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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 26 May 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claims 1 and 20 are the independent claims pending in the present application. Claims 1 and 20 have both been amended to include a pairing verification circuit configured to generate a pairing notification based on the sensor/locator pairing that corresponds to the specific location within the building, the pairing notification including whether the sensor/locator pairing is correct. This limitation is confusing for a few reasons. First, typically, a one device is paired to another device. Devices are either paired or they are not. What exactly would indicate a correct pairing? What would indicate an incorrect pairing? The specification as filed doesn’t seem to truly define the term. While filed paragraph [0028] appears to not a pairing between a sensor 404 and a sensor locator 402, these are the only sensor and locator pairs mentioned, so therefore, it is not clear what pairing these two devices together makes it either correct or incorrect. While it is believed that the Applicant is trying to claim is that, for example, a sensor A1 and a sensor locator A2 would indicate a correct sensor pairing, while a sensor A1 and a sensor locator B2 would be an incorrect pairing. However, that is not what the specification states. The specification as filed states that a sensor 404 and a sensor locator 402 can be both correctly paired and incorrectly paired, without giving anything to distinguish between the two. Without a clear definition of what a correct or an incorrect pairing is, one of ordinary skill in the art could not accurately determine what a correct sensor pairing is and when it has been achieved.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
With respect to the case of the present invention, there is not enough direction provided by the inventor (Wands Factor F), there is no real comparison done to working examples in order to determine the advantage or improvement obtained by the arrangement of the invention (Wands factor G) , the state of the prior art says that devices are either paired together or they are not, which is not a correct or incorrect pairing (Wands Factor C), and finally, the level of one of ordinary skill in the art would determine if two devices are paired or if two devices are not paired, which is not a determination of a correct pairing (Wands Factor D). For at least these reasons, the claims as presented lack enablement. Since claims 1 and 20 lack enablement, then claims 2-19 and 21-26 lack enablement as well.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-26 have been considered but are moot because the new ground of rejection does not rely on any reasoning applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The present rejection does not contain a prior art rejection, but that is in not meant as an indication of any allowable subject matter in the present application. The current 35 USC 112 issues in the claims actually present an issue with performing an adequate and proper search of the claims in relation to the prior art as it is difficult at this time to determine precisely what the invention is truly doing and how. Should the applicant amend the claims to resolve these issues, then a new search will be conducted and if at that time similar prior art is found and a prior art rejection is made, then that rejection can be made final if the rejection is deemed to be made in view of the newly amended claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY T FRANK whose telephone number is (571)272-2193. The examiner can normally be reached M-F 9am-5:30pm.
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, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RODNEY T FRANK/Examiner, Art Unit 2855
June 24, 2026
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