Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . See 35 U.S.C. § 100 (note).
Art Rejections
Anticipation
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 1–4, 6–9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Keyboard Maestro Wiki, https://web.archive.org/web/20191020144930/https://wiki.keyboardmaestro.com/Home_Page (archived 18-23 October 2019) (last accessed 04 February 2026) (“Maestro”).
Claim 1 is drawn to “a sound apparatus.” The following table illustrates the correspondence between the claimed sound apparatus and the Maestro reference.
Claim 1
The Maestro Reference
“1. A sound apparatus comprising:
“an acoustic device; and
“a controller that is configured to
The Maestro reference describes a program executed by a personal computer, like a Mac-branded computer. Maestro at pp. 1, 5. A personal computer is a type of controller. For example, Maestro describes the computer as able to play sound, adjust volumes and provide MIDI controls, which also makes the computer a sound apparatus that also includes an acoustic device. Id. at pp. 16, 17, 19, 20, 22.
“receive a trigger requirement;
“receive a condition requirement;
“receive an action corresponding to the trigger requirement;
The Maestro reference enables users to define and execute macros to control operations of a personal computer. Id. at pp. 5–8. Macro definition includes defining triggers, conditions and actions. Id. The triggers include things like keyboard inputs. Id. at pp. 1, 2, 5–8. Conditions include things that must be true when a trigger is received, such as a condition of the computer. Id. at pp. 10, 26. And actions include actions for a computer to execute, like playing a sound. Id. at pp. 1, 14–23.
“associate the trigger requirement with the action and associate a macro main showing the associated trigger requirement and action with the condition requirement; and
Maestro’s program similarly displays an association among a trigger, condition and action. Id. at pp. 3, 26.
“determine that the condition requirement is satisfied and
“execute the action, in a case in which the trigger requirement is satisfied.”
When a user triggers a macro, the Maestro program checks if all conditions are satisfied. Id. at pp. 7, 8, 10, 26. If the check is true, an associated action is executed. Id.
Table 1
For the foregoing reasons, the Maestro reference anticipates all limitations of the claim.
Claim 2 depends on claim 1, and further requires the following:
“wherein the controller is also configured to 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; 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.”
The Maestro program similarly includes reverse actions associated with triggers. In particular, Maestro’s macro definitions include a section for actions to take in the event all conditions are not met. Maestro at p. 26. For the foregoing reasons, the Maestro reference anticipates all limitations of the claim.
Claim 3 depends on claim 1, and further requires the following:
“wherein the trigger requirement corresponds to a state of a physical controller configured to designate sound processing to an input, mixture, or output of an audio signal.”
Similarly, the Maestro reference describes receiving a trigger, such as a button press, that causes a change in audio volume. Maestro at pp. 5, 8, 16, 17, 19, 21, 22. For the foregoing reasons, the Maestro reference anticipates all limitations of the claim.
Claim 4 depends on claim 1, and further requires the following:
“wherein the controller is also configured to receive the trigger requirement, the action, and the condition requirement from a user.”
The Maestro program likewise includes user-defined macros created by a user through a computer GUI. Maestro at pp. 5–7, 26. For the foregoing reasons, the Maestro reference anticipates all limitations of the claim.
Claim 6 is drawn to “an acoustic device setting method.” The following table illustrates the correspondence between the claimed method and the Maestro reference.
Claim 6
The Maestro Reference
“6. An acoustic device setting method comprising:
The Maestro reference describes a program executed by a personal computer, like a Mac-branded computer, to implement a method. Maestro at pp. 1, 5. A personal computer is a type of controller. For example, Maestro describes the computer as able to play sound, adjust volumes and provide MIDI controls, which also makes the computer a sound apparatus that also includes an acoustic device. Id. at pp. 16, 17, 19, 20, 22.
“receiving a trigger requirement;
“receiving a condition requirement;
“receiving an action corresponding to the trigger requirement;
The Maestro reference enables users to define and execute macros to control operations of a personal computer. Id. at pp. 5–8. Macro definition includes defining triggers, conditions and actions. Id. The triggers include things like keyboard inputs. Id. at pp. 1, 2, 5–8. Conditions include things that must be true when a trigger is received, such as a condition of the computer. Id. at pp. 10, 26. And actions include actions for a computer to execute, like playing a sound. Id. at pp. 1, 14–23.
“associating the trigger requirement with the action and associating a macro main showing the associated trigger requirement and action with the condition requirement; and
Maestro’s program similarly displays an association among a trigger, condition and action. Id. at pp. 3, 26.
