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 .
Status of Claims
In the response of 6/4/2025, Applicant amended claim 11. Claims 2-19 are pending.
Response to Arguments
Applicant’s arguments with respect to claim(s) 2-20 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 2-3, 5-9, 11 and 15-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over San Vicente et al. in view of Mehta (US Pub. 2010/0111066 A1).
Regarding claim 2, San Vicente discloses an analyte sensor system configured for wireless data communication with a mobile device, (San Vicente, Figs. 1 and 3 and Abstract; Systems and methods for processing, transmitting and displaying data received from an analyte sensor, such as a glucose sensor, are provided; ¶0169; FIG. 3 is an exemplary block diagram illustrating various elements of one embodiment of a continuous analyte sensor system 8 and display device 14, 16, 18, 20; ¶0170; Wireless communication protocols may be used to transmit and receive data between the sensor system 8 and the display device 14, 16, 18, 20. The wireless protocol used may be designed for use in a wireless sensor network that is optimized for periodic and small data transmissions)
the analyte sensor system comprising: an analyte sensor; (San Vicente, Figs. 1 and 3 and ¶0169; FIG. 3 is an exemplary block diagram illustrating various elements of one embodiment of a continuous analyte sensor system 8)
a transceiver configured to transmit and receive wireless signals; and a processor operatively coupled to the analyte sensor and the transceiver (San Vicente, Fig. 3 and ¶0169; The sensor measurement circuit 310 may be coupled to a processor 314 (part of item 12 in FIG. 1). In some embodiments, the processor 314 may perform part or all of the functions of the sensor measurement circuit 310 for obtaining and processing sensor measurement values from the sensor 312. The processor may be further coupled to a transceiver 316 (part of item 12 in FIG. 1) for sending sensor data and receiving requests and commands from an external device, such as the display device 14, 16, 18, 20,)
and configured to :cause the transceiver to transmit a series of advertisement signals; (San Vicente, Fig. 4A and ¶0178; the analyte sensor system 8 may be configured to send a series of message beacons 402 in a window of time around the scheduled transmission time )
receive a data connection request from a mobile device; cause the transceiver to establish a data connection with a radio unit of the mobile device; (San Vicente, Fig. 4A Request Data (hash Key)/Authenticate/ Establish Channel/ Send Data; and ¶0178; Any one of the message beacons can be used to initiate the establishment of a new communication channel when it is received by the display device 14, 16, 18, 20. After communicating with one device during the transmission window; Fig. 7 and ¶0237; the transceiver in the sensor system 8 sends one or more message beacons that include the device ID and a challenge value used in conjunction with the sensor security code as will be described below. In block 704, the display device 14, 16, 18, 20 may receive the transmission and determine whether to pair with the sensor system 8; ¶0238; The display device 14, 16, 18, 20 processes the challenge value using a predetermined algorithm and the sensor security code to produce an authentication response value as shown in block 706, as well as generating a request for sensor data.)
cause the transceiver to transmit an analyte value; cause the transceiver to terminate the data connection; and cause the transceiver to enter a sleep mode. (San Vicente, Fig. 4A Send Data/Close Channel ; and Fig. 7 and ¶0238; the sensor system 8 transmits the requested sensor data to the display device 14, 16, 18, 20 as shown in block 712. Otherwise, as shown in block 714, the pairing process can end)
San Vicente does not specifically disclose transmitting a connection interval and therefore does not disclose, cause the transceiver to transmit a connection interval for use by the mobile device for calculating an exit time at which the mobile device is to exit an inactive mode and start to search for an advertisement signal. Mehta, in the same field of endeavor, however, teaches employing the technique. Mehta discloses cause the transceiver to transmit a connection interval (Mehta, ¶0007; the first wireless device initiates a switch from the first operating mode to a second operating mode, and transmits a control beacon to the second wireless device; ¶0061; the control beacon preferably conveys, indicates, or includes a mode switching command for the listening wireless device. In certain embodiments, the control beacon may also convey, indicate, or include a time period to be used by the listening wireless device)
for use by the mobile device for calculating an exit time at which the mobile device is to exit an inactive mode and start to search for an advertisement signal. (Mehta, ¶0060; the beacon-transmitting wireless device transmits the control beacon to the listening wireless device; ¶0062; the beacon-transmitting wireless device periodically transmitting beacons to the listening wireless device at a second rate; and the listening wireless device periodically monitoring for beacons transmitted by the beacon-transmitting device at the second rate; ¶0064; this time period may be a predetermined, fixed, and default time period, or it may be a time period that is configurable and conveyed in the control beacon... If the time period has not elapsed then process 400 may check whether it is time to monitor for the next wireless beacon)1 Consequently, it would have been obvious for a person of ordinary skill in the art, prior to the effective filing date of the claimed subject matter, to implement San Vincente with the known technique of causing the transceiver to transmit a connection interval for use by the mobile device for calculating an exit time at which the mobile device is to exit an inactive mode, as taught by Metha in order to conserve power while allowing for seamless operation. (Mehta, ¶0006 and ¶0053).
