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 .
This Office action is in response to Applicant’s amendment filed on April 17, 2026.
Claims 2-21 are pending in the application.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 17, 2026 has been entered.
Response to Arguments/Remarks
Double Patenting
Claims 2, 4-10 were rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 11 of U.S. Patent No. 12,028,235 .
Claims 2, 4-6 and 8 were rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5 of U.S. Patent No. 11,595,290 in view of Kizhakkiniyi et al. US Patent Publication No. 2016/0321147.
Applicant submitted that claim 2 has been amended to further recite that the determination of the health score is based at least in part on: "a network topology of the network" and "a make, model, and/or firmware of the second CPE device.” Applicant submitted that cited claims of U.S. Patent No. 12,028,235, and the cited portions of U.S. Patent No. 11,595,290 and Kizhakkiniyi do not disclose at least the newly added limitations.
In response, the double patenting rejections have been withdrawn based on the amendments to the claims. However, the amendments have necessitated new grounds of rejection. New double patenting rejections have been presented in this Office action.
Claim Rejections - 35 USC § 112
Claim 3 was 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 subject matter which the inventor or a joint inventor, regards as the invention.
Claim 3 has been amended to remove the term “neighborhood.” Accordingly, the rejection has been withdrawn.
Claim Rejections - 35 USC § 103
Claims 2-3, 7-8 were rejected under 35 U.S.C. 103 as being unpatentable over Voshi et al. US Patent Publication No. 2014/0369208 in view of Kizhakkiniyi et al. US Patent Publication No. 2016/0321147, McElhinney US Patent Publication No. 2016/0155098, and Maes et al. US Patent Publication No. 2019/0268214.
The amendments made to claim 2 has overcome the rejection. Accordingly, the rejection has been withdrawn.
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 2, 5-11, 14-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 12,028,235 (“Patent ‘235”) in view of Louca et al. US Patent No. 10,771,345 (“Louca”) and Asenjo et al. US Patent Publication No. 2014/0336795 (“Asenjo”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are substantially disclosed by claims of Patent ‘235 with the differences being obvious to one of ordinary skill in the art.
Instant Application
Patent ‘235
2. An electronic device, comprising: one or more processors; and memory storing one or more programs configured to be executed by the one or more processors, the one or more programs including instructions for:
1. An electronic device, comprising: one or more processors; and memory storing one or more programs configured to be executed by the one or more processors, the one or more programs including instructions for:
determining, based upon information comprising diagnostic data for a first customer premises equipment (CPE) device, a health score for a second CPE device, wherein the first and second CPE devices are both connected to a network corresponding to a particular service provider and the health score is determined using a machine learning system that bases the determination of the health score at least in part on:
a network topology of the network,
a make, model, and/or firmware of the second CPE device, and
the diagnostics data of the first CPE device compared to diagnostics data of the second CPE device;
determining, based upon information comprising functional parameters and diagnostic data for a first customer premises equipment (CPE) device, a health score for a second CPE device, wherein the first and second CPE devices are both connected to a network corresponding to a particular service provider and the health score is determined using a machine learning system that bases the determination of the health score at least in part on the functional parameters and diagnostics data of the first CPE device compared to the functional parameters and diagnostics data of the second CPE device;
determining whether the health score indicates that the second CPE device is defective;
based upon a comparison between the health score and a threshold, determining whether the health score indicates that the second CPE device is defective;
in response to a determination that the health score indicates that the second CPE device is defective, outputting an indication that the second CPE device is defective; and
in response to a determination that the health score indicates that the second CPE device is defective, outputting second information indicating that the second CPE device is defective and needs to be replaced and returned; and
subsequent to outputting an indication that the second CPE device is defective, updating the machine learning system used to determine the health score for the second CPE device with diagnostic data of the second CPE device.
in response to receiving an indication that the second CPE device was tested and determined not to be defective, updating the machine learning system used to determine the health score with a training example including diagnostic data of the second CPE device and that the second CPE device is not defective.
Claim 1 of Patent ‘235 does not disclose that the health score is determined at least in part on: a network topology of the network, and a make, model, and/or firmware of the second CPE device.
Louca discloses determining a health score at least in part on a network topology of a network (col. 8, lines 39-56. using the annotated topology, the network monitoring service 110 can generate a health score for the network device. health score can be generated based on the network topology of the devices in the neighborhood of the network device, the operational state of the devices in the neighborhood of the network device). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Louca’s disclosure such that the health score is further based in part of the network topology. One of ordinary skill in the art would have been motivated to do because claim 1 of Patent ‘235 discloses health score determined based on data of CPE devices connected to the network and based on heath of the network (claims 1, 2). It would have been beneficial to have used network topology to have identified devices in a neighborhood of the second CPE device and used states of the devices for the determining of the health score and diagnosing an issue with the CPE device.
