DETAILED ACTION
Notice of 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 .
Status of the Application
Claims 52-83 were pending and were rejected in the previous office action.
Claims 52 and 67 are amended. Claim 58 and 73 are canceled.
Claims 52-57, 59-72, and 74-83 remain pending and are examined in this office action.
Information Disclosure Statement
The Information Disclosure Statements filed 10/29/2025 through 01/22/2026 have been considered.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/9/2026 and the RCE filed 3/3/2026 has been entered.
Response to Arguments
Double Patenting:
Applicant’s arguments discuss but do not otherwise address the double patenting rejections of claims 52-83 (see pg. 10, remarks filed 6/27/2025). The previous non-statutory double patenting rejections are updated based on the amendments to claims 52 and 67 (and cancellation of claims 58 and 73).
Applicant may file a terminal disclaimer to overcome the remaining double patenting rejections and put the claims in condition for allowance.
35 USC § 103:
Applicant’s arguments regarding the previous § 103 rejections of claims 52-83 (pgs. 10-11, remarks filed 2/9/2026) have been fully considered and are persuasive. See the reasons for novelty/nonobviousness discussed below for further detail. The previous § 103 rejections are withdrawn.
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.
Claims 52-57, 59-72, and 74-83 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-14, 16-22, 24-30, and 32 of U.S. Patent No. 9974042 (US 9974042 B2) in view of US2 0150130629 A1 to Chen et al. (Chen). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 52: All of the limitations of claim 52 of the instant application are anticipated by claim 1 of the ‘042 patent except for the following:
wherein the actionable event related to the operation of the piece of equipment is distinct from operations of the first node
detecting…an activation status indicating whether the piece of equipment has powered up as a condition related to an actionable event…
transmitting…a message reporting the activation status that is the condition related to the actionable event,
notifying the server…about the condition related to the actionable event;
detecting, by the server, the actionable event based on the activation status that is the condition related to the actionable event and information related to the first node;
While claim 1 of the ‘042 patent teaches the disclosed basic configuration of elements of instant claim 52 and further teaches detecting an actionable event at the ID node (first node), transmitting a message reporting the actionable event to the to a master node (second node), notifying the server about the actionable event, and initiating an action in response to the actionable event/information received from an ID node (first node) – however, the ‘042 patent is only missing disclosure that this relayed information pertaining to an actionable event includes information on the detected “activation status indicating whether the piece of equipment has powered up as a condition related to the actionable event…” being transmitted to the second node and subsequently to the server.
However, Chen teaches an asset monitoring tag attached to monitored asset/piece of equipment (Chen: Fig. 1, ¶ 0025), wherein the asset monitoring tag detects usage information including activation of a powered on state of the monitored asset, i.e. operations specific to the monitored asset rather than the asset tag (Chen: ¶ 0033-0034), and the asset tags transmit the usage information including powered on events to a receiver (Chen: ¶ 0038), which in turn receives usage information from asset tags and further transmits the usage information to a server (Chen: ¶ 0038). In response to receiving this data, the server may store the usage information in a database, i.e. receiving the usage information is a condition for an actionable event (Chen: ¶ 0027). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the detection and reporting of power on/off states and asset usage data of Chen in the asset monitoring system of the ‘042 patent with a reasonable expectation of success of arriving at the claimed invention, with the motivation that “it may not only be important to be able to know the location of an electronic asset, but also to determine whether the electronic asset is being actively utilized. Such usage information may be particularly valuable for high end electronic equipment which can sometimes cost hundreds of thousands of dollars. Knowing whether an electronic asset is being used or not being used may allow for more effective ways of allocating resources and reducing the need for additional purchases” (Chen: ¶ 0020).
Note: “Chen” claims priority to Provisional application No. 61/902.746, filed on Nov. 11, 2013, which provides disclosure for the elements relied upon herein.
Claim 53: As above, the limitations of claim 52 of the instant application are taught by Claim 1 of the ‘042 patent/Chen. The limitations of claim 53 of the instant application are further taught by claim 2 of the ‘042 patent.
Claim 54: As above, the limitations of claim 52 of the instant application are taught by Claim 1 of the ‘042 patent/Chen. The limitations of claim 54 of the instant application are further taught by claim 3 of the ‘042 patent.
Claim 55: As above, the limitations of claim 54 of the instant application are taught by claims 1 and 3 of the ‘042 patent/Chen. The limitations of claim 55 of the instant application are further taught by claim 4 of the ‘042 patent.
Claim 56: As above, the limitations of claim 52 of the instant application are taught by claim 1 of the ‘042 patent/Chen. The limitations of claim 56 of the instant application are further taught by claim 5 of the ‘042 patent.
Claim 57: As above, the limitations of claim 52 of the instant application are taught by claim 1 of the ‘042 patent/Chen. The limitations of claim 57 are further taught by claim 6 of the ‘042 patent.
Claim 59: As above, the limitations of claim 52 of the instant application are taught by claim 1 of the ‘042 patent/Chen. The limitations of claim 59 are further taught by claim 8 of the ‘042 patent.