Regarding claim 6, San Vicente discloses a mobile device configured for wireless data communication with an analyte sensor system, (San Vicente, Figs. 1 and 3 and Abstract; Systems and methods for processing, transmitting and displaying data received from an analyte sensor, such as a glucose sensor, are provided; ¶0169; FIG. 3 is an exemplary block diagram illustrating various elements of one embodiment of a continuous analyte sensor system 8 and display device 14, 16, 18, 20; ¶0170; Wireless communication protocols may be used to transmit and receive data between the sensor system 8 and the display device 14, 16, 18, 20. The wireless protocol used may be designed for use in a wireless sensor network that is optimized for periodic and small data transmissions)
the mobile device comprising: a memory for storing a custom application; (San Vicente, Fig. 3 and ¶0172; The display device 14, 16, 18, 20 may include a display 332, a memory 334; ¶0195; This example also contemplates implementations wherein the display device has a software application stored on the display device (which may be referred to herein as an "app") that is configured to cause the display device to request data from the sensor electronics module. The application may run as a background process on the display device and, while it is run in the background, the display device does not listen for beacons.)
a radio unit for transmitting and receiving wireless signals; and a processor operatively coupled to the memory and the radio unit (San Vicente, Fig. 3 and ¶0172; The display device 14, 16, 18, 20 may be used for alerting and providing sensor information to a user, and may include a processor 330 for processing and managing sensor data. The display device 14, 16, 18, 20 may include a display 332, a memory 334, and a real time clock 336 for displaying, storing and tracking sensor data respectively. The display device 14, 16, 18, 20 may further include a transceiver 338 for receiving sensor data and for sending requests, instructions, and data to the sensor system 8.)
and configured to: cause the radio unit to search for advertisement signals; (San Vicente, Figs.4a and 8 and ¶0215; Establishing a channel may involve broadcasting a unique ID by one device and a search and acquisition of this ID by another device; ¶0245; This beacon may be received at a primary display device 16 and/or secondary display device 14, 18 as shown in blocks 804a and 804b; ¶0263; second secondary display device 18 may additionally be attempting to communicate with the analyte sensor system 8 and begin searching to acquire a beacon)
receive an advertisement signal from a transceiver associated with the analyte sensor system; (San Vicente, Figs.4a and 8 and ¶0245; This beacon may be received at a primary display device 16 and/or secondary display device 14, 18 as shown in blocks 804a and 804b;)
cause the radio unit to transmit a data connection request to the transceiver; receive a grant of the data connection request from the transceiver; cause the radio unit to establish a data connection with the transceiver; (San Vicente, Figs.4a and 8 and ¶0252; If the received hash value matches one of the expected hash values, then the communication request from the display device can be considered authenticated and a communication channel opened between the sensor system 8 and display device and data may be sent between the analyte sensor system 8 the primary display device 16 or secondary display device 14, 18 as shown in blocks 812a and 812b, respectively.)