Asenjo discloses determining a health score at least in part on a make, model, and/or firmware of a device (para. [0113] hash value (or other baseline metric) can be generated based on the configuration parameters set for a particular industrial device during successful production run, the device model, the firmware version of the device. para. [0118] compare the new hash values to the baseline hash values, and deviations. possible root cause of an identified system performance degradation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Asenjo’s disclosure such that the health score is further based in part on a make, model, and/or firmware of a device in order to utilized additional data to determine values indicative of deviations and performance degradation of devices.
Claim 11 is unpatentable over claim 1 of Patent ‘235 with the differences being obvious to one of ordinary skill in the art for the reasons given upon with respect to claim 2. Furthermore, claim 11 is directed to a method, while claim 1 of Patent ‘235 is directed to an electronic device. However, the steps are disclosed by the executed instructions in claim 1 of Patent ‘235.
Claim 20 is unpatentable over claim 1 of Patent ‘235 with the differences being obvious to one of ordinary skill in the art for the reasons given upon with respect to claim 2. Furthermore, claim 20 is directed to a “non-transitory computer-readable storage medium storing one or more programs configured to be executed by one or more processors,” while claim 1 of Patent ‘235 is directed to an electronic device. However, the electronic device in claim 1 of Patent ‘235 comprises memory storing one or more programs configured to be executed by one or more processor including instructions to perform steps of the claim. Therefore, claim 20 is disclosed by claim 1 of Patent ‘235.
Claims 5-10 are unpatentable over claims 3-8 and 10 of Patent ‘235.
Claims 14-19 are unpatentable over claims 3-8 and 10 of Patent ‘235.
Claim 21 is unpatentable over claim 10 of Patent ‘235.
Claims 3-4, 12-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,028,235 (“Patent ‘235”) in view of Louca, Asenjo, and Voshi et al. US Patent Publication No. 2014/0369208 (“Voshi”).
Regarding claim 3, claims of Patent ‘235 disclose determining the health score but not based on information about network devices that are in the same household as the second CPE device. Voshi teaches determining health based on information about network devices that are in the same household as the second CPE device (see fig. 1. see one or more CPE devices at customer premise. para. [0013] receive the services at a customer premise through one or more (CPE) devices. para. [0021] customer premise 110 at which one or more CPE devices 115 are installed... identify a subset of CPE devices 115... para. [0022] network monitoring service 145 can collect data from an identified subset of CPE devices 115). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Voshi’s disclosure for benefits of determining a source of an issue based on health of a device relative to other devices in the network.
Regarding claim 12, claims of Patent ‘235 discloses determining the health score but not based on information about network devices that are in the same household as the second CPE device. Voshi teaches determining health based on information about network devices that are in the same household as the second CPE device (see fig. 1. see one or more CPE devices at customer premise. para. [0013] receive the services at a customer premise through one or more (CPE) devices. para. [0021] customer premise 110 at which one or more CPE devices 115 are installed... identify a subset of CPE devices 115... para. [0022] the network monitoring service 145 can collect data from an identified subset of CPE devices 115). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Voshi’s disclosure for benefits of determining a source of an issue based on health of a device relative to other devices in the network.
Claims 4 and 13 are unpatentable over claim 3 of Patent ‘235.
Claims 2, 5-6, 8, 11, 14-15, 17, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5 of U.S. Patent No. 11,595,290 (“Patent ‘290”) in view of Louca et al. US Patent No. 10,771,345 (“Louca”) and Asenjo et al. US Patent Publication No. 2014/0336795 (“Asenjo”), and Kizhakkiniyi et al. US Patent Publication No. 2016/0321147 (“Kizhakkiniyi”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are substantially disclosed by claims of Patent ‘290 with the differences being obvious to one of ordinary skill in the art. See below.
Instant Application
Patent ‘290
2. An electronic device, comprising: one or more processors; and memory storing one or more programs configured to be executed by the one or more processors, the one or more programs including instructions for:
1. An electronic device, comprising: one or more processors; and memory storing one or more programs configured to be executed by the one or more processors, the one or more programs including instructions for:
determining, based upon information comprising diagnostic data for a first customer premises equipment (CPE) device, a health score for a second CPE device, wherein the first and second CPE devices are both connected to a network corresponding to a particular service provider and the health score is determined using a machine learning system that bases the determination of the health score at least in part on:
a network topology of the network,
a make, model, and/or firmware of the second CPE device, and
the diagnostics data of the first CPE device compared to diagnostics data of the second CPE device;
determining, based upon first information comprising current diagnostic data for a first customer premises equipment (CPE) device, a health score for a second CPE device, wherein the first and second CPE devices are both connected to a network corresponding to a particular service provider and the health score is determined using a machine learning system that bases the determination of the health score at least in part on whether the second CPE device has previously been returned from a user's premises;
determining whether the health score indicates that the second CPE device is defective;
based upon a comparison between the health score and a threshold, determining whether the second CPE device is defective; and
in response to a determination that the health score indicates that the second CPE device is defective, outputting an indication that the second CPE device is defective; and
in response to determining that the second CPE device is defective, outputting second information indicating that the second CPE device is defective; receiving an indication that the second CPE device is determined not to be defective; and
subsequent to outputting an indication that the second CPE device is defective, updating the machine learning system used to determine the health score for the second CPE device with diagnostic data of the second CPE device.