“determining that the condition requirement is satisfied and
“executing the action, in a case in which the trigger requirement is satisfied.”
When a user triggers a macro, the Maestro program checks if all conditions are satisfied. Id. at pp. 7, 8, 10, 26. If the check is true, an associated action is executed. Id.
Table 2
For the foregoing reasons, the Maestro reference anticipates all limitations of the claim.
Claim 7 depends on claim 6, and further requires the following:
“further comprising: 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; 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.”
The Maestro program similarly includes reverse actions associated with triggers. In particular, Maestro’s macro definitions include a section for actions to take in the event all conditions are not met. Maestro at p. 26. For the foregoing reasons, the Maestro reference anticipates all limitations of the claim.
Claim 8 depends on claim 6, and further requires the following:
“wherein the trigger requirement corresponds to a state of a physical controller configured to designate sound processing to an input, mixture, or output of an audio signal.”
Similarly, the Maestro reference describes receiving a trigger, such as a button press, that causes a change in audio volume. Maestro at pp. 5, 8, 16, 17, 19, 21, 22. For the foregoing reasons, the Maestro reference anticipates all limitations of the claim.
Claim 9 depends on claim 6, and further requires the following:
“wherein the trigger requirement, the action, and the condition requirement are received from a user.”
The Maestro program likewise includes user-defined macros created by a user through a computer GUI. Maestro at pp. 5–7, 26. For the foregoing reasons, the Maestro reference anticipates all limitations of the claim.
Claim 11 is drawn to “a non-transitory computer-readable storage medium.” The following table illustrates the correspondence between the claimed medium and the Maestro reference.
Claim 11
The Maestro Reference
“11. A non-transitory computer-readable storage medium storing a program, which when executed causes an acoustic device setting apparatus to:
The Maestro reference describes a program stored on a non-transitory computer-readable storage medium so that it can be executed by a personal computer, like a Mac-branded computer. Maestro at pp. 1, 5. A personal computer is a type of controller. For example, Maestro describes the computer as able to play sound, adjust volumes and provide MIDI controls, which also makes the computer a sound apparatus that also includes an acoustic device. Id. at pp. 16, 17, 19, 20, 22.
“receive a trigger requirement;
“receive a condition requirement;
“receive an action corresponding to the trigger requirement;
The Maestro reference enables users to define and execute macros to control operations of a personal computer. Id. at pp. 5–8. Macro definition includes defining triggers, conditions and actions. Id. The triggers include things like keyboard inputs. Id. at pp. 1, 2, 5–8. Conditions include things that must be true when a trigger is received, such as a condition of the computer. Id. at pp. 10, 26. And actions include actions for a computer to execute, like playing a sound. Id. at pp. 1, 14–23.
“associate the trigger requirement with the action and associating a macro main showing the associated trigger requirement and action with the condition requirement; and
Maestro’s program similarly displays an association among a trigger, condition and action. Id. at pp. 3, 26.
“determine that the condition requirement is satisfied and
“executing the action, in a case in which the trigger requirement is satisfied.”
When a user triggers a macro, the Maestro program checks if all conditions are satisfied. Id. at pp. 7, 8, 10, 26. If the check is true, an associated action is executed. Id.
Table 3
For the foregoing reasons, the Maestro reference anticipates all limitations of the claim.
Obviousness
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.
Claims 5 and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Maestro and US Patent Application Publication 2010/0034400 (published 11 February 2010) (“Aiso”).
Claim 5 depends on claim 1, and further requires the following:
“wherein the controller is also configured to receive an operation to enable a movement that executes the action in the 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 an acoustic device, before receiving the operation to enable the movement.”
Claim 10 depends on claim 6, and further requires the following:
“further comprising: receiving an operation to enable a movement that executes the action in the 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.”
Claims 5 and 10 are treated together. The Maestro reference describes a macro program capable of executing a wide variety of actions in response to a trigger under certain conditions. Some example actions include setting the volume of a sound output and providing external control through MIDI channels. Maestro at pp. 20. The Aiso reference describes an audio fader capable of being operated manually and automatically. Aiso at ¶¶ 1, 26, FIG.1. In the automatic mode, the fader is controlled by another device, like a CPU 101, by providing a target position. Id. Read together, Maestro reasonably suggests automating the control of Aiso’s fader with the Maestro program so that one or more faders of a mixer may be automatically controlled through a simple trigger, like a button press under certain conditions. In that case, a user would define a macro with an auto sync selection to automatically control the fader with the Maestro computer. The computer would then receive from the macro program an operation to move the fader when the trigger requirement is satisfied. For the foregoing reasons, the combination of the Maestro and the Aiso references makes obvious all limitations of the claims.