cause the radio unit to terminate the data connection with the transceiver; cause the radio unit to enter an inactive mode during which the radio unit does not communicate with the transceiver; (San Vicente, Fig. 4A Send Data/Close Channel; and Fig. 7 and ¶0238; the sensor system 8 transmits the requested sensor data to the display device 14, 16, 18, 20 as shown in block 712. Otherwise, as shown in block 714, the pairing process can end)
San Vicente does not specifically disclose transmitting a connection interval and therefore does not disclose, receive a connection interval indicative of an amount of time elapsed between a beginning of transmission of a series of advertisement signals by the transceiver and a reception of a data connection request by the transceiver. Mehta, in the same field of endeavor, however, teaches employing the technique. Mehta discloses, receive a connection interval indicative of an amount of time elapsed between a beginning of transmission of a series of advertisement signals by the transceiver and a reception of a data connection request by the transceiver. (Mehta, ¶0007; the first wireless device initiates a switch from the first operating mode to a second operating mode, and transmits a control beacon to the second wireless device; ¶0060; the beacon-transmitting wireless device transmits the control beacon to the listening wireless device; ¶0061; the control beacon preferably conveys, indicates, or includes a mode switching command for the listening wireless device. In certain embodiments, the control beacon may also convey, indicate, or include a time period to be used by the listening wireless device)
calculate an exit time based at least partly on the connection interval; cause the radio unit to exit from the inactive mode at the exit time; and cause the radio unit to search for advertisement signals after exiting the inactive mode. (Mehta, ¶0062; the listening wireless device periodically monitoring for beacons transmitted by the beacon-transmitting device at the second rate; ¶0064; this time period may be a predetermined, fixed, and default time period, or it may be a time period that is configurable and conveyed in the control beacon... If the time period has not elapsed then process 400 may check whether it is time to monitor for the next wireless beacon)2 Consequently, it would have been obvious for a person of ordinary skill in the art, prior to the effective filing date of the claimed subject matter, to implement San Vincente with the known technique of causing the transceiver to transmit a connection interval for use by the mobile device for calculating an exit time at which the mobile device is to exit an inactive mode, as taught by Metha in order to conserve power while allowing for seamless operation. (Mehta, ¶0006 and ¶0053).
Regarding claim 3, which depends from claim 2, San Vicente discloses wherein the processor is further configured to: cause the transceiver to exit the sleep mode after a predetermined time period; and cause the transceiver to transmit a second series of advertisement signals. (San Vicente, ¶0009; activating comprises waking the transceiver from a low power sleep mode, and wherein deactivating the transceiver comprises placing the transceiver into a lower power sleep mode; ¶0178; the analyte sensor system 8 may be configured to send a series of message beacons 402 in a window of time around the scheduled transmission time )
Regarding claim 5, which depends from claim 2, San Vicente discloses wherein the analyte sensor is a continuous glucose sensor. ( San Vicente, ¶0100; The term "continuous analyte sensing" as used herein is... refers without limitation to the period in which monitoring of an analyte is continuously or continually performed, for example... a glucose sensor performs continuous analyte sensing in order to monitor a glucose level in a corresponding host.)
Regarding claim 7, which depends from claim 6, San Vicente discloses wherein the analyte sensor system is a continuous glucose sensor system. ( San Vicente, ¶0100; The term "continuous analyte sensing" as used herein is... refers without limitation to the period in which monitoring of an analyte is continuously or continually performed, for example... a glucose sensor performs continuous analyte sensing in order to monitor a glucose level in a corresponding host.)
Regarding claim 8, which depends from claim 6, San Vicente discloses wherein the mobile device is a mobile phone. (San Vicente, ¶0156; display devices can include other hand-held devices, such as a cell phone or PDA 18, an insulin delivery device, a blood glucose meter, and/or a desktop or laptop computer 24.)
Regarding claim 9, which depends from claim 6, San Vicente discloses wherein the custom application is an analyte data management application. (San Vicente, Fig. 3 and ¶0172; The display device 14, 16, 18, 20 may include a display 332, a memory 334; ¶0195; This example also contemplates implementations wherein the display device has a software application stored on the display device (which may be referred to herein as an "app") that is configured to cause the display device to request data from the sensor electronics module. The application may run as a background process on the display device and, while it is run in the background, the display device does not listen for beacons.)
