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 .
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.
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, 3, 6-7, 9, 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3, 9-10 of copending Application No. 18/754850 (reference application published as US 2025/0004698, hereinafter referred to as Appl ‘850). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 1 of present application is broader than claim 2 of Appl ‘850. Claim 1 of present application recites “A sound apparatus comprising: an acoustic device setting apparatus; and a controller that is configured to” functionally similar to “A sound apparatus comprising: an acoustic device; and a controller that is configured to” as recited in claim 2 of Appl ‘850, claim 1 of the present application recites “receive a trigger requirement associated with an action and a reverse action; receive the action corresponding to the trigger requirement; associate the trigger requirement with the received action; receive the reverse action that is performed in a case in which the trigger requirement is not satisfied; and associate the trigger requirement with the received reverse action” functionally similar to “receive a setting of a trigger requirement; receive an action corresponding to the trigger requirement; associate the trigger requirement with the action” and “receive a reverse action to be performed in a case in which the trigger requirement is not satisfied; associate the trigger requirement with the reverse action” as recited in claim 2 of Appl ‘850. Claim 1 of present application does not recite “receive an operation to enable a movement that executes the action in a case in which the trigger requirement is satisfied; and receive a selection of ON/OFF of auto sync that matches the action executed by the trigger requirement with a state of the acoustic device, before receiving the operation to enable the movement” and “execute the action or the reverse action, in a case in which the auto sync is ON when enabling the movement” as recited in claim 2 of Appl ‘850.
Claim 3, rejected against Appl ‘850 claim 2 functionality combined with Appl ‘850 claim 3 functionality.
Claim 6, rejected against Appl ‘850 claim 2.
Claim 7, it recites limitations functionally not patentably distinct from limitations recited in claim 9 of Appl ‘850. Claim 7 of the present invention recites “An acoustic device setting method comprising:” functionally similar to “An acoustic device setting method comprising:” as recited in claim 9 of Appl ‘850, claim 7 of the present application recites “receiving a trigger requirement to be associated with an action and a reverse action; receiving the action corresponding to the trigger requirement; associating the trigger requirement with the received action; receiving the reverse action to be performed in a case in which the trigger requirement is not satisfied; and associating the trigger requirement with the received reverse action” functionally similar to “receiving a setting of a trigger requirement; receiving an action corresponding to the trigger requirement; associating the trigger requirement with the action” and “receiving a reverse action that is performed in a case in which the trigger requirement is not satisfied; associating the trigger requirement with the reverse action” as recited in claim 9 of Appl ‘850. Claim 7 of present application does not recite “receiving an operation to enable a movement that executes the action in a case in which the trigger requirement is satisfied; and receiving a selection of ON/OFF of auto sync that matches the action executed by the trigger requirement with a state of an acoustic device, before receiving the operation to enable the movement” and “executing the action or the reverse action, in a case in which the auto sync is ON when enabling the movement” as recited in claim 9 of Appl ‘850.
Claim 9, rejected against Appl ‘850 claim 9 functionality combined with Appl ‘850 claim 10 functionality.
Claim 12, rejected against Appl ‘850 claim 9.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 7 of copending Application No. 18/754638 (reference application published as US 2025/0004703, hereinafter referred to as Appl ‘638). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 1 of present application is broader than claim 2 of Appl ‘638. Claim 1 of present application recites “A sound apparatus comprising: an acoustic device setting apparatus; and a controller that is configured to” functionally similar to “A sound apparatus comprising: an acoustic device; and a controller that is configured to” as recited in claim 2 of Appl ‘638, claim 1 of the present application recites “receive a trigger requirement associated with an action and a reverse action; receive the action corresponding to the trigger requirement; associate the trigger requirement with the received action; receive the reverse action that is performed in a case in which the trigger requirement is not satisfied; and associate the trigger requirement with the received reverse action” functionally similar but broader than “receive a trigger requirement; receive a condition requirement; receive an action corresponding to the trigger requirement; associate the trigger requirement with the action and associate a macro main showing the associated trigger requirement and action with the condition requirement” and “receive a reverse action that is performed in a case in which the trigger requirement is not satisfied; associate the trigger requirement with the reverse action” as recited in claim 2 of Appl ‘638. Claim 1 of present application does not recite “receive a condition requirement; and determine that the condition requirement is satisfied and execute the action, in a case in which the trigger requirement is satisfied” and “check that the condition requirement is satisfied and then executes the reverse action, in the case in which the trigger requirement is not satisfied” as recited in claim 2 of Appl ‘638.
Claim 7, it recites limitations functionally not patentably distinct from limitations recited in claim 7 of Appl ‘638. Claim 7 of the present invention recites “An acoustic device setting method comprising:” functionally similar to “An acoustic device setting method comprising:” as recited in claim 7 of Appl ‘638, claim 7 of the present application recites “receiving a trigger requirement to be associated with an action and a reverse action; receiving the action corresponding to the trigger requirement; associating the trigger requirement with the received action; receiving the reverse action to be performed in a case in which the trigger requirement is not satisfied; and associating the trigger requirement with the received reverse action” functionally similar but broader than “receiving a trigger requirement; receiving a condition requirement; receiving an action corresponding to the trigger requirement; associating the trigger requirement with the action and associating a macro main showing the associated trigger requirement and action with the condition requirement” and “receiving a reverse action to be performed in a case in which the trigger requirement is not satisfied; associating the trigger requirement with the reverse action and associating a macro main showing the associated trigger requirement and reverse action with the condition requirement” as recited in claim 7 of Appl ‘638. Claim 7 of present application does not recite “determining that the condition requirement is satisfied and executing the action, in a case in which the trigger requirement is satisfied” and “checking that the condition requirement is satisfied and then executing the reverse action, in the case in which the trigger requirement is not satisfied” as recited in claim 7 of Appl ‘638.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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, 3-4, 7, 9-10, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Saito (US Patent No. 10,620,907).
