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 .
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
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.
Reissue Applications
The instant application is a broadening reissue of U.S. Patent No. 11,818,680 to Holland, having claims 1-15. In a preliminary amendment, Applicant has amended claims 1-15 and added claims 16-20. Claims 1-20 have been examined.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,818,680 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Oath/Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The reissue declaration filed with this application is defective because it fails to specifically identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. If the error regards claim scope, the reissue declaration should also identify that error by claim number and point out which claim cures that defect.
Claim Objections
Two sets of claims were filed on 9 April 2024 that do not match. For purposes of this Office Action, it is being presumed that the version that is marked up from the claims of the patent is the correct claim version.
Claims 1-20 are objected to because of the following informalities:
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Although they use original claim numbers, it is noted that independent claims 1 and 11 have been amended to make wholesale changes to the original claims that are so extensive that they are being treated as new claims. Misnumbered claims 1-20 should be renumbered 16-35. i.e. Claims 1-15 should be cancelled, and renumbered claims 16-35 should be marked as “New” and underlined in their entirety, as they do not appear in the original patent.
In claim 1, the phrase “the a device for connecting to said passenger cruise ship’s wireless network, including a plurality of routers” in lines 3-4 does not establish proper antecedent basis for the later recitations of “a first device” and “a second device.” For purposes of the prior art search, this phrase is being ignored, and it is being presumed that the plurality of routers is part of the wireless network.
Also in claim 1, “will substrate” in line 6 makes no sense. It is being presumed that the word “will” should be removed.
In claim 2, the phrase “the first said device” should be “the first device.”
In claim 4, the phrase “first device on first deck” in line 2 should read “first device on a first deck.”
In claim 8, the limitation should read “a digital user interface program that enables…”
In claim 14, the phrase “further comprising,” at end of the claim, does not appear to belong there.
In claim 15, there are missing square brackets in line 1-3. It is being presumed that it should begin “[A system] The method of claim 14, further comprising: downloading, via the wireless network, the digital user interface program to the second device, [“
Also in claim 15, the list in lines 11-12 should end with “… shops, clubs, and bars.”
Claim Rejections - 35 USC § 251
Claims 1-20 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the reissue declaration is set forth in the discussion above in this Office action.
Claims 1-14 and 16-20 are also rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application. See MPEP 1412.02.
In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process:
First, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims: In the present case, each of these claims no longer includes the limitation “QR substrates distributed on each deck of said cruise ship at key locations, wherein said key locations are selected from the group consisting of restaurants, fitness centers, play rooms, theaters, shops, clubs, and bars.”
Next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution: In the present case, these limitations were imported into base claim 1 in order to overcome the previously stated rejections under 35 U.S.C. 102 and 103, as they had been previously appeared in claim 10, which had been indicated as allowable; and
Finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule: The only other amendments to claim 1 at that time were addressed to clarifying limitations in light of a rejection under 35 U.S.C. 112(b) and did not substantially affect the scope of the claim, plus the recitation of “a digital user interface downloaded onto the device,” which would not have overcome the cited art.
In North American Container, the court cited Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600; Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-50; and Clement, 131 F.3d at 1468, 45 USPQ2d at 1164-65 as cases that lead to, and explain the language in, the North American Container recapture test.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
Digital user interface program that enables linking the first device with the second device in claim 7.
Digital user interface program that enables the first device to scan the second QR code substrate in claim 8.
Digital user interface program that enables the second device to display the indication of the second location in claim 9.
Digital user interface program that causes the second device to display the indication of the first location in claim 14.
Digital interface program that enables the first device to scan the first QR code substrate in claim 16.
Additionally, the following terms containing “means” are also interpreted under 35 U.S.C. 112(f):
Memory storage means, scanning means, and wireless communication means in claim 15.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
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.
Claims 1-10 and 14-16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites the limitation “the second location” in lines 7-8. There is insufficient antecedent basis for this limitation in the claim. It is being presumed that this refers to “a second location.”
Claims 2-10 are dependent upon claim 1 and wholly incorporate its limitations, rendering them likewise indefinite.
Claim 3 recites the limitation "the substrate" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is being presumed that this refers to the second QR code substrate.