Regarding claim 11, San Vicente discloses a mobile device configured for wireless data communication with an analyte sensor system, (San Vicente, Figs. 1 and 3 and Abstract; Systems and methods for processing, transmitting and displaying data received from an analyte sensor, such as a glucose sensor, are provided; ¶0169; FIG. 3 is an exemplary block diagram illustrating various elements of one embodiment of a continuous analyte sensor system 8 and display device 14, 16, 18, 20; ¶0170; Wireless communication protocols may be used to transmit and receive data between the sensor system 8 and the display device 14, 16, 18, 20. The wireless protocol used may be designed for use in a wireless sensor network that is optimized for periodic and small data transmissions)
the mobile device comprising: a memory for storing a custom application; (San Vicente, Fig. 3 and ¶0172; The display device 14, 16, 18, 20 may include a display 332, a memory 334; ¶0195; This example also contemplates implementations wherein the display device has a software application stored on the display device (which may be referred to herein as an "app") that is configured to cause the display device to request data from the sensor electronics module. The application may run as a background process on the display device and, while it is run in the background, the display device does not listen for beacons.)
a radio unit for transmitting and receiving wireless signals; and a processor operatively coupled to the memory and the radio unit (San Vicente, Fig. 3 and ¶0172; The display device 14, 16, 18, 20 may be used for alerting and providing sensor information to a user, and may include a processor 330 for processing and managing sensor data. The display device 14, 16, 18, 20 may include a display 332, a memory 334, and a real time clock 336 for displaying, storing and tracking sensor data respectively. The display device 14, 16, 18, 20 may further include a transceiver 338 for receiving sensor data and for sending requests, instructions, and data to the sensor system 8;)
and configured to: receive, via the radio unit, one or more advertisement signals from a transceiver of the analyte sensor system; (San Vicente, Figs.4a and 8 and ¶0215; Establishing a channel may involve broadcasting a unique ID by one device and a search and acquisition of this ID by another device; ¶0245; This beacon may be received at a primary display device 16 and/or secondary display device 14, 18 as shown in blocks 804a and 804b; ¶0263; second secondary display device 18 may additionally be attempting to communicate with the analyte sensor system 8 and begin searching to acquire a beacon)
based on a condition associated with the mobile device, cause the custom application to enter an inactive state; (San Vicente, ¶0195; ... a state based approach for RF windowing can be used. ...The application may run as a background process on the display device and, while it is run in the background, the display device does not listen for beacons)
cause the custom application to exit the inactive state based on the scheduled time; and receive, via the radio unit, the one or more additional advertisement signals. (San Vicente, ¶0196-0198; RFWindowState. Search: When this state is entered, the display device opens up the RF window for the same or slightly greater period than the window frequency of the sensor electronics unit during normal operation so at least one beacon is to be received within this period. For example, if the windowing frequency of the sensor electronics module is 5 minutes, the window in this state can be set to be open for 5 minutes and 5 seconds. This state is entered: [0197] a. When the display device has been in RFWindowState.Idle mode for 30 minutes; OR [0198] b. When the display device is in RFWindowState.Idle and the app is brought up from background.)
San Vicente does not specifically disclose transmitting a connection interval and therefore does not disclose receive a connection interval indicative of a scheduled time at which the transceiver of the analyte sensor system will be transmitting one or more additional advertisement signals. Mehta, in the same field of endeavor, however, teaches employing the technique. (Mehta, ¶0007; the first wireless device initiates a switch from the first operating mode to a second operating mode, and transmits a control beacon to the second wireless device; ¶0060; the beacon-transmitting wireless device transmits the control beacon to the listening wireless device; ¶0061; the control beacon preferably conveys, indicates, or includes a mode switching command for the listening wireless device. In certain embodiments, the control beacon may also convey, indicate, or include a time period to be used by the listening wireless device) Consequently, it would have been obvious for a person of ordinary skill in the art, prior to the effective filing date of the claimed subject matter, to implement San Vincente with the known technique of causing the transceiver to transmit a connection interval for use by the mobile device for calculating an exit time at which the mobile device is to exit an inactive mode, as taught by Metha in order to conserve power while allowing for seamless operation. (Mehta, ¶0006 and ¶0053).
