DETAILED ACTION
Applicant’s amendment filed 12/16/2025 has been fully considered.
Claims 2-12 have been examined. Claim 1 has been canceled.
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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Applicant’s arguments with respect to the prior art 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.
Double Patenting
Claims 2-12 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims of Patent Nos. 12050723 and 11238185. Although the conflicting claims are not identical, they are not patentably distinct from each other because
“An electronic device configured for display at a retail display of a retail site, the electronic device comprising: a persistent memory on which boot instructions are stored as firmware, the boot instructions comprising a callout; a storage device on which security monitoring instructions are stored; and a processor configured to execute the boot instructions and implement the callout during a boot sequence, implementation of the callout further configuring the processor to initiate execution of the security monitoring instructions within a background service; wherein the processor is further configured, via the execution of the security monitoring instructions, to monitor the retail display of the retail site for a security trigger event indicative of a theft of the electronic device from the retail site and, upon detection of the security trigger event, lock a user interface of the electronic device” (claim 2, instant application) is analogous to
“An electronic device configured for display at a retail display of a retail site, the electronic device comprising: a persistent memory on which boot instructions are stored; and a processor configured to execute the boot instructions during a boot sequence to initiate execution of security monitoring instructions within a background service running on the processor; wherein the security monitoring instructions are stored outside the persistent memory without direct addressability by the processor, wherein the persistent memory is directly addressable by the processor, and wherein the processor is further configured, via the execution of the security monitoring instructions, to monitor the retail display of the retail site for a security trigger event indicative of a theft of the electronic device from the retail site and, upon detection of the security trigger event, lock a user interface of the electronic device” (claim 1, patent 12050723) and analogous to
“An electronic device configured for retail display, the electronic device comprising: a persistent memory on which boot instructions are stored as firmware such that the boot instructions are implemented during a factory reset; a storage device on which security monitoring instructions are stored; and a processor configured to execute the boot instructions during the factory reset and other boot sequences to initiate execution of the security monitoring instructions; wherein the processor is further configured, via the execution of the security monitoring instructions, to monitor the electronic device for a plurality of security trigger events and, upon detection of one of the plurality of trigger events, lock a user interface of the electronic device, wherein the plurality of security trigger events comprise a first trigger event and a second trigger event, wherein the security monitoring instructions define the first and second trigger events such that, upon discontinuation of the first or the second trigger event, the user interface is not or is automatically unlocked, respectively, and wherein the security monitoring instructions define the first and second trigger events such that the user interface is locked before removal of the electronic device from a retail site in which the retail display is provided” (claim 1, patent 11238185).
This is a provisional obviousness-type double patenting rejection because the conflicting claims of the instant application have not in fact been patented.
The claims of the conflicting patents and/or applications contain every element of claims 2-12 of the instant application and thus anticipate the claims of the instant application. Claims 2-12 of the instant application therefore are not patently distinct from the copending application claims and as such are unpatentable for obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species with that genus). “ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
“Claim 12 and Claim 13 are generic to the species of invention covered by claim 3 of the patent. Thus, the generic invention is “anticipated” by the species of the patented invention. Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim) 4. This court’s predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of the generic claim. In re Van Ornum, 686 F.2d 937, 944, 214 USPQ 761, 767 (CCPA 1982); Schneller, 397 F.2d at 354. Accordingly, absent a terminal disclaimer, claims 12 and 13 were properly rejected under the doctrine of obviousness-type double patenting.” (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 4, 6 recite the limitation "the background service", claim 2 introduces “a background service”, and claim 3 reintroduces “a background service”, making it indefinite which “background service” is being referenced. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the agent", “the persistent service”. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the retail data". There is insufficient antecedent basis for this limitation in the claim.
This is not intended to be a complete list of such indefiniteness issues.
Claim Rejections - 35 USC § 103
Claims 2-11 are rejected under 35 U.S.C. 103 as being unpatentable over Gardner (20140298485), and further in view of Rogers (20140372743).
Regarding claims 2 and 11, Gardner teaches An electronic device configured for display at a retail display of a retail site, the electronic device comprising/ A method of monitoring an electronic device on a retail display of a retail site, the method comprising (par.9-12):
a persistent memory on which boot instructions are stored as firmware, the boot instructions comprising a callout; a storage device on which security monitoring instructions are stored (par.20-23, 67-72); and
a processor configured to execute the boot instructions and implement the callout during a boot sequence, implementation of the callout further configuring the processor to initiate execution of the security monitoring instructions within a background service (par.15-17, 49-55, 62-66).
Gardner does not expressly disclose, however Rogers teaches wherein the processor is further configured, via the execution of the security monitoring instructions, to monitor the retail display of the retail site for a security trigger event indicative of a theft of the electronic device from the retail site and, upon detection of the security trigger event, lock a user interface of the electronic device (par. 52-58, 84-88).
Therefore, one of ordinary skill in the art would have found it obvious before the effective filing date of the claimed invention to modify Gardner to further prevent access to a stolen device as taught by Rogers.
One of ordinary skill in the art would have been motivated to perform such a modification to protect/deter devices from theft (Rogers, par.3-9, 59-63).
Regarding claim 3, Gardner/Rogers teaches wherein a background service is created in an act within which the security monitoring instructions are executed (Gardner, 49-55, 62-66).
Regarding claim 4, Gardner/Rogers teaches wherein an agent of the security monitoring instructions is attached to the background service (Gardner, 49-55, 62-66).
Regarding claim 5, Gardner/Rogers teaches wherein the agent is defined via the security monitoring instructions (Gardner, 22-25, 56-61).
Regarding claim 6, Gardner/Rogers teaches wherein the background service is a persistent service (Gardner, 50-53, 66-72).
Regarding claim 7, Gardner/Rogers teaches wherein execution of the boot instructions causes the processor to attach the agent defined via the security monitoring instructions to the persistent service running on the processor (Gardner, 50-53, 66-72).
Regarding claim 8, Gardner/Rogers teaches wherein the callout refers to a data set, the data set identifying the security monitoring instructions as an application to be executed on a background basis (Gardner, 63-70, 186-190).
Regarding claim 9, Gardner/Rogers teaches wherein the callout specifies the security monitoring instructions (Gardner, 63-70, 186-190).
Regarding claim 10, Gardner/Rogers teaches wherein the storage device comprises a solid-state drive on which the security monitoring instructions are stored (Gardner, 61-64, 186-190).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Gardner/Rogers, and further in view of DiMartino (7843327).
Regarding claim 12, Gardner/Rogers teaches monitoring for devices (Gardner, 15-17, 49-55, 62-66) does not expressly disclose, however DiMartino teaches wherein: obtaining the retail data comprises accessing identification data indicative of an identity of the electronic device, and processing the retail data comprises evaluating the identification data to determine whether the electronic device is for the security monitoring, wherein the retail data includes device identification data and data indicative of a retail fixture within the retail site (col.8, 7-65).
Therefore, one of ordinary skill in the art would have found it obvious before the effective filing date of the claimed invention to modify Gardner/Rogers to further prevent access to a stolen device as taught by DiMartino.
One of ordinary skill in the art would have been motivated to perform such a modification to protect/deter devices from theft (DiMartino, col.1, col. 8).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: the remaining references put forth on the PTO-892 form are directed to protecting devices from theft and alerting users to theft/removal of property from premises/locations, McClintock (10096216).
THIS ACTION IS MADE FINAL. 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 David García Cervetti whose telephone number is (571)272-5861. The examiner can normally be reached Monday-Friday 8AM-5PM.
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/David Garcia Cervetti/Primary Examiner, Art Unit 2409