Claim 15 recites the limitations “a device for connecting to cruise ship’s wireless network” in lines 3-4 and “a wireless network including a plurality of wireless routers” in lines 7-8. There is insufficient antecedent basis for these limitations in the claim because these were already recited in base claim 11. For purposes of this office action, these additional recitations are being ignored.
Claim 16 recites the limitation “the digital user interface program” in line 2. There is insufficient antecedent basis for this limitation in the claim. It is being presumed that this should read “a digital user interface program.”
Further regarding claims 7-9, 14, and 16, they recite the claim limitation “digital user interface,” which invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Claim 15 is also rejected under 35 U.S.C. 112(b) because the claim limitations “memory storage means” and “scanning means” invoke 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
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.
Claims 1-9 and 11-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 9,786,176 to Northrup et al. (hereinafter Northrup).
As per claim 1, Northrup discloses a system for determining the location of one or more passengers on a passenger cruise ship (see column 14, line 65 to column 15, line 13; column 65, lines 1-19), comprising:
a wireless network (see figure 53A; also column 66, lines 5-25) of the passenger cruise ship (see column 74, lines 8-17), including a plurality of routers (part of the system shown in figure 53A, see column 75, lines 30-34),
wherein a first device and a second device are communicatively coupled to the wireless network (see column 7, lines 14-19; column 8, lines 33-36; column 40, lines 10-21, etc.);
a first QR code substrate (see column 20, lines 44-47) corresponding to a first location on the cruise ship; and
a second QR code substrate (see column 20, lines 44-47) is configured to be scanned by the first device (see column 21, lines 45-48), and
when the second QR code substrate is scanned by the first device, and indication of the second location is received by the wireless network and the indication of the second location is transmitted to the second device, via the wireless network (see column 40, lines 5-21).
As per claim 2, Northrup disclose wherein the first said device is selected from the group consisting of a mobile phone, a tablet, a laptop computing device, a wrist-based computing device, and a digital watch (smartphone or tablet, see column 15, lines 49-53).
AS per claim 3, Northrup further discloses wherein the first QR code substrate is disposed on a first deck of the cruise ship and the second QR code substrate is disposed on a second deck of the cruise ship (zone indicators having different QR codes may be on different decks, see column 20, lines 44-47; column 21, lines 45-48; and column 65, lines 20-31).
As per claim 4, Northrup discloses that the wireless network is configured to connect to the first device on a first deck of the cruise ship and connect the second device on a second deck of the cruise ship (Wi-Fi systems can connect to multiple devices all about the network and spans multiple decks, also see column 66, lines 5-25).
As per claim 5, Northrup further discloses that the second QR code is configured to be scanned by the second device, and when the second QR code is scanned by the second device, an indication of the second location is transmitted to the first device, via the wireless network ship (the application may display the names of multiple friends withing a zone, each of whom have made themselves known to the system by scanning QR codes, see column 24, lines 13-28).
As per claim 6, Northrup disclose that the first device and the second device are linked (see column 24, lines 46-59).
As per claim 7, Northrup further discloses a digital user interface program configured to be downloaded, via the wireless network, to the first device, wherein the digital user interface program enables linking the first device with the second device (user application is downloaded, see abstract and column 37, lines 62-65, allows linking to second device, see column 24, lines 46-59).
As per claim 8, Northrup further discloses a digital user interface program enables the first device to scan the second QR code substrate (see column 21, lines 45-48).
As per claim 9, Northrup further discloses a digital user interface program configured to be downloaded, via the wireless network, to the second device, wherein the digital user interface program enables the second device to display the indication of the second location (see column 37, lines 62-65 and column 54, lines 51-57).
As per claim 11, Northrup discloses a method, comprising:
receiving, via a wireless network (see figure 53A; also column 66, lines 5-25) having a plurality of routers (part of the system shown in figure 53A, see column 75, lines 30-34) and from a first device, an indication of a first QR code associated with a first QR code substrate at a first location on a cruise ship (see column 20, lines 44-47; column 21, lines 8-53)
determining the first location on the cruise ship based at least in part on the indication of the first QR code (see column 21, lines 49-53); and
sending, via the wireless network and to a second device, an indication of the first location on the cruise ship (logged in supervisor’s database, see column 21, lines 8-53).
As per claim 12, Northrup further discloses receiving the indication of the first QR code substrate being scanned by the first device (logging in database is triggered by QR code, see column 21, lines 8-53).