Regarding claim 15, which depends from claim 11, San Vicente discloses wherein the radio unit does not search for advertisement signals received from the transceiver of the analyte sensor system while in the inactive state. (San Vicente, ¶0195; ... a state based approach for RF windowing can be used. ...The application may run as a background process on the display device and, while it is run in the background, the display device does not listen for beacons)
Regarding claim 16, which depends from claim 11, San Vicente discloses wherein the processor is configured to cause the custom application to exit the inactive state based on the scheduled time by causing the custom application to exit the inactive state prior to the scheduled time, thereby enabling the radio unit to receive the one or more additional advertisement signals. (San Vicente, ¶0196-0198; RFWindowState. Search: When this state is entered, the display device opens up the RF window for the same or slightly greater period than the window frequency of the sensor electronics unit during normal operation so at least one beacon is to be received within this period. For example, if the windowing frequency of the sensor electronics module is 5 minutes, the window in this state can be set to be open for 5 minutes and 5 seconds. This state is entered: [0197] a. When the display device has been in RFWindowState.Idle mode for 30 minutes; OR [0198] b. When the display device is in RFWindowState.Idle and the app is brought up from background.)
Regarding claim 17, which depends from claim 11, San Vicente discloses wherein the analyte sensor system is a continuous glucose sensor system. ( San Vicente, ¶0100; The term "continuous analyte sensing" as used herein is... refers without limitation to the period in which monitoring of an analyte is continuously or continually performed, for example... a glucose sensor performs continuous analyte sensing in order to monitor a glucose level in a corresponding host.)
Regarding claim 18, which depends from claim 11, San Vicente discloses wherein the mobile device is a mobile phone. (San Vicente, ¶0156; display devices can include other hand-held devices, such as a cell phone or PDA 18, an insulin delivery device, a blood glucose meter, and/or a desktop or laptop computer 24.)
Regarding claim 19, San Vicente discloses wherein the custom application is an analyte data management application. (San Vicente, Fig. 3 and ¶0172; The display device 14, 16, 18, 20 may include a display 332, a memory 334; ¶0195; This example also contemplates implementations wherein the display device has a software application stored on the display device (which may be referred to herein as an "app") that is configured to cause the display device to request data from the sensor electronics module. The application may run as a background process on the display device and, while it is run in the background, the display device does not listen for beacons.)
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over San Vicente in view of Metha in view of Sicurello et al. (US Pub. 2010/2077342 A1)(hereinafter Sicurello).
Regarding claim 4, which depends from claim 2, while Metha discloses a connection interval, Metha does not disclose wherein the connection interval is a function of a difference between a first time at which the transceiver began to transmit a series of advertisement signals and a second time at which the transceiver received the data connection request from the mobile device. Sicurello, in the same field of endeavor, however discloses wherein the connection interval is a function of a difference between a first time at which the transceiver began to transmit a series of advertisement signals and a second time at which the transceiver received the data connection request from the mobile device. (Sicurello, Fig. 14 and ¶0044; ...the receiver begins a decoding procedure to decode the received data signals... a sampling clock signal may be obtained from the preamble portion of the received data signals... based on the received data signals and the time interval between each of the three data signal transmissions, the receiver determines the wait time period for receiving the next transmission from the identified and synchronized transmitter. Upon successful synchronization, the receiver begins receiving from the transmitter data signals corresponding to the user's detected glucose level;)
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over San Vicente in view of Metha in further view of Seidl et al. (USP. 7.120 750 B1) (hereinafter Seidl)
Regarding claim 12, claim 12 depends from claim 11. As already discussed the limitations of claim 11 are anticipated by San Vicente. Concerning claim 12, while San Vicente discloses the application determining a condition, or state, of the device San Vicente does not specifically disclose wherein the condition associated with the mobile device is an amount of memory being used by the custom application. Seidl in the area of program operation, Col. 1, Lines 18-21, however discloses, the technique of the limitation is known. (Seidl, Col. 1, Lines 22- 33; If the amount of unallocated memory is below a threshold value during a memory allocation process, then garbage collection may be triggered. During garbage collection, the executing program typically is suspended. The executing program is allowed to resume when garbage collection has been completed.) Consequently, at the time of the claimed invention, it would have been obvious for a person of ordinary skill in the art to implement the application of San Vicente with the known technique of suspending the due to excess memory use, as taught by Seidl, since it is a known technique for handling memory overflow during program execution. (Seidl, Col. 1, Lines 22- 33)
Regarding claim 13, which depends from claim 12, Seidl discloses wherein the processor is configured to cause the custom application to enter the inactive state based on determining that an amount of memory used by the custom application exceeds a threshold level. (Seidl, Col. 1, Lines 22- 33; If the amount of unallocated memory is below a threshold value during a memory allocation process, then garbage collection may be triggered. During garbage collection, the executing program typically is suspended. The executing program is allowed to resume when garbage collection has been completed.)