Summary
Claims 1–11 are rejected under at least one of 35 U.S.C. §§ 102 and 103 as being unpatentable over the cited prior art. 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.
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 C.F.R. § 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.
Double Paetnting
Basis
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).
Rejection
Claims 1, 5, 6 and 10 are provisionally rejected on the grounds of nonstatutory double patenting as being drawn to an invention that is not patentably distinguishable from the invention defined in claims 4 and 11 of US Application 18/754,850 (the ‘850 Application).
Claims 1, 2, 6 and 7 are provisionally rejected on the grounds of nonstatutory double patenting as being drawn to an invention that is not patentably distinguishable from the invention defined in claims 5 and 11 of US Application 18/754,407 (the ‘407 Application).
Claim 1 is drawn to “a sound apparatus.” The following table illustrates the correspondence between the claimed sound apparatus and claims 1 and 4 of the ‘850 Application.
This Application
The ‘850 Application
“1. A sound apparatus comprising:
“an acoustic device; and
“a controller that is configured to
1. A sound apparatus comprising:
“an acoustic device; and
“a controller that is configured to
“receive a trigger requirement;
“receive a condition requirement;
“receive an action corresponding to the trigger requirement;
“receive a setting of a trigger requirement…
4. The sound apparatus according to claim 1, wherein the controller is also configured to receive a condition requirement…
[1.] “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
“associate the trigger requirement with the action…
[4.] associate the trigger requirement with the action and associate a macro main showing the associated trigger requirement and action with the condition requirement…
“determine that the condition requirement is satisfied and
“execute the action, in a case in which the trigger requirement is satisfied.”
[4.] determine that the condition requirement is satisfied and execute the action, in the case in which the trigger requirement is satisfied.
N/A
[1.] “receive an operation to enable a movement that executes the action in a case in which the trigger requirement is satisfied; and
N/A
“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.
Table 4
The next table illustrates the correspondence between the claimed sound apparatus and claims 1 and 5 of the ‘407 Application.
This Application
The ‘407 Application
“1. A sound apparatus comprising:
“an acoustic device; and
“a controller that is configured to
1. A sound apparatus comprising:
“an acoustic device setting apparatus; and
“a controller that is configured to
“receive a trigger requirement;
“receive a condition requirement;
“receive an action corresponding to the trigger requirement;
“receive a trigger requirement associated with an action and a reverse action…
5. The sound apparatus according to claim 1, wherein the controller is also configured to receive a condition requirement…
“[1.] receive the action corresponding to the trigger requirement;
“associate the trigger requirement with the action and
“associate the trigger requirement with the received action;
N/A
“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.
“associate a macro main showing the associated trigger requirement and action with the condition requirement; and
“[5.] associate the trigger requirement with the action and associates a macro main showing the associated trigger requirement and action with the condition requirement…
“determine that the condition requirement is satisfied and
“execute the action, in a case in which the trigger requirement is satisfied.”
“[5.] determine that the condition requirement is satisfied and
“execute the action, in a case in which the trigger requirement is satisfied;
N/A
“associate the trigger requirement with the reverse action and associate a macro main showing the associated trigger requirement and reverse action with the condition requirement; and determine that the condition requirement is satisfied and execute the reverse action, in the case in which the trigger requirement is not satisfied.
Table 5
The tables above show the correspondence between claim 1 of this Application and conflicting claims found in the ‘850 and the ‘407 Applications. Similar comparison may be made between claims 2, 5, 6, 7 and 10 of this Application and the claims of the ‘850 and the ‘407 Applications. Though the claims are not identical they are not patentably distinct. In particular, the conflicting Applications present claims that are narrower than claims 1, 2, 5, 6, 7 and 10 and would anticipate the claims of this Application is the conflicting Applications were available as prior art.
Summary
A timely filed terminal disclaimer in compliance with 37 C.F.R. § 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 C.F.R. § 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 C.F.R. § 1.111(a). For a reply to final Office action, see 37 C.F.R. § 1.113(c). A request for reconsideration while not provided for in 37 C.F.R. § 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER F BRINEY III whose telephone number is (571)272-7513. The examiner can normally be reached M-F 8 am-4:30 pm.
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/Walter F Briney III/
/CAROLYN R EDWARDS/Supervisory Patent Examiner, Art Unit 2692
Walter F Briney IIIPrimary ExaminerArt Unit 2692
2/5/2026