DETAILED ACTION
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 .
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 28, 31, 32, and 38 are rejected on the ground of nonstatutory double patenting as being anticipated by claim 4, 4, 11, and 11, respectively of U.S. Patent No. 12,054,044. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the limitations of the claims. The detection element, intoxicant, and sample of the instant application are anticipated by the fuel cell, ethanol, and breath, respectively, of the U.S. Patent.
Claims 24 – 26, 29, 30, 33, 35 – 37, 39 - 41, and 43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 4, 4, 4, 4, (for claims 24 – 26, 29, 30), 11, 11, 11, 11 (for claims 33 and 35 – 37), and 19, 19, 19, 19 (for claims 39 – 41 and 43) in view of claims 5, 2 and 5, 5, 6 and 8, 5 and 7 (for claims 24 – 26, 29, 30), 10, 12, 13, 14 and 15 (for claims 33 and 35- 37), 20, 20 and 17, 20 and 18, and 20, (for claims 39 – 41 and 43) respectively of U.S. Patent No. 12,054,044. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the limitations of the claims. The detection element, intoxicant, and sample of the instant application are anticipated by the fuel cell, ethanol, and breath, respectively, of the U.S. Patent. Claims 4, 11, and 19 disclose the first part of the claims, but do not disclose a second (or third) limitation of the claims. However, further dependent claims teach the missing limitation(s) of the claims. One of ordinary skill in the art prior would find modifying the claims such that it combined the second limitation of each claim obvious so continue the invention and function as a whole as described in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 44 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claim calls for reporting the attempt to defeat the vehicle immobilization system upon the vehicle immobilization system detecting a short of a wire to the starter of the vehicle. The vehicle immobilization system shorts the data bus through its connection to the vehicle’s OBDII diagnostic connector, thereby preventing communication on the bus and records the intoxication violation 710 when exceeding the threshold at 706 (paragraph [0072]) but does not disclose reporting detecting a short of a wire in attempt to defeat the vehicle immobilization system.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 24 – 26, 28 – 33, and 35 – 41, and 43 are is/are rejected under 35 U.S.C. 103 as being unpatentable over A. Nelson, U.S. 2015/0251660 (“Nelson”) in view of Ashley, Jr. et al., U.S. 2017/0156124 (“Ashley”) and Yorke et al. U.S. 2013/0158838 (“Yorke”). Nelson discloses a vehicle immobilization system (abstract), comprising:
a detection unit (paragraph [0007], fig. 1B) comprising:
a detection unit housing (100),
a detection element (103) within the detection unit housing, wherein the detection element is operable to detect a presence of and a level of intoxicant [0014] in a sample [0014] provided by a user (human text subject [0024]),
a display (106) operable to display text to the user [0030],
a processor of the detection unit (104) within the detection unit housing, the processor coupled to the display, and a memory of the detection unit (220) within the detection unit housing (fig. 2), the memory coupled to the processor of the detection unit, wherein the detection unit is operable to send a signal related to the level of intoxicant in the sample;
a control module (110) configured to be hidden under a dashboard (101) in the vehicle, the control module operable to receive the signal related to the level of intoxicant in the sample from the detection unit and to selectively restrict operation of a vehicle [0029] based on the level of intoxicant in the sample exceeding a threshold [0029], the control module comprising:
a processor of the control module (108) operable to:
receive the signal related to the level of intoxicant in the sample from the detection unit, based on the signal, selectively restrict the operation of the vehicle based on the level of intoxicant in the sample exceeding the threshold; and based on the signal, selectively allow the operation of the vehicle based on the level of intoxicant in the sample not exceeding the threshold [0029];
a memory of the control module (107) connected to the processor of the control module and storing instructions for the processor of the control module to selectively restrict the operation of the vehicle based on the level of intoxicant in the sample exceeding the threshold and selectively allow the operation of the vehicle based on the level of intoxicant in the sample not exceeding the threshold; wherein the control module is physically separate from the detection unit housing and is connected to the detection unit (fig. 1B);
a communication module (114) comprising:
a global positioning system (GPS) receiver,
a cellular modem [0034] configured to send an intoxication test result (abstract) associated with the level of intoxicant in the sample, wherein the cellular modem is configured to report a movement of the vehicle (movement detected by any available system motion sensor, software that detects vehicle’s movement via the diagnostic bus 115, GPS, cell-tower triangulation systems detecting motions are housed and relay/logger unit 110, control unit 113, cellular telecommunications communications modem 114 [0019], a combination of the three [0034] – [0035], logs information into memory 107 and then transmits the logged information to the monitoring authorities [0019]), wherein the communication module is coupled to the control module; and
a camera (109) physically separate from the communication module, the camera comprising a connection to the vehicle immobilization system [0018], wherein the camera is configured to record a picture of the user using the detection unit [0018].