Claim 60: As above, the limitations of claim 52 of the instant application are taught by claim 1 of the ‘042 patent/Chen. The limitations of claim 60 are further taught by claim 9 of the ‘042 patent.
Claim 61: As above, the limitations of claim 52 of the instant application are taught by claim 1 of the ‘042 patent/Chen. The limitations of claim 61 are further taught by claim 10 of the ‘042 patent.
Claim 62: As above, the limitations of claim 52 of the instant application are taught by claim 1 of the ‘042 patent/Chen. The limitations of claim 62 are further taught by claim 11 of the ‘042 patent.
Claim 63: As above, the limitations of claim 52 of the instant application are taught by claim 1 of the ‘042 patent/Chen. The limitations of claim 63 are further taught by claim 12 of the ‘042 patent.
Claim 64: As above, the limitations of claim 63 of the instant application are taught by claims 1 and 12 of the ‘042 patent/Chen. The limitations of claim 64 are further taught by claim 13 of the ‘042 patent.
Claim 65: As above, the limitations of claim 52 of the instant application are taught by claim 1 of the ‘042 patent/Chen. The limitations of claim 65 are further taught by claim 14 of the ‘042 patent.
Claim 66: As above, the limitations of claim 52 of the instant application are taught by claim 1 of the ‘042 patent/Chen. The limitations of claim 66 are further taught by claim 16 of the ‘042 patent.
Claim 67: All of the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent except for the following:
wherein the actionable event related to the operation of the piece of equipment is distinct from operations of the first node
wherein the first node is operative to detect an activation status indicating whether the piece of equipment has powered up as a condition related to an actionable event…
and transmit a message reporting the activation status that is the condition related to the actionable event;
notify the server about the condition related to the actionable event reported in the message received from the first node, and
detect the actionable event based on the activation status that is the condition related to the actionable event and information related to the first node
While claim 17 of the ‘042 patent teaches the disclosed basic configuration of elements of instant claim 67 and further teaches detecting an actionable event at the ID node (first node), transmitting a message reporting the actionable event to the to a master node (second node), notifying the server about the actionable event, and initiating an action in response to the actionable event/information received from an ID node (first node) – however, the ‘042 patent is only missing disclosure that this relayed information pertaining to an actionable event includes information on the detected “activation status indicating whether the piece of equipment has powered up as a condition related to the actionable event…” being transmitted to the second node and subsequently to the server.
However, Chen teaches an asset monitoring tag attached to monitored asset/piece of equipment (Chen: Fig. 1, ¶ 0025), wherein the asset monitoring tag detects usage information including activation of a powered on state of the monitored asset, i.e. operations specific to the monitored asset rather than the asset tag (Chen: ¶ 0033-0034), and the asset tags transmit the usage information including powered on events to a receiver (Chen: ¶ 0038), which in turn receives usage information from asset tags and further transmits the usage information to a server (Chen: ¶ 0038). In response to receiving this data, the server may store the usage information in a database, i.e. receiving the usage information is a condition for an actionable event (Chen: ¶ 0027). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the detection and reporting of power on/off states and asset usage data of Chen in the asset monitoring system of the ‘042 patent with a reasonable expectation of success of arriving at the claimed invention, with the motivation that “it may not only be important to be able to know the location of an electronic asset, but also to determine whether the electronic asset is being actively utilized. Such usage information may be particularly valuable for high end electronic equipment which can sometimes cost hundreds of thousands of dollars. Knowing whether an electronic asset is being used or not being used may allow for more effective ways of allocating resources and reducing the need for additional purchases” (Chen: ¶ 0020).
Claim 68: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 68 are further taught by claim 18 of the ‘042 patent.
Claim 69: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 69 are further taught by claim 19 of the ‘042 patent.
Claim 70: As above, the limitations of claim 69 of the instant application are taught by claims 17 and 19 of the ‘042 patent/Chen. The limitations of claim 70 are further taught by claim 20 of the ‘042 patent.
Claim 71: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 71 are further taught by claim 21 of the ‘042 patent.
Claim 72: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 72 are further taught by claim 22 of the ‘042 patent.
Claim 74: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 74 are further taught by claim 24 of the ‘042 patent.
Claim 75: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 75 are further taught by claim 25 of the ‘042 patent.
Claim 76: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 76 are further taught by claim 26 of the ‘042 patent.
Claim 77: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 77 are further taught by claim 27 of the ‘042 patent.
Claim 78: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 78 are further taught by claim 28 of the ‘042 patent.
Claim 79: As above, the limitations of claim 78 of the instant application are taught by claims 17 and 28 of the ‘042 patent/Chen. The limitations of claim 79 are further taught by claim 29 of the ‘042 patent.
Claim 80: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 80 are further taught by claim 30 of the ‘042 patent.
Claim 81: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The limitations of claim 81 are further taught by claim 32 of the ‘042 patent.
