The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claims 1, 4, 8, 11, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 6, and 10 of copending Application No. 18/754,638 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because: as noted by the Federal Circuit in Eli Lilly v. Barr, “[a] a patentable distinction does not lie where a later claim is anticipated by an earlier one” (see also In re Berg and In re Goodman which established that a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim). Specifically, the copending application ‘638 claims recite each and every limitation recited in the application claims. Copending application ‘638 claims 1 and 5 recite each and every limitation of application claims 1 and 4, and copending application ‘638 claims 6 and 10 recite each and every limitation of application claim 8, 11, and 15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 8, 9, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7, and 12 of copending Application No. 18/754,407 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because: as noted by the Federal Circuit in Eli Lilly v. Barr, “[a] a patentable distinction does not lie where a later claim is anticipated by an earlier one” (see also In re Berg and In re Goodman which established that a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim). Specifically, the copending application ‘407 claims recite each and every limitation recited in the application claims. Copending application ‘407 claims 1 and 6 recite each and every limitation of application claims 1 and 2, and copending application ‘407 claims 7 and 12 recite each and every limitation of application claim 8, 9, and 15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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, 3-8, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Avid Technology, Inc. (NPL Document, “Avid VENUE 36L System and Avid VENUE Software 7.0.1”) considered with Aiso (US 2010/0034400).
Avid discloses an acoustic device setting method, a sound apparatus comprising an acoustic device and a controller (e.g., an audio mixer) configured to perform the method, and a non-transitory computer-readable storage medium storing a program, which when executed causes an acoustic device setting apparatus (e.g., an audio mixer) to perform the method, the method comprising: receive a setting of a trigger requirement (see page 323, regarding “Trigger: A conditional check used to fire an event, such as the press of a Function switch”; see also, page 332, regarding “Creating Triggers: …You create new triggers by selecting them from the Add pop-up menu”); receive an action corresponding to the trigger requirement, and associate the trigger requirement with the action (see page 323, regarding “Action: A command, mode or other response resulting from an event being triggered”; see also, page 327, regarding “Actions List: …All actions occur when the event is fired. …Add: The Add pop-up menu lets you create new actions”); and receive an operation to enable a movement that executes the action in a case in which the trigger requirement is satisfied (see page 340, regarding an example of “pressing a channel color switch [that] puts that channel’s Direct Out level on its fader”, and another example of pressing “Function Switch 1” to execute the action of “Light Function Switch 1, On, While Active, Wait 0.0 sec., Change View Mode – Inputs Page, Wait 0.0 sec.”).
Avid discloses the invention as claimed, but fails to specifically teach receiving a selection of ON/OFF of auto sync that matches the action executed by the trigger requirement (e.g., “puts that channel’s Direct Out level on its fader” responsive to pressing a switch) with a state of the acoustic device, before receiving the operation to enable the movement. Aiso discloses an audio mixer including an audio fader capable of being operated manually and automatically (see fig. 1, and para. 0001, 0026), wherein in the automatic mode, the fader is controlled to be automatically positioned at a desired position, in the same field of endeavor, for the purpose of more accurately positioned the fader at the desired position thereby improving the operation of the fader.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Avid, in view of Aiso, such that the controller receives a selection of ON/OFF of audio sync (e.g., automatic mode of a fader) that matches the action executed by the trigger requirement with a state of the acoustic device, before receiving the operation to enable the movement. A practitioner in the art would have been motivated to do this for the purpose of more accurately positioned the fader at the desired position when the fader action is executed by the trigger requirement being satisfied (e.g., “puts that channel’s Direct Out level on its fader”, which is automatically positioned at a desired position responsive to pressing a switch), thereby improving the operation of the fader.
Regarding claims 3 and 10, the trigger requirement corresponds to a state of a physical controller (e.g., fader) configured to designate sound processing to an input, mixture, or output of an audio signal.
Regarding claims 4 and 11, the controller is also configured to: receive a condition requirement (e.g., a trigger threshold); associate the trigger requirement with the action and associate a macro main showing the associated trigger requirement and action with the condition requirement; and determine that the condition requirement is satisfied and execute the action, in the case in which the trigger requirement is satisfied. See Avid, page 333, regarding “Logical Operators for Triggers: An individual trigger is considered to be ‘true’ when the function described by its type and properties takes place, such as … a fader is raised above its trigger threshold. A trigger is considered to be ‘false’ (or, not occurring) whenever its function and properties are not met, such as … while a fader remains below its assigned trigger threshold.”
Regarding claims 5 and 12, the controller is also configured to receive ON/OFF of the auto sync through a physical controller (e.g., a fader slider).
Regarding claims 6 and 13, the physical controller includes a first physical controller (e.g., a function switch) that receives the operation to enable the movement that executes the action, and a second physical controller (e.g., a fader slider) that receives ON/OFF of the auto sync. The first physical controller and the second physical controller are installed adjacent to each other (e.g., on the front-facing surfaces of the audio mixer).
Regarding claims 7 and 14, the controller is also configured to match the action with the state of the acoustic device by changing the state of the acoustic device so as to be corresponded to the trigger requirement. For example, accurately positioning the fader at the desired position when the fader action is executed by the trigger requirement being satisfied (e.g., “puts that channel’s Direct Out level on its fader”).
Claims 2 and 9 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if a terminal disclaimer is timely filed as explained above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL W HUBER whose telephone number is (571)272-7588.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duc Nguyen, can be reached at telephone number 571-272-7503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/PAUL W HUBER/Primary Examiner, Art Unit 2691
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May 21, 2026
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