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 .
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) 21, 22, 30, and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heo et al. (US 2014/0027506) in view of Tobita et al. (US 2015/0207861)
Referring to Claim 21, Heo teaches a non-transitory, computer-accessible medium containing instructions for execution by a network-enabled computer system, wherein, when executed by the network-enabled computer system, the instructions cause the network-enabled computer system to perform procedures comprising:
reading, via a near field communication (NFC)-enabled web page (see paragraph 41 which shows a user device 200 displaying a web page obtained from NFC processing server 400) responsive to a tap of a smart transaction card on an NFC field generated by a user device (see paragraph 53 which shows the touching of the smart card 100 to the user device 200 using NFC), NFC information transmitted to the user device by the smart transaction card (see paragraph 42 which shows the user device reading NFC information from card 100 and paragraph 68 which shows the smart card transmitting data to the user device), and
transmitting, to a service administration server, the NFC information (see paragraph 43 which shows server 300 receiving NFC information from user device 200).
Heo does not teach receiving, from the service administration server, a service activation command comprising an instruction to initiate operation. Tobita teaches receiving, from the service administration server, a service activation command comprising an instruction to initiate operation (see paragraph 101 which shows the server transmitting an activation instruction to the user device). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the teachings of Tobita to the device of Heo in order to provide more secure NFC communications involving the use of cards.
Claims 30 and 38 have similar limitations as claim 21.
Referring to Claim 22, Heo also teaches the NFC information comprising card identification information unique to the smart transaction card (see paragraphs 12 and 13 which shows secure ID information to ensure that the card is recognized as the valid card for payment).
Claim(s) 23-26 and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heo and Tobita and further in view of Singh et al. (US 2013/0152185).
Referring to Claims 23 and 39, the combination of Heo and Tobita does not teach the service activation command further comprising provisioning instructions. Singh teaches the service activation command further comprising provisioning instructions (see paragraph 21 which shows provisioning instructions). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the teachings of Singh to the modified device of Heo and Tobita in order to provide more reliable NFC communications involving the use of cards.
Referring to Claim 24, Singh also teaches at least one selected from the group of the instruction to initiate operation and initial operation and provisioning instructions based on one or more user preferences of a user associated with an account (see paragraph 21 which shows the provisioning of the device involving the installment of an app which is personalized by an authorized user). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the teachings of Singh to the modified device of Heo and Tobita in order to provide more reliable NFC communications involving the use of cards.
Referring to Claim 25, Singh also teaches at least one selected from the group of the instruction to initiate operation and initial operation and provisioning instructions are based on user preferences of a user associated with an account (see paragraph 21 which shows the provisioning of the device involving the installment of an app which is personalized by an authorized user). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the teachings of Singh to the modified device of Heo and Tobita in order to provide more reliable NFC communications involving the use of cards.
Referring to Claim 26, Singh also teaches the service activation command further comprising at least one selected from the group of service account information and account holder information (see paragraph 10 which shows authentication data associated with an account). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the teachings of Singh to the modified device of Heo and Tobita in order to provide more reliable NFC communications involving the use of cards.
Claim(s) 27-29 and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heo, Tobita, and Singh and further in view of Rothberg (US 2016/0006716).
Referring to Claims 27 and 40, the combination of Heo, Tobita, and Singh does not teach prior to reading the NFC information, transmitting, to the user device, an instruction to navigate to the NFC-enabled web page. Rothberg teaches prior to reading the NFC information, transmitting, to the user device, an instruction to navigate to the NFC-enabled web page (see claim 12 which shows a server sending a created URL to the user device with instructions to opt in using the URL and paragraph 41 which shows NFC capability). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the teachings of Rothberg to the modified device of Heo, Tobita, and Singh in order to provide more security for the user of the device.
Referring to Claim 28, Rothberg also teaches establishing an internet connection via a first network communication interface, and creating an NFC-enabled web page (see claim 12 which shows the server creating a URL and paragraph 41 which shows NFC capability).
Referring to Claim 29, Heo also teaches the first network communication interface is configured to establish communication over a wide area network (see Network 500 in fig. 1).
Claim(s) 31-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heo, Tobita, and Singh and further in view of Espinosa (US 2019/0156079).
Referring to Claim 31, the combination of Heo, Tobita, and Singh does not teach the network-enabled apparatus comprising a household environmental control system. Espinosa teaches the network-enabled apparatus comprising a household environmental control system (see paragraph 111 which shows the network device connected to household appliances). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the teachings of Espinosa to the modified device of Heo, Tobita, and Singh in order to expand the capabilities of the device.
Referring to Claim 32, Espinosa also teaches the network-enabled apparatus comprising a smart appliance (see paragraph 113 which shows the many smart appliances which the device can consist of). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the teachings of Espinosa to the modified device of Heo, Tobita, and Singh in order to expand the capabilities of the device.
Referring to Claim 33, Espinosa also teaches the network-enabled apparatus comprising a vehicle, and the operational system comprising at least one selected from the group of a powering system, a steering system, a braking system, and a cooling system (see paragraph 8 which shows the devices including an automotive or transport device where paragraph 31 shows the activation process which coincides with a powering system since activation is to power on a device).
Referring to Claim 34, Espinosa also teaches the network-enabled apparatus comprising a washer, and the operational system comprises at least one selected from the group of a filling mechanism, an agitating mechanism, a spinning mechanism, a spinning mechanism, and draining mechanism (see paragraph 113 which shows the washer/dryer further noting that a spinning and draining mechanism is known in the art to be a part of most washers known in the art and are operation whenever the device is activated).
Referring to Claim 35, Espinosa also teaches the apparatus data processing system configured to monitor or control one or more operational parameters of the operational system (paragraph 31 shows the activation process which coincides with a powering system since activation is to power on a device). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the teachings of Espinosa to the modified device of Heo, Tobita, and Singh in order to expand the capabilities of the device.
Referring to Claim 36, Espinosa also teaches the one or more operational parameters comprising at least one selected from the group of an “on” parameter and an “off” parameter (paragraph 31 shows the activation process which coincides with a powering system since activation is to power on a device).
Referring to Claim 37, Espinosa also teaches monitoring or controlling one or more measurable environmental parameters (see paragraph 32 which shows monitoring of temperature and humidity).
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 21-22, 27-32, and 38-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 8, and 17 of U.S. Patent No. 11,245,438. Although the claims at issue are not identical, they are not patentably distinct from each other because most of the limitations of the pending claims are also in the claims of the patent.
Regarding Claim 21, all of the limitations of the pending claim are in claim 1 of the patent. The claim of the patent just has many more limitations.
The above also applies to claims 30 and 38 which are equally similar to claims 8 and 17 of the patent.
Claim 22 is a part of claim 1 of the patent.
Claim 27 is a part of claim 1 of the patent.
Claim 28 is a part of claim 1 of the patent.
Claim 29 is a part of claim 1 of the patent.
Claim 31 is the same as claim 7 of the patent.
Claim 32 is similar to claim 5 of the patent.
Claim 39 is a part of claim 17 of the patent.
Claim 40 is a part of claim 17 of the patent.
Response to Arguments
Applicant’s arguments with respect to claim(s) 21-40 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE YUN whose telephone number is (571)272-7860. The examiner can normally be reached 9am-5pm.
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/EUGENE YUN/Primary Examiner, Art Unit 2648
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