DETAILED ACTION
Claims 1-4, 7-9, 11-14 are presented for examination.
The present application is being examined under the AIA (America Invents Act) First Inventor to File.
This Office Action is Non-Final.
Claims 1, 11 and 12 are independent claims. Claims 2-4,7-9 are dependent claims. Claims 5-6 and 10 are canceled.
This action is responsive to the following communication: corresponding claims filed on 09-04-2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08-13-2026 is in compliance with the provisions of 37 CFR 1.97
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-4 and 7-9, 11-14 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 serves as an exemplary and recites the following:
1. (Currently Amended) An apparatus communicable with a server, the apparatus
comprising:
a processor that is a controller of the apparatus; and
a memory storing one or more programs, which when executed, cause the
processor to:
upon shutdown of a power supplied to the apparatus, notify the server of the
shutdown of the power a plurality of times without awaiting a response
MPEP § 2151.01 states, in part that “to satisfy the written description, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor has possession of the claimed invention at the time of the filling”.
The underlined portions directed to claim 1 above were amended by Applicant in response to the outstanding Office Action. According to Applicants remarks filed on filed on September 4th 2026, ¶s [0062], [0065] and [0069] allegedly support the newly added features. These paragraphs have been cited below for Applicants convenience.
“In step 2 (S2), the controller 101 of the communication adapter 10 determines whether or not a cause of the shutdown of the power detected in S1 is an instantaneous voltage drop. Then, the controller 101 of the communication adapter 10 can notify the server 20 of the shutdown of the power when the cause of the shutdown of the power is not an instantaneous voltage drop (e.g., the cause is a power outage or a circuit breaker that is down).” ¶ [0062]
“Note that, the controller 101 of the communication adapter 10 may determine whether or not the cause of the shutdown of the power detected in S1 is an instantaneous voltage drop based on the time taken for the restart of the supply of the power from the shutdown of the power and based on the magnitude of drop in the voltage.” ¶ [0065]
“Note that, after the shutdown of the power supplied to the communication adapter 10 from the different apparatus (e.g., the heat source-side apparatus 41 of the air conditioner), the controller 101 of the communication adapter 10 may not perform a process of reception. Specifically, without awaiting a positive response (ACK) from the server 20 to the notification of the shutdown of the power, the controller 101 of the communication adapter 10 can notify the server 20 again of the shutdown of the power (e.g., the controller 101 of the communication adapter 10 can notify the server 20 again in S302 without awaiting a positive response (ACK) to the notification in S3-1). Therefore, it is possible to make many notifications for a period of time for which the power storage 103 can be used.” ¶ [0069]
Reviewing the cited paragraphs above, it is clear that specification fails to disclose the expressions that includes upon shutdown of a power supplied to the apparatus, notify the server of the shutdown of the power a plurality of times without awaiting a response from the server to the notification of the shutdown of the power, only when a cause of the shutdown of the power is determined not to be an instantaneous voltage drop based on both i) a time from the shutdown of the power until restart of supply of the power and ii) a magnitude of a voltage” as currently claimed. In particular, the expression following the claimed “not” term is a negative limitation that that must have basis in the original disclosure. The mere absence of a positive recitation is not basis for an exclusion. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977), See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984).
Furthermore, the combination where the notification of power of shutdown is performed plurality of times based on “only when a cause of the shutdown of the power is determined not to be an instantaneous voltage drop based on both i) a time from the shutdown of the power until restart of supply of the power and ii) a magnitude of a voltage” is also not supported as currently claimed.
Therefore, in view of above findings, Applicant failed to identify, in the remarks sections, how the specification supports the amended claims. Because the newly added limitations lack explicit support in the original disclosure, the specification does not sufficiently demonstrate that the applicant possessed the claimed subject matter. Courts have long held that “the vast majority of written description problems arise when the patentee amends or adds claims with limitations not found in the original claim set and using language that does not directly map to specification disclosure” . In Re Cisco Systems v. Cirrex (Fed. Cir. 2017)
Claims 11 and 12 are rejected under the same rational already described in claim 1.
Dependent claims are based on already rejected independent claims and are rejected for their dependency because said claims do not cure the deficiencies presented in the independent claims.
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.
Claim(s) 1-4, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2015/0100166 (hereinafter, “Baynes”) in view of U.S. Publication No. 2003/0159074 (hereinafter, “Oar”).
As per claims 1, 11-121, Baynes discloses an apparatus communicable with a server, (Inter alia: smart home device 100 illustrated by Fig 1 communicating with at least aggregated server illustrated further by Fig 3 ) wherein the apparatus comprising: a processor that is a controller of the apparatus is configured to,: and a memory storing one or more programs, which when executed, cause the processor to: (¶ [008])
upon shutdown of a power supplied to the apparatus, notify the server of the shutdown of the power. (When smart-home device 383 detects that a power outage has occurred, it may transmit an indication as previously described to aggregation server system 340 via network 370.; ¶ [0054], service providers alerted about power outages ¶ [0028]), ¶ [0044] )
notify the server of the shutdown of the power. (When smart-home device 383 detects that a power outage has occurred, it may transmit an indication as previously described to aggregation server system 340 via network 370.; ¶ [0054], service providers alerted about power outages ¶ [0028]), ¶ [0044] )
Baynes does not distinctly disclose the following:
notify a plurality of times without awaiting a response.