As per claim 13, Northrup further discloses receiving, via the wireless network and from the second device, an indication of a second QR code associated with a second QR code substrate at a second location on the cruise ship (multiple zones having QR’s for checkpoints, see column 21, lines 45-48);
determining the second location on the cruise ship based at least in part on the indication of the second QR code (see column 21, lines 49-53); and
Sending, via the wireless network and to the first device, an indication of the second location on the cruise ship (logged into supervisor’s database, as above).
As per claim 14, Northrup further discloses causing, using a digital user interface program, the second device to display the indication of the first location on the cruise ship (see column 54, lines 51-57).
As per claim 15, Northrup further discloses downloading, via the wireless network, the digital user interface program to the second device, and a plurality of the various routers (see base claim 11) wherein the device to include a memory storage means (see column 11, lines 6-24), a scanning means (this is inherent, as scanning is performed by the device, see column 21, lines 45-48), a display (this is inherent in tablets and smartphones), a digital user interface downloaded onto the device (see column 37, lines 62-65), and a wireless communication means (see column 66, lines 5-25); a means for determining the location of the passenger (see column 54, lines 51-57); the wireless network provides a network distributed throughout the passenger cruise ship (Wi-Fi systems can connect to multiple devices all about the network and spans multiple decks, also see column 66, lines 5-25), further comprising QR code substrates distributed on each deck of said cruise ship at key locations, wherein the key locations are selected from the group consisting of restaurants, fitness centers, play rooms, theaters, shops, club and bars (see column 23, lines 42-59 and column 24, lines 46-55); the system further comprising connecting to at least one other passenger by said first passenger through said digital user interface; determining the location of the first passenger through the use of said device ; communicating said location of the first passenger through said digital user interface; and providing information relating to the location of said first passenger to the other passenger through the user interface (peer to peer gaming with friends at the location, see column 24, lines 13-35).
As per claim 16, Northrup further discloses downloading, via the wireless network, a digital user interface program to the first device, wherein the digital user interface program enables the first device to scan the first QR code substrate (see column 21, lines 45-48).
As per claim 17, Northrup further discloses receiving, via the wireless network and from a third device, an indication of a second QR code associated with a second QR code substrate at a second location on the cruise ship; determining the second location on the cruise ship based at least in part on the indication of the second QR code; and sending, via the wireless network and to the first device and the second device, and indication of the second location on the cruise ship (the application may display the names of multiple friends withing a zone, each of whom have made themselves known to the system by scanning QR codes, see column 24, lines 13-28).
As per claim 18, Northrup further discloses the wireless network is configured to connect to the first device on a first deck of the cruise ship and connect to the second device on a second deck of the cruise ship (Wi-Fi systems can connect to multiple devices all about the network and spans multiple decks, also see column 66, lines 5-25).
As per claim 19, Northrup further discloses the first device is selected from the group consisting of a mobile phone, a tablet, a laptop computing device, and a digital watch (smartphone or tablet, see column 15, lines 49-53).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Northrup as applied to claims 1 and 11 above, and further in view of U.S. Patent No. 10,412,210 to Bjontegard (hereinafter Bjontegard).
Although Northrup further discloses the indication of the first location is further determined based at least in part on triangulation of the first device based at least in part on at least two UWB (wideband) devices of the wireless network (see column 84, lines 38-51), Northrup does not state that these are wireless routers.
Bjontegard discloses a communication platform in which wi-fi routers, i.e. access points, can be used to triangulate a device’s location (see column 93, line 66 to column 94, line 13).
Therefore it would have been obvious to one of ordinary skill in the art to implement the invention of Northrup by using wireless routers as the UWB devices, as per Bjontegard, for the UWB triangulation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent No. 9,699,600 to Sheikh discloses a system for finding other users and areas aboard a cruise ship.
U.S. Patent Application Publication No. 2021/0174952 to Leong et al. discloses a system for identifying locations of persons in a workplace, such as a cruise ship.
U.S. Patent No. 10,009,868 to Reyes et al. and U.S. Patent Application Publication No. 2022/0169388 to Sandeen et al. were cited during the original prosecution of this patent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HENEGHAN whose telephone number is (571)272-3834. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571)270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992
Conferees:
/Ovidio Escalante/
Primary Examiner, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992