updating the machine learning system used to determine the health score with a training example including the current diagnostic data and the indication that the second CPE device is not defective.
Claim 1 of Patent ‘290 discloses determination of the health score at least in part on the diagnostics data of the first CPE device but not in part on: a network topology of the network, a make, model, and/or firmware of the second CPE device, and the diagnostic data of the first CPE device compared to the diagnostics data of the second CPE device.
Louca discloses determining a health score at least in part on a network topology of a network (col. 8, lines 39-56. using the annotated topology, the network monitoring service 110 can generate a health score for the network device. health score can be generated based on the network topology of the devices in the neighborhood of the network device, the operational state of the devices in the neighborhood of the network device). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Louca’s disclosure such that the health score is further based in part of the network topology. One of ordinary skill in the art would have been motivated to do because claim 1 of Patent ‘290 discloses determining health score based on data from devices upstream of a CPE device and different types of data. It would have been beneficial to have used network topology to have identified devices in a neighborhood of the second CPE device and used states of the devices for the determining of the health score.
Asenjo discloses determining a health score at least in part on a make, model, and/or firmware of a device (para. [0113] hash value (or other baseline metric) can be generated based on the configuration parameters set for a particular industrial device during successful production run, the device model, the firmware version of the device. para. [0118] compare the new hash values to the baseline hash values, and deviations. possible root cause of an identified system performance degradation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Asenjo’s disclosure such that the health score is further based in part on a make, model, and/or firmware of a device in order to utilized additional data to determine values indicative of deviations and performance degradation of devices.
Kizhakkiniyi discloses determining health of a second device, the health determined at least in part on diagnostics data of a first device compared to the diagnostics data of the second device (para. [0009] health parameter value of the node is compared to the health parameter values of other nodes within the cluster. para. [0014] health parameters. para. [0026] determine whether node 110 is healthy. FMC 180 makes the health determination by comparing the health parameter values gathered from its own node 110, to health parameter values gathered from the other nodes). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Kizhakkiniyi’s disclosure because it would have been beneficial to further compare the data of other nodes to identify and correct underperforming nodes (para. [0003]).
Claim 11 is unpatentable over claim 1 of Patent ‘290 with the differences being obvious to one of ordinary skill in the art for the reasons given upon with respect to claim 2. Furthermore, claim 11 is directed to a method, while claim 1 of Patent ‘235 is directed to an electronic device. However, the steps are disclosed by executed instructions of Patent ‘290.
Claim 20 is unpatentable over claim 1 of Patent ‘290 with the differences being obvious to one of ordinary skill in the art for the reasons given upon with respect to claim 2. Furthermore, claim 11 is directed to a “non-transitory computer-readable storage medium storing one or more programs configured to be executed by one or more processors,” while claim 1 of Patent ‘290 is directed to an electronic device. However, the electronic device comprises memory storing one or more programs configured to be executed by one or more processor including instructions to perform steps of the claim. Therefore, claim 20 is disclosed by claim 1 of Patent ‘290.
Claims 5-6 and 8 are unpatentable over claims 1-2, 4-5 of Patent ‘290.
Claims 14-15 and 17 are unpatentable over claims 1-2, 4-5 of Patent ‘290.
Claim 3-4, 12-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,595,290 (“Patent ‘290”) in view of Louca, Asenjo, Kizhakkiniyi, and Voshi et al. US Patent Publication No. 2014/0369208 (“Voshi”).
Regarding claim 3, claims of Patent ‘290 discloses determining the health score but not based on information about network devices that are in the same household and/or neighborhood as the second CPE device. Voshi teaches determining health based on information about network devices that are in the same household as the second CPE device (see fig. 1. see one or more CPE devices at customer premise. para. [0013] receive the services at a customer premise through one or more (CPE) devices. para. [0021] customer premise 110 at which one or more CPE devices 115 are installed... identify a subset of CPE devices 115... para. [0022] the network monitoring service 145 can collect data from an identified subset of CPE devices 115). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Voshi’s disclosure for benefits of determining a source of an issue based on health of a device relative to other devices in the network.
