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 .
DETAILED ACTION
This communication is a non-Final office action on merit. Clams 1-20, are presently pending. Claims 1-4, 9, 11-14, 18-19, after restriction election, have been considered below.
Restriction Election
Applicant has elected Species I, namely claims 1-4, 9, 11-14, 18-19, without traverse, for further examination.
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/29/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/25/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-4, 9, 11-14, 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,082,251 (hereinafter parent) in view of US 2014/0101058 A1, Castel et al. (hereinafter Castel). Although the claims at issue are not identical, they are not patentably distinct from each other because they are rejected under 35 U.S.C. 103 as being unpatentable over claims 1-9 of parent in view of Castel.
Similarly, claims 1-4, 9, 11-14, 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,924,001 (hereinafter parent) in view of US 2014/0101058 A1, Castel et al. (hereinafter Castel). Although the claims at issue are not identical, they are not patentably distinct from each other because they are rejected under 35 U.S.C. 103 as being unpatentable over claims 1-20 of parent in view of Castel.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 9, 11-14, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0052798 A1, Downs et al. (hereinafter Downs) in view of US 2014/0101058 A1, Castel et al. (hereinafter Castel) and further in view of US 2016/0210685 A1, Batcheller et al. (hereinafter Batcheller).
As to claim 1, Downs discloses a method for remotely monitoring an aquatic device having an automated aquatic device controller, the method comprising:
assigning an internet protocol address to the aquatic device (Fig 11; pars 0092, 0098, 0111);
connecting a wireless adapter to the automated aquatic device controller of the aquatic device (Fig 11; pars 0092, 0098, 0111);
establishing a wireless connection between the wireless adapter, a user device, and a server via a wireless gateway (Figs 11-13; pars 0009-0011, 0029, 0092, 0098, 0111);
determining the aquatic device is due for maintenance using the server (par 0123, claim 18).
establishing a wireless connection between the wireless adapter, a user device, and a server (Figs 10-11; pars 0009-0011, 0029-0030, 0089-0090) but does not expressly disclose the server being cloud based and creating a list of one or more materials for performing the maintenance for the aquatic device via the cloud based server in response to determining the aquatic device is due for maintenance.
Castel, in the same or similar field of endeavor, further teaches a cloud based server being used for maintenance management (pars 0074, 0128, 0131, 0144) and creating a list of one or more materials for performing the maintenance for the aquatic device in response to determining the aquatic device is due for maintenance (Figs 2, 4; pars 0022, 0024, 0051-0052, 0079, 0157, 0182, 0196, 0268).
sending an alert to a user device via the cloud based server (pars 0036, 0041, 0062, 0110), wherein the alert includes a request to contact a service provider to order the one or more materials for performing the maintenance for the aquatic device (pars 0041, 0048, 0062, 0074, 0105).
Castel does not expressly teach receiving a selection from the user device to contact the service provider via the cloud based server.
Batcheller, additionally teaches a mobile device may select one or more service providers capable of providing the subcomponents and order the subcomponents directly from the service provider (Fig 1; pars 0010).
Therefore, consider Downs, Castel, and Batcheller’s teachings as a whole, it would have been obvious to one of skill in the art before the filing date of invention to incorporate Castel and Batcheller’s teachings in Downs’s method to improve maintenance efficiency for consumer devices including the aquatic device.
As to claim 2, Downs as modified discloses the method of claim 1, wherein the cloud based server determines the aquatic device is due for maintenance by receiving a maintenance alert from the aquatic device (Downs: pars 0095, 0102,0127; Castel: pars 0041, 0062, 0105, 0237, generating a maintenance alert).
As to claim 3, Downs as modified discloses the method of claim 1, wherein the cloud based server determines the aquatic device is due for maintenance by comparing operating data from the aquatic device to a threshold value range and determining the operating data is outside of the threshold value range (Downs: par 0132; Castel: pars 0124, 0185, 0261, determining a threshold value for flow measured).
As to claim 4, Downs as modified discloses the method of claim 1, further comprising: determining whether the one or more materials for performing the maintenance are available in an inventory (Castel: pars 0074, 0151, checking an inventory system to see if a part required for maintenance is available); and ordering the available one or more materials for performing the maintenance upon determining that the one or more materials for performing the maintenance is available in the inventory (Castel: pars 0074, 0151, 0188, order the needed part automatically).
5-8. (Withdrawn)
As to claim 9, Downs as modified discloses the method of claim 1, further comprising: accessing a maintenance server to obtain at least one of a user profile and a product registration data (Castel: Fig 5; pars 0041, 0061-0062, 0105, product profile/registration being assessed for maintenance); determining recommended replacement components based on the product registration data (Castel: pars 0009, 0015,0024, 0122, 0187, 0190, 0206, determining parts to be replaced based on its life cycle); and creating the list of one or more materials for performing the maintenance in response to determining recommended replacement components (Castel: pars 0159, 0170, 0185).
10. (Withdrawn)
As to claim 11, Downs as modified discloses the method of claim 1, further comprising analyzing parameters associated with a maintenance alert using the cloud based server (Castel: Fig 5; pars 0016-0017, 0041, 0062, 0074, 0080, 0150, 0153).
As to claim 12, Downs as modified discloses the method of claim 1, further comprising sending a message to a service provider using the cloud based server (Castel: Figs 2, 4; pars 0120, 0124).