Claim 82: As above, the limitations of claim 52 of the instant application are taught by claim 1 of the ‘042 patent/Chen. The claims of the ‘042 patent do not explicitly teach, however, Chen does teach: wherein the actionable event related to the operation of the piece of equipment is distinct from operations of the second node (Chen: ¶ 0033-0034 showing monitoring usage and power on/off status by an asset tag, which is reported to the receiver – i.e. not related to an operation of the receiver).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included detection and reporting of power on/off states and asset usage data of Chen (which is distinct from the operations of the receiver) in the asset monitoring system of the ‘042 patent/Chen with a reasonable expectation of success of arriving at the claimed invention, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 83: As above, the limitations of claim 67 of the instant application are taught by claim 17 of the ‘042 patent/Chen. The claims of the ‘042 patent do not explicitly teach, however, Chen does teach: wherein the actionable event related to the operation of the piece of equipment is distinct from operations of the second node (Chen: ¶ 0033-0034 showing monitoring usage and power on/off status by an asset tag, which is reported to the receiver – i.e. not related to an operation of the receiver).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included detection and reporting of power on/off states and asset usage data of Chen (which is distinct from the operations of the receiver) in the asset monitoring system of the ‘042 patent/Chen with a reasonable expectation of success of arriving at the claimed invention, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Novelty/Non-Obviousness
Claims 52-57, 59-72, and 74-83 are novel and nonobvious over the prior art.
While the previous combination of US 20140279596 A1 to Waris et al. (Waris) in view of US 20120216252 A1 to Skaaksrud et al. (Skaaksrud), and further in view US 20100274604 A1 to Crilly were previously cited as teaching the claimed invention, claims 52 and 67 are amended herein to recite:
detecting, by the first node, an activation status indicating whether the piece of equipment has powered up as a condition related to an actionable event related to the operation of the piece of equipment, wherein the actionable event related to the operation of the piece of equipment is distinct from operations of the first node;
transmitting, by the first node to the second node, a message reporting the activation status that is the condition related to the actionable event;
detecting, by the server, the actionable event based on the activation status that is the condition related to the actionable event and information related to the first node;
and initiating, by the server, a responsive action based upon the notification
While Waris generally discusses various functions relating to tracking a monitored asset during transport and through the custody between multiple entities en route to a destination (see Final Rejection mailed 10/07/2025, pgs. 19-25), Skaaksrud generally teaches a first node (sensor) detecting a condition (sensor data) relating an actionable event (temperature threshold exceeded) and transmitting the condition information relating to an actionable event detected by the sensor to a second node (requesting device) (Skaaksrud: ¶ 0032-0035, ¶ 0039; also see Final Rejection mailed 10/07/2025, pgs. 19-25), and Crilly teaches monitoring a transportation refrigeration unit using a data logger including various monitoring sensor for tracking the operations of the transportation refrigeration unit, thus detecting an actionable event related to the operation of the piece of equipment that is distinct from operations of the first node (Crilly: Fig. 2 and ¶ 0023, ¶ 0028, ¶ 0031-0032; also ¶ 0012 and ¶ 0035-0038; also see Final Rejection mailed 10/07/2025, pgs. 19-25) – no combination of teachings from Waris, Skaaksrud, and Crilly above teaches the currently recited features involving an activation status indicating a power up of the piece of equipment being used in conjunction with the information related to the first node as the basis for the detection of the actionable event by the server.
The most relevant reference identified by the examiner pertaining to the deficiencies above is Chen (US 20150130629 A1) which generally teaches an asset monitoring tag attached to monitored asset/piece of equipment (Chen: Fig. 1, ¶ 0025), wherein the asset monitoring tag detects usage information including activation of a powered on state of the monitored asset (Chen: ¶ 0033-0034), and the asset tags transmit the usage information including powered on events to a receiver (Chen: ¶ 0038), which in turn receives usage information from asset tags and further transmits the usage information to a server (Chen: ¶ 0038). In response to receiving this data, the server may store the usage information in a database (Chen: ¶ 0027).
However, as the combination of Waris, Skaaksrud, and Crilly above pertains to tracking/logging device monitoring assets in transportation, one of ordinary skill in the art would not have found it obvious to further incorporate the features of Chen for monitoring usage of an electronic into the existing combination such that one would arrive at the claimed invention, considered in the context of the claims as a whole. For example, the references could not be reasonably combined to teach all of the limitations for:
detecting, by the first node, an activation status indicating whether the piece of equipment has powered up as a condition related to an actionable event related to the operation of the piece of equipment, wherein the actionable event related to the operation of the piece of equipment is distinct from operations of the first node;
transmitting, by the first node to the second node, a message reporting the activation status that is the condition related to the actionable event;
notifying the server by the second node about the condition related to the actionable event;
detecting, by the server, the actionable event based on the activation status that is the condition related to the actionable event and information related to the first node;
and initiating, by the server, a responsive action based upon the notification
Claims 53-57, 59-66, 68-72, and 74-83 depend from claims 52 and 67. Therefore, claims 52-57, 59-72, and 74-83 are novel and nonobvious over the prior art.
Conclusion
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/HUNTER MOLNAR/Examiner, Art Unit 3628
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