Regarding claim 12, claims of Patent ‘290 discloses determining the health score but not based on information about network devices that are in the same household and/or neighborhood as the second CPE device. Voshi teaches determining health based on information about network devices that are in the same household as the second CPE device (see fig. 1. see one or more CPE devices at customer premise. para. [0013] receive the services at a customer premise through one or more (CPE) devices. para. [0021] customer premise 110 at which one or more CPE devices 115 are installed... identify a subset of CPE devices 115... para. [0022] the network monitoring service 145 can collect data from an identified subset of CPE devices 115). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Voshi’s disclosure for benefits of determining a source of an issue based on health of a device relative to other devices in the network.
Claims 4 and 13 are unpatentable over claim 1 of Patent ‘290.
Claims 7 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,595,290 (“Patent ‘290”) in view of Louca, Asenjo, Kizhakkiniyi, and McElhinney US Patent Publication No. 2016/0155098 (“McElhinney”).
Regarding claim 7, claims of Patent ‘290 do not disclose the electronic device of claim 2, wherein the diagnostic data for the second CPE device includes diagnostic data from different times of day. McElhinney discloses diagnostic data from different times of day (para. [0107] transmit operating data for to the analytics system 400 continuously, periodically, and/or in response to triggering events (e.g., fault codes). asset 200 may transmit operating data periodically based on a particular frequency (e.g., daily, hourly, every fifteen minutes, once per minute, once per second, etc. para. [0122] analyze historical operating data for a group of one or more assets to identify past occurrences). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented McElhinney’s disclosure of diagnostic data from different times of day in order to have received updated data to determine health and predict failures.
Regarding claim 16, claims of Patent ‘290 do not disclose the method of claim 11, wherein the diagnostic data for the second CPE device includes diagnostic data from different times of day. McElhinney discloses diagnostic data from different times of day (para. [0107] transmit operating data for to the analytics system 400 continuously, periodically, and/or in response to triggering events (e.g., fault codes). asset 200 may transmit operating data periodically based on a particular frequency (e.g., daily, hourly, every fifteen minutes, once per minute, once per second, etc. para. [0122] analyze historical operating data for a group of one or more assets to identify past occurrences). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented McElhinney’s disclosure of diagnostic data from different times of day in order to have received updated data to determine health and predict failures.
Claims 9 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,595,290 (“Patent ‘290”) in view of Louca, Asenjo, Kizhakkiniyi, and Leach et al. US Patent Publication No. 2019/0075035 (“Leach”).
Regarding claim 9, claims of Patent ‘290 do not disclose the electronic device of claim 2, wherein the network is a DOCSIS network. Leach discloses a DOCSIS network (para. [0049] set of performance metrics may be used in a third type of monitored device, such as set-top boxes following the DOCSIS (Data Over Cable Service Interface Specification) standard. para. [0065] monitored devices themselves (e.g., the user premises devices, STB/DVR 113, gateway 111, etc.) para. [0066] health monitoring device 118 may determine whether it is time to analyze the overall health of one or more monitored devices). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Leach’s disclosure of a DOCSIS network in order to have determined health of devices on different networks including health of set-top boxes.
Regarding claim 18, claims of Patent ‘290 do not disclose the method of claim 11, wherein the network is a DOCSIS network. Leach discloses a DOCSIS network (para. [0049] set of performance metrics may be used in a third type of monitored device, such as set-top boxes following the DOCSIS (Data Over Cable Service Interface Specification) standard. para. [0065] monitored devices themselves (e.g., the user premises devices, STB/DVR 113, gateway 111, etc.) para. [0066] health monitoring device 118 may determine whether it is time to analyze the overall health of one or more monitored devices). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have implemented Leach’s disclosure of a DOCSIS network in order to have determined health of devices on different networks including health of set-top boxes.
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 10, 19, and 21 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.
Regarding claim 10, it is not clear which device “the CPE device” is referring to because claim 10 comprises “a respective CPE device,” and claim 2 comprises “a first customer premises equipment (CPE) device” and “a second CPE device.”
Regarding claim 19, it is not clear which device “the CPE device” is referring to because claim 19 comprises “a respective CPE device,” and claim 11 comprises “a first customer premises equipment (CPE) device” and “a second CPE device.”
Regarding claim 21, it is not clear which device “the CPE device” is referring to because claim 1219 comprises “a respective CPE device,” and claim 20 comprises “a first customer premises equipment (CPE) device” and “a second CPE device.”
Conclusion
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/JOSHUA JOO/Primary Examiner, Art Unit 2445
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