As to claim 13, Downs as modified discloses the method of claim 12, wherein the message includes user data, information related to the maintenance due, information related to the aquatic device, operating parameters, historical data, the list of the one or more materials for performing the maintenance, or a combination thereof (Castel: Figs 2, 4; pars 0016, 0100, 0120, 0123, 0130, 0124, 0176, user identifier, data record/profile, relevant parameters, etc.).
Claims 14, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0052798 A1, Downs et al. (hereinafter Downs) in view of US 2014/0101058 A1, Castel et al. (hereinafter Castel)
As to claim 18, Downs discloses a connected system for remotely monitoring an aquatic device, the system comprising: an automated aquatic controller communicatively coupled to a wireless adapter (Fig 11; pars 0092, 0098, 0111), the wireless adapter designed to communicate wirelessly with a server and a user device (Figs 11-13; pars 0009-0011, 0029, 0092, 0098, 0111);
one or more sensors of the aquatic device designed to monitor an operating parameter of the aquatic device (pars 0058, 0105, 0120, monitoring alarm triggering event, characteristic of liquid, etc.); a processor of the wireless adapter designed to determine whether the operating parameter is outside of a threshold value range (pars 0053, 0055, 0057, 0071, measuring/determining range of measured electrical resistance value, rotation positions etc.); predictive data generated by the cloud based server when the operating parameter is outside of the threshold value range; and analytics data generated by the cloud based server to develop user patterns (pars 0097, 0108-0109, 0125, water usage pattern and any irregularity).
Downs does not expressly disclose the server being a cloud based server and , the cloud based server analyzing the analytics data and determining a usage trend based on determined patterns.
Castel, in the same or similar field of endeavor, further teaches a cloud based server being used for maintenance management (pars 0074, 0128, 0131, 0144); one or more sensors of the aquatic device designed to monitor an operating parameter of the aquatic device (pars 0016, 0045, 0052, 0070, 0074, 0076, 0080, 0114, search/monitor the device operation, performance, relevant parameters, maintenance requirement etc.); a processor of the wireless adapter designed to determine whether the operating parameter is outside of a threshold value range (pars 0124, 0185, 0261, determining a threshold value for flow measured); predictive data generated by the cloud based server when the operating parameter is outside of the threshold value range (pars 0017, 0097, 0121, 0151, 0256, predict device failure and recommend maintenance schedules, tasks, and lists); and analytics data generated by the cloud based server to develop user patterns (par 0155), the cloud based server analyzing the analytics data and determining a usage trend based on determined patterns (pars 0025, 0208, 0245, 0252, identifying usage history, trends etc.).
Therefore, consider Downs and Castel’s teachings as a whole, it would have been obvious to one of skill in the art before the filing date of invention to incorporate Castel’s teachings in Downs’s system to provide an intelligent monitoring system for an aquatic device utilizing statistical usage information.
As to claim 19, Downs as modified discloses the connected system of claim 18, further comprising: a maintenance server designed to facilitate service and repair of the aquatic device, wherein the maintenance server is in direct communication with the cloud based server (Down: Figs 10-11; Castel: Figs 1-2; pars 0074, 0097, 0110-0111, 0117, 0120-0122, 0127, all servers may be communicated directly over a communication network or even co-located).
As to claim 14, Down as modified discloses a method for remotely monitoring an aquatic device having an automated aquatic controller, the method comprising: connecting a wireless adapter to the automated aquatic controller of the aquatic device (see citation and rejection in claim 1);
establishing a wireless connection between the wireless adapter, a user device, and a cloud based server via a wireless gateway (see citation and rejection in claim 1);
monitoring an operating parameter of the aquatic device over the wireless connection (Castel: pars 0016, 0045, 0052, 0070, 0074, 0076, 0080, 0114, search/monitor the device operation, performance, relevant parameters, maintenance requirement etc.); comparing the operating parameter to trend data using the cloud based server (Downs: par 0007; Castel: pars 0206, 0245, 0252); determining predictive failure of the aquatic device based on the operating parameters compared to the trend data using the cloud based server (Downs: par 0132; Castel: pars 0017, 0097, 0121); and
creating a preventative maintenance schedule using the cloud based server (Castel: pars 0097, 0206, 0258, 0268, intelligently recommend proper maintenance schedule based on potential failure prediction). See motivation statement in claim 18.
15-17. (Withdrawn)
20. (Withdrawn)
Response to Arguments
As to applicant’s argument regarding double patenting rejection, non-statutory double patenting allows a double patenting rejection over claim(s) of its parent patent in view of additional reference(s). There is no requirement for such additional reference(s) to be commonly owned with the parent patent.
It is also noted that the restriction requirement is a species restriction. Claim 14, as an independent claim, being one of generic claims identified, was not restricted (see restriction requirement issued on 4/23/2025.
As to merit rejection, applicant’s arguments have been considered but they are moot in light of new ground of rejection.
Examiner’s Note
Examiner has cited particular column, line number, paragraphs and/or figure(s) in the reference(s) as applied to the claims for the convenience of the Applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the reference(s) in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Qun Shen whose telephone number is (571) 270-7927. The examiner can normally be reached on Mon-Friday from 9:00-5:00. If attempts to reach the examiner by telephone are unsuccessful, the examiner's Supervisor, Amandeep Saini can be reached on (571) 272-3382. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/QUN SHEN/
Primary Examiner, Art Unit 2662