Regarding claim 14, claim 14 depends from claim 11. As already discussed the limitations of claim 11 are anticipated by San Vicente. Concerning claim 14, San Vicente discloses wherein the processor is configured to cause the custom application to enter the inactive state(San Vicente, ¶0195; ... a state based approach for RF windowing can be used. ...The application may run as a background process on the display device and, while it is run in the background, the display device does not listen for beacons)
While San Vicente discloses the application determining a condition, or state, of the device San Vicente does not specifically discloses the condition is based on an amount of memory being used by a plurality of applications executing on the mobile device, the plurality of applications including the custom application. Seidl in the area of program operation, Col. 1, Lines 18-21, however discloses, the technique of the limitation is known. (Seidl, Col. 1, Lines 22- 33; If the amount of unallocated memory is below a threshold value during a memory allocation process, then garbage collection may be triggered. During garbage collection, the executing program typically is suspended. The executing program is allowed to resume when garbage collection has been completed.) Consequently, at the time of the claimed invention, it would have been obvious for a person of ordinary skill in the art to implement the application of San Vicente with the known technique of suspending the due to excess memory use, as taught by Seidl, since it is a known technique for handling memory overflow during program execution. (Seidl, Col. 1, Lines 22- 33)
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.
Claim 2-9 and 11-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-7 and 11-12 of U.S. Patent No. 9, 974,470 B2 in view of San Vincent Sicurello. While the ‘470 patent, claim 4, recites the custom application to enter back ground mode, i.e. an inactive state, claim 4 of ‘470 patent does not recite that the entry is based on a condition of the mobile device. San Vicente, as discussed above, however, teaches the limitation. Consequently, it would have been obvious for a person of ordinary skill in the art, prior to the effective filing date of the claimed subject matter, to implement the ‘470 patent with the known technique of entry into an inactive state being based on a condition of the mobile device, as taught by San Vicente, in order to conserve battery power. (San Vicente, ¶0194) The ‘470 patent also does not recite the termination of the data connection nor transmission and reception of a connection interval. As discussed above, however, San Vicente and Metha disclose the limitations. Consequently, it would have been obvious for a person of ordinary skill in the art, prior to the effective filing date of the claimed subject matter, to implement the “470 patent with theses known technique in order to allow for the saving of power by eliminating the need of a receiver device having to continuously listening for transmissions.
Claim Number of the Instant Application
Claim Number of USP 9, 974,470 B2
2
4
3
4
4
4
5
6
6
4
7
6
8
4
9
4
11
4
12
5, 11 and 12
13
5, 11 and 12
14
5, 11 and 12
15
4
16
5, 11 and 12
17
6
18
7
19
4
Allowable Subject Matter
Claim 10 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEROLD B MURPHY whose telephone number is (571)270-1564. The examiner can normally be reached M-T, Th-F 10am-7pm, W 1pm-5pm.
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/JEROLD B MURPHY/Examiner, Art Unit 2687
/STEVEN LIM/Supervisory Patent Examiner, Art Unit 2688
1 The non-control wireless beacons are interpreted as advertisement signals. (¶0005)
2 The non-control wireless beacons are interpreted as advertisement signals. (¶0005)