However, Oar explicitly discloses the following:
notify plurality of times without awaiting a response, only when a cause of the shutdown of the power is determined not to be an instantaneous voltage drop based on both i) a time from the shutdown of the power until restart of supply of the power and ii) a magnitude of a voltage drop 2(resend event notification when no acknowledgement has been received ( Fig 3 ) resend event notification is looped when no acknowledgement has been received ( Fig 3)
It would have been obvious before the effective filing date of the claimed invention to modify the teachings of Baynes and Oar because both references are in the same field of endeavor. Oar’s teaching of retransmitting the notification requests would enhance Baynes's system by allowing the system to be place in a desired state in the event the initial communication request is lost, thus enhancing communication protocols.
As per claim 2, Baynes discloses wherein the apparatus is a communication adapter (Baynes: wireless communication module; Fig 1) configured to be attached to a different apparatus and receive supply of the power from the different apparatus. (Baynes: battery-based power source/ structure power supply interface 120; Fig 1)
As per claim 3, Baynes discloses wherein the apparatus includes a power storage. (Baynes: battery-based power source; Fig 1)
As per claim 4, Baynes discloses wherein the different apparatus is an air conditioner. (Baynes: HVAC; ¶ [009], Fig’s 7-8))
As per claim 7, Baynes discloses wherein the controller does not the one or more programs, when executed, cause the processor not to: store the shutdown of the power in the memory upon the shutdown of the power supplied to the apparatus.( Baynes: The processing system may in response to determining that the power supply interface has ceased receiving power from the structure's wired electrical system, store a power loss indication that comprises a timestamp.; ¶ [005] )
As per claim 8, Baynes discloses wherein the controller restarts the one or more programs, when executed, cause the processor to: restart communication between the apparatus and the server upon restart of supply of the power to the apparatus. (Baynes: The processing system may determine that a network connection is available. The processing system may transmit a notification comprising information from the stored power loss indication to a remote server via the available network connection; ¶ [005] or Fig 5 which illustrates that network is not available for which power loss is indication is stored and the power loss indication is only transmitted at a later time when network is available)
As per claim 9, Baynes discloses, herein the apparatus communicates with the server via wireless communication. (via a wireless device ; ¶ [0025])
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.
Claim(s) 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2015/0100166 (hereinafter Baynes) in view of in view of U.S. Publication No. 2003/0159074 (hereinafter, “Oar”) and further view of U.S. Publication No. 2017/0322980 (hereinafter, “Abou Mahmoud”).
As per claim 13, Baynes discloses wherein-controller of the server is-configured to includes a processor that is a controller of the server, and a memory storing one or more programs, which when executed, cause the processor to: notify a user terminal of the shutdown of the power upon no communication between the apparatus (Baynes: user may notified of the power loss; ¶ [0028]) and in a predetermined period after receipt of a notification of the shutdown of the power. (Baynes: the aggregation server system may create a schedule to restart electrical HVAC systems associated with at least the smart-home devices from which the power outage notifications were received. The schedule may be intended to reduce an initial load on the electrical grid when power is restored; ¶ [0025], Fig 5)
Baynes as modified does not distinctly disclose a server being restarted.
However, Abou Mahmoud explicitly discloses server being restarted. (Power to the servers is successfully restored, and the servers are restarted, after a time; ¶ [0073] )
It would have been obvious before the effective filing date of the claimed invention to modify the teachings of Baynes as modified and Abou Mahmoud because all references are in the same field of endeavor. Abou Mahmoud’s teaching of restarting the server would enhance Baynes 's as modified system by clearing any imperfections to the server due to sudden power loss, thus improving server operation.
As per claim 14, Baynes discloses wherein a controller of the server includes a processor that is a controller of the server, and a memory storing one or more programs, which when executed, cause the processor to: notifies notify a user terminal (Baynes: user may notified of the power loss; ¶ [0028]) of restart of supply of the power to the apparatus upon communication between the apparatus and the server being restarted (Abou Mahmoud: Power to the servers is successfully restored, and the servers are restarted, after a time; ¶ [0073] ) in response to restart of the supply of the power to the apparatus. the aggregation server system may create a schedule to restart electrical HVAC systems associated with at least the smart-home devices from which the power outage notifications were received. The schedule may be intended to reduce an initial load on the electrical grid when power is restored; [0025], Fig. 5)
Response to Arguments
Applicant's arguments filed on 09-04-2026 have been considered based on the rejection shown above.
Conclusion
With respect to any newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See MPEP §714.02 and § 2163.06. For example, when responding to this office action, applicants are advised to provide the examiner with the line numbers and page numbers in the application and/or references cited to assist the examiner in locating appropriate paragraphs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUREL PRIFTI whose telephone number is (571)270-1743. The examiner can normally be reached on M-F 8 a.m.- 6 p.m..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew J. Jung can be reached on 571-270-3779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUREL PRIFTI/Primary Examiner, Art Unit 2175
Aurel Prifti
Primary Examiner
Art Unit 2175
Tel. (571) 270-1743
Fax (571) 270-2743
aurel.prifti@uspto.gov
1 As per independent claim(s) 11-12, these claims are substantially equivalent to apparatus claim 1, because the additional feature(s) are present on any off the shelf general-purpose computer. Therefore, for at least this reason, claims 11-12 also stand rejected. Indeed, at least Fig’s 1-3 of the cited prior art discloses a memory storing instructions that is executed by a processor.
2 The claimed expression directed to “only when a cause of the shutdown of the power is determined not to be an instantaneous voltage drop based on both i) a time from the shutdown of the power until restart of supply of the power and ii) a magnitude of a voltage drop” is a negative limitation. Therefore, because Fig. 3 of Oar does not recite the plurality of notification occurring based i) and ii), the Office submits that Oar discloses the invention recited in claim 1
Prosecution Insights