b)(4), and requests that claims 15-24 and claims 35-41 remain pending in this application pursuant to 37 CFR 1.475(b)(4). Applicant respectfully requests that the restriction requirement be withdrawn”. This is not found persuasive because after further reconsideration of the claims, claim 15 includes different functional language not present in claim 35.
Particularly, the following functional limitations of claim 15 are found to be distinct from claim 35:
“transmitting the second message comprising a second fixed code from the second device, at least a portion of the second message instructing the first device regarding storing of information associated with the second message;
receiving by the second device a third message including at least the first fixed code and a changed version of the first changing code;
transmitting by the second device in response to validating the third message a fourth message including the second fixed code and a second changing code”
Meanwhile claim 35 includes different functional limitations making them distinct from claim 15, such as:
“the second message comprising a second fixed code and a second changing code that is independent from the first changing code,
control the communication circuit to receive a third message including at least the first fixed code and a changed version of the second changing code;
upon validation of the third message transmit a fourth message comprising the second fixed code and a second changing code.”
The requirement is still deemed proper and is therefore made FINAL.
Claims 35-41 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/05/2025.
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 (i.e., changing from AIA to pre-AIA ) 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 15-20 and 23-24 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by FITZGIBBON (US 20190200225 A1).
Re claim 15. FITZGIBBON discloses (abstract) a method (FIG.5A-5C) of pairing a first device (1st device) and a second device (2nd device) to effect secure communication between the first device and the second device (FIG.1), the method comprising:
receiving by the second device, while the second device is in a learning mode 452, a first message from the first device 454, wherein the first message includes at least a first fixed code (1st fixed code) and a first changing code (1st variable code); [0057]
storing by the second device code values associated with the first message; 457 [0057]
determining by the second device whether to instruct the first device to store information associated with a second message based on at least a portion (such as fixed code data) of the first message; 458 [0057]
transmitting the second message comprising a second fixed code (2nd fixed code within calculated window – used to determine how to process data) from the second device, at least a portion of the second message instructing the first device regarding storing of information associated with the second message (time window affects data processing of codes); 459 [0057]
receiving by the second device a third message including at least the first fixed code and a changed version (modified 1st variable code) of the first changing code; 464 [0059]
validating by the second device the third message by comparing the first fixed code and the changed version of the first changing code to the stored code values associated with the first message; and 465 [0059]
transmitting by the second device in response to validating the third message a fourth message including the second fixed code and a second changing code. 467 [0059]
[0057] In one form, the pairing method begins when a first device is activated 451 by a user while a second device has been placed 452 in “learn” mode, such as by pressing a button or switching a lever on or associated with the second device. To begin, the first device contains within its memory a first fixed code and a first variable code, and the second device contains a second fixed code and a second variable code. When the first device is activated, it transmits 453 from the first device a first encrypted message that includes at least a first fixed code and a first changing or variable code, and determines 455 based on at least a portion of the first encrypted message a time window in which to expect a response from the second device. A first device receiver is enabled 456 during the time window to receive the response from the second device. The second device, meanwhile, receives 454 the first encrypted message while the second device is in the learn mode and stores 457 in the second device's memory the decrypted first fixed and first variable codes from the first encrypted message or portions thereof. The second device determines 458 a time window, based on the first encrypted message, in which to transmit a response. The second device then transmits 459 the response within the time window, the response comprising a second encrypted message including a second fixed code from the second device. If the second encrypted message is received 460 by the first device within the time period calculated for response by the first device, the second message is decrypted and the first device stores 461 the second fixed code. If the response from the first device is not received within the time window, the message is ignored and the pairing process ceases.
Re claim 16. [0008-0009] The method of claim 15, wherein the second device performs the step of determining whether to instruct the first device to store the information associated with the second message based on a classification of the first device.
Re claim 17. [0057] The method of claim 15, wherein the second device uses at least a portion of the first message in performing the step of determining whether to instruct the first device to store the information associated with the second message.
Re claim 18. [0057] The method of claim 17, wherein the second device uses at least a portion of the first fixed code in performing the step of determining whether to instruct the first device to store the information associated with the second message. [0015]
Re claim 19. [0057] The method of claim 15, wherein the second device instructs the first device regarding storing of the information associated with the second message via an instruction portion of the second message, the instruction portion (by way time period of transmission of second message from second device) comprising either:
a) an instruction to store the information associated with the second message; or
b) an instruction not to store the information associated with the second message.
Re claim 20. [0057] The method of claim 15, further comprising determining, by the second device before the transmitting of the second message, a time window (calculated response time window) during which to transmit the second message to the first device based on at least a portion of the first message.
Re claim 23. [0057] The method of claim 15, further comprising entering the learning mode in response to a user input at a user interface of the second device.
Re claim 24. [0013] The method of claim 15, wherein the second device comprises a garage door operator.
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 (i.e., changing from AIA to pre-AIA ) 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over FITZGIBBON (US 20190200225 A1) in view of CHEN et al. (US 20010017799 A1).
Re claim 21. (FIG.5A – step 453-454) The method of claim 15, wherein the first message includes an first signal including the first fixed code and the first changing code.
However, FITZGIBBON (US 20190200225 A1) fails to explicitly disclose:
a second signal including information indicative of whether the first device is capable of storing the information associated with the second message; and
wherein determining by the second device whether to instruct the first device to store the information associated with the second message includes determining whether the first device is capable of storing the information associated with the second message based at least in part on the second signal.
CHEN teaches (abstract) in a similar field of invention, an efficient memory allocation schemed to collect data, wherein a determination of available memory is transmitting within a reply signal [0024] such that a proper memory allocation is determined as needed.
The use of a second signal including information indicative of whether the first device is capable of storing the information associated with the second message to help determine whether the first device is capable of storing the information associated would have been a predictable modification – such as efficient management of data transmission and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.
Re claim 22. (FIG.5A – steps 459) the method of claim 15, wherein transmitting the second message includes transmitting a first signal including the second fixed code.
However, FITZGIBBON (US 20190200225 A1) fails to explicitly disclose:
a second signal instructing the first device regarding storing of the information associated with the second message.
CHEN teaches (abstract) in a similar field of invention, an efficient memory allocation schemed to collect data, wherein a determination of available memory is transmitting within a reply signal [0024] such that a proper memory allocation is determined as needed.
The use of a second signal including information indicative of whether the first device is capable of storing the information associated with the second message to help determine whether the first device is capable of storing the information associated would have been a predictable modification – such as efficient management of data transmission and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.
Conclusion
The prior art made of record in PTO-892 Form and not relied upon is considered pertinent to applicant’s disclosure.
FARRIS teaches in a similar field of invention, a security system for a garage door using a rolling code.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS E GARCIA whose telephone number is (571)270-1354. The examiner can normally be reached M-Th 9-6pm F 9-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Zimmerman can be reached at (571) 272-3059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CARLOS E. GARCIA
Primary Examiner
Art Unit 2686
/Carlos Garcia/Primary Examiner, Art Unit 2686 12/5/2025