DETAILED ACTION
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 .
Amended claims 1 thru 15 and 21 thru 25 have been re-examined. Claims 16 thru 20 have been cancelled.
Response to Amendment
The amendments to the drawings overcome the drawing objections from the previous office action (3/12/2026). The drawing objections are withdrawn.
The amendments to the specification overcome the specification objections from the previous office action (3/12/2026). The specification objections are withdrawn.
The amendment to claim 1 overcomes the claim objection from the previous office action (3/12/2026). The claim objection is withdrawn.
The amendment to claim 24 overcomes the 35 U.S.C. 112(b) rejection of claim 24 from the previous office action (3/12/2026). The 35 U.S.C. 112(b) rejection of claim 24 is withdrawn.
The 35 U.S.C. 112(b) rejection of claim 23 is withdrawn based on the interview of 4/21/2026 and the applicant’s argument (see pages 15 and 16). The examiner acknowledges that the first and second vehicle devices can be the same type of device (claim 23 lines 1 and 2), while the first and second vehicle devices are different (claim 1 lines 15 and 16). The claimed type of device may be considered a classification, such as lighting, entertainment, mirrors, etc. While the claimed different devices may be brake lights and head lights, a radio and rear seat TV, rear-view mirror and side mirrors, etc. Each are different devices, but can be in the same class or type of device (see parent document Patent Number 12,325,358).
Response to Arguments
Applicant’s arguments, see pages 17 thru 20, filed 4/24/2026, with respect to the 103 rejections have been fully considered and are persuasive. The 103 rejections of 3/12/2026 have been withdrawn. Additionally, based on the applicant’s arguments and the interview conducted on 4/21/2026, a double patenting rejection is issued (see below).
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 1, 3 thru 11 and 13 thru 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4 thru 7, 9, 10 and 12 thru 15 of U.S. Patent No. 12,325,358 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are recited in a broader manner than the patented claims. Below are some examples of the pending broader claim limitations related to the patented claim limitations.
Controller Mirror controller
First vehicle device Fold/unfold side mirrors
Second vehicle device Retract/extend side mirrors
Activate functionality Activate power extend
Deactivate functionality Deactivate mirror tilt
User interface Mirror tilt switch
The patented claim limitations could be used in prior art rejections (if the patent were available as prior art) because they would read on the broad limitations of the pending claims.
Claims 2, 12 and 21 thru 25 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 12,325,358 in view of Smith Patent Application Publication Number 2021/0300250 A1.
Regarding claims 2 and 12, Smith teaches the claimed second vehicle device is a powered running board, “Powered retractable vehicle step assist systems and methods are provided. The steps systems are configured for installation (e.g., after market installation) and use with a vehicle. The system can include a stepping member movable between a retracted position and a deployed position with respect to the vehicle. The system can further include a vehicle interface. A controller of the step system can be configured to process information received from the vehicle interface and, based at least partly on the processing of the information, cause movement of the stepping member between the retracted position and the deployed position.” (abstract). The control of the running board would be substituted for one of the mirror controls (fold or extension).
Regarding claims 21 and 22 Smith teaches the claimed secondary vehicle device comprises one or more auxiliary lighting devices, “the controls portion 912 on the lights tab 926 desirably comprises one or more switches or buttons 940, each corresponding to a particular light or set of lights of the vehicle” (P[0181] and Figure 10A), the lights controlled are step lights, puddle lights, bed lights and grill lights (Figure 10A), and the claimed controller performs operations to control the secondary vehicle device by controlling auxiliary lighting devices to perform activation or deactivation of the auxiliary lights, “The various lights that are controllable by the described system may be part of the retractable step system, may be part of the vehicle separate from the retractable step system, may be aftermarket add-on lights, and/or any combination of the foregoing. For example, in the embodiment illustrated in FIG. 10A, the bed lights may be part of the vehicle separate from the retractable step system, and the step lights may be part of the retractable step system. In some embodiments, the system is configured to communicate with the vehicle data bus in order to control some or all of the lights.” P[0181]. The control of the lighting would be substituted for one of the mirror controls (fold or extension).
Regarding claim 23 Smith teaches the claimed first vehicle device and second vehicle device are a same type of device that comprises an aftermarket device for replacement of a factory equipment device, “The automated step system 300 may be installed after market, for example, and can include a vehicle interface 304, a step controller 306, a drive unit 308, linkage 309, and a stepping deck 310.” P[0094], cause the controller to: the claimed control a first functionality of the aftermarket device by sending the signals to control the first vehicle device, a signal to unlock the door or a key FOB actuation to unlock the door (Table on page 16); and the claimed control a second functionality of the aftermarket device by sending the second signals to control the second vehicle device, the key FOB causes the step to deploy (Table on page 16), and “the step remote device 1000 may be used to instruct the system to place the retractable step into an override condition in the retracted or deployed position” P[0150].
Regarding claim 24 Smith teaches the claimed powered running board, “Powered retractable vehicle step assist systems and methods are provided. The steps systems are configured for installation (e.g., after market installation) and use with a vehicle. The system can include a stepping member movable between a retracted position and a deployed position with respect to the vehicle. The system can further include a vehicle interface. A controller of the step system can be configured to process information received from the vehicle interface and, based at least partly on the processing of the information, cause movement of the stepping member between the retracted position and the deployed position.” (abstract). The control of the running board would be substituted for one of the mirror controls (fold or extension). The additional limitations of claim 24 are taught by the Patent limitations of claims 1 and 9.
Regarding claim 25 Smith teaches cause the controller to: the claimed receive a second command from the user interface, the key FOB causes the step to deploy (Table on page 16), and “the step remote device 1000 may be used to instruct the system to place the retractable step into an override condition in the retracted or deployed position” P[0150]; and the claimed perform operations of a command up or command down of the powered running board based on the second command, the step is deployed or retracted based on a signals from a key FOB (Table on page 16), and “At block 1423, the process flow depends on whether the requested manual override is an override into the deployed direction or the retracted direction. If the requested manual override is to deploy the steps, the process flow proceeds to blocks 1425 and 1427 and causes the system to deploy the step and illuminate the step using the step lights. If, at block 1423, the manual override is a request to retract the steps, the process flow proceeds to blocks 1429 and 1431 and causes the system to retract the steps and disable the step lights.” (P[0209] and Figure 14-1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine control of vehicle accessories of Patent Number 12,325,358 with the control of the vehicle step of Smith in order to, with a reasonable expectation of success, reduce complexity and expense (Smith P[0004]).
Related Art
The examiner points to Westra et al Patent Number 9,639,688 B2 as related art but not relied upon for any rejection. Westra et al is directed to a vehicle resource usage control system that includes a vehicle computer having security policies that define usage rules for one or more vehicle resources (abstract, and Figures 3 thru 5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DALE W HILGENDORF whose telephone number is (571)272-9635. The examiner can normally be reached Monday - Friday 9-5:30.
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, Jelani Smith can be reached at 571-270-3969. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DALE W HILGENDORF/Primary Examiner, Art Unit 3662
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