Regarding claim 1, Saito teaches a sound apparatus (Fig. 1) comprising:
an acoustic device setting apparatus (Fig. 1 item 10, col. 4 ll. 26-55); and
a controller (Fig. 2 item 20 that is configured to receive a trigger requirement (mode switch depressed/ operated) associated with an action (archiving control parameters) and a reverse action (restoring/ reverting control parameters) (col. 4 ll. 56-col. 7 ll. 25); receive the action corresponding to the trigger requirement (receiving mode switch depression); associate the trigger requirement with the received action (switch to “temporary operation mode”); receive the reverse action that is performed in a case in which the trigger requirement is not satisfied (receive mode switch release/ not depressed/ not operated); and associate the trigger requirement with the received reverse action (reverting to controls to “previous value” or previous state”) (col. 7 ll. 26-col. 15 ll. 6).
Saito does not explicitly mention trigger to perform action or reverse action, but Saito teaches storing rules in advance to perform action (storing control parameter’s previous value and changing control parameter value as desired by user) and performing reverse action (restoring parameters to previous value) based on mode switch (i.e. trigger condition) (col. 15 ll. 7-col. 17 ll. 14). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to modify Saito’s teachings to arrive at the claimed invention as an implementation choice.
Regarding claim 3, Saito teaches wherein the trigger requirement corresponds to a state of a physical controller (mixer) configured to designate sound processing to an input, mixture, or output of an audio signal (col. 5 ll. 6-48, col. 6 ll. 1-38).
Regarding claim 4, Saito teaches wherein the controller is also configured to receive the trigger requirement (Fig. 5 step S1), the action (Fig. 6 steps S10, S11, S12), and the reverse action (Fig. 6 steps S10, S13) from a user.
Regarding claim 7, Saito teaches an acoustic device setting method comprising:
receiving a trigger requirement (mode switch depressed/ operated) to be associated with an action (archiving control parameters) and a reverse action (restoring/ reverting control parameters) (col. 4 ll. 56-col. 7 ll. 25); receiving the action corresponding to the trigger requirement (receiving mode switch depression); associating the trigger requirement with the received action (switch to “temporary operation mode”); receiving the reverse action that is performed in a case in which the trigger requirement is not satisfied (receive mode switch release/ not depressed/ not operated); and associating the trigger requirement with the received reverse action (reverting to controls to “previous value” or previous state”) (col. 7 ll. 26-col. 15 ll. 6).
Saito does not explicitly mention trigger to perform action or reverse action, but Saito teaches storing rules in advance to perform action (storing control parameter’s previous value and changing control parameter value as desired by user) and performing reverse action (restoring parameters to previous value) based on mode switch (i.e. trigger condition) (col. 15 ll. 7-col. 17 ll. 14). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to modify Saito’s teachings to arrive at the claimed invention as an implementation choice.
Regarding claim 9, Saito teaches wherein the trigger requirement corresponds to a state of a physical controller (mixer) for designating sound processing to an input, mixture, or output of an audio signal (col. 5 ll. 6-48, col. 6 ll. 1-38).
Regarding claim 10, Saito teaches wherein the trigger requirement (Fig. 5 step S1), the action (Fig. 6 steps S10, S11, S12), and the reverse action (Fig. 6 steps S10, S13) are received from a user.
Regarding claim 13, Saito teaches a non-transitory computer-readable storage medium storing a program, which when executed causes an acoustic device setting apparatus to:
receive a trigger requirement (mode switch depressed/ operated) associated with an action (archiving control parameters) and a reverse action (restoring/ reverting control parameters) (col. 4 ll. 56-col. 7 ll. 25); receive the action corresponding to the trigger requirement (receiving mode switch depression); associate the trigger requirement with the received action (switch to “temporary operation mode”); receive the reverse action to be performed in a case in which the trigger requirement is not satisfied (receive mode switch release/ not depressed/ not operated); and associate the trigger requirement with the received reverse action (reverting to controls to “previous value” or previous state”) (col. 7 ll. 26-col. 15 ll. 6).
Saito does not explicitly mention trigger to perform action or reverse action, but Saito teaches storing rules in advance to perform action (storing control parameter’s previous value and changing control parameter value as desired by user) and performing reverse action (restoring parameters to previous value) based on mode switch (i.e. trigger condition) (col. 15 ll. 7-col. 17 ll. 14). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the present invention to modify Saito’s teachings to arrive at the claimed invention as an implementation choice.
Allowable Subject Matter
Claims 2, 5, 8, 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 6, 12 are objected as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and after rectifying their rejection under Double patenting.
The above objection(s) is (are) based on the claim(s) as presently set forth in its (their) totality. It should not be interpreted as indicating that amended claim(s) broadly reciting certain limitations would be allowable. A more detailed reason(s) for allowance may be set forth in a subsequent Notice of Allowance if and when all claims in the application are put into a condition for allowance.
Conclusion
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HEMANT PATEL
Primary Examiner
Art Unit 2694
/HEMANT S PATEL/ Primary Examiner, Art Unit 2694