Nelson does not disclose the GPS receiver and the cellular modem are coupled to a plurality of antennas. Ashley teaches a GPS receiver [0205] and a cellular module [0205] are coupled to a plurality of antennas [0205] integrated into the communication module (transponder or subscriber device), a processor of the communication module (CPU) connected to the GPS receiver and the cellular modem, and a memory of the communication module [0205] connected to the processor of the communication module. One of ordinary skill in the art prior to the effective filing date of the claimed invention would find modifying the GPS receiver and the cellular modem are coupled to a plurality of antennas in view of the teaching of Ashley obvious so as to provide the features, flexibility and capability of an intelligent device [0205].
Ashley further teaches the cellular modem is configured to report a movement of the vehicle (direction of the vehicle, distance, speed [0209] – [0210] reported by the transponder and/or subscriber device which is a cellular modem [0203]) and an attempt to defeat the vehicle immobilization system ([0340] and [0423] tampered nodes in the chain will be reported). One of ordinary skill at the time the invention was filed would find modifying Nelson such that it comprised the reports in view of the teachings of Ashley obvious so as to provide a suitable network configuration, old and well known in the art, with predictable results for communication [0179].
Nelson does not directly disclose the camera configured to connect to a USB interface. Yorke teaches the use of a USB interface [0108]. One of ordinary skill in the art prior to the effective filing date of the claimed invention would find modifying Nelson such that it comprised the USB interface in view of the teachings of Yorke obvious so as to provide an old and well known computer connection, making use of other optional expansion connectors that add extra functionality to the system [0108].
In reference to claims 25, 26, and 28 – 31, Nelson in view of Ashley and Yorke further discloses [[claim 25]] wherein the control module is configured to record a violation if the sample exceeds the threshold [0039];
[[claim 26]] wherein the system is configured to send, using the cellular modem, the picture captured by the camera with the intoxication test result [0018];
[[claim 28]] wherein the instructions to selectively restrict the operation of the vehicle comprise restricting the operation of a starter of the vehicle, and wherein the instructions to selectively allow the operation of the vehicle comprise allowing the operation of the starter of the vehicle [0019];
[[claim 29]] wherein the communication module is coupled to the control module via a USB connection (as modified by Yorke), and wherein the communication module is physically separate from and external to the control module (fig. 1B);
[[claim 30]] further comprising an accelerometer [0034], wherein the system is configured to use the accelerometer to detect if the vehicle is moved without a valid intoxication test result [0034];
[[claim 31]] wherein the detection element comprises a fuel cell (103) operable to send a signal [0021] related to the level of ethanol in a breath sample provided by the user.
In reference to claim 32, Nelson discloses a method of selectively immobilizing a vehicle [0013] using a vehicle immobilization system (abstract) based on a level of intoxicant (abstract) in a sample (breath) provided by a user (person), comprising:
detecting a level of intoxicant in a sample using a detection unit [0007], the detection unit comprising:
a detection unit housing (100),
a detection element (103) within the detection unit housing, wherein the detection element is operable to detect a presence of and the level of intoxicant in the sample [0019],
a display (106) operable to display text to the user,
a processor of the detection unit (104) within the detection unit housing, the processor coupled to the display, and
a memory of the detection unit (220) within the detection unit housing, the processor coupled to the processor of the detection unit, determining whether the level of intoxicant in the sample exceeds a threshold [0019], sending a signal [0021] related to the level of intoxicant in the sample from the detection unit to a control module (110), wherein the control module is configured to be hidden under a dashboard (101) in the vehicle, based on the signal related to the level of intoxicant in the sample from the detection unit, the control module selectively restricting operation of a vehicle (abstract) based on the level of intoxicant in the sample exceeding the threshold, the control module comprising:
a processor of the control module (108) operable to:
receive the signal related to the level of intoxicant in the sample from the detection unit, based on the signal, selectively restrict the operation of the vehicle based on the level of intoxicant in the sample exceeding the threshold (fig. 3); and
based on the signal, selectively allow the operation of the vehicle based on the level of intoxicant in the sample not exceeding the threshold (fig. 3);
a memory of the control module (107) connected to the processor of the control module and storing instructions for the processor of the control module to selectively restrict the operation of the vehicle based on the level of intoxicant in the sample exceeding the threshold and selectively allow the operation of the vehicle based on the level of intoxicant in the sample not exceeding the threshold; wherein the control module is physically separate from the detection unit housing and is connected to the detection unit (fig. 1B);
sending an intoxication test result by a communication (114) comprising:
a cellular modem (114) configured to send an intoxication result associated with the level of intoxicant in the sample; wherein the cellular modem is configured to report a movement of the vehicle (movement detected by any available system motion sensor, software that detects vehicle’s movement via the diagnostic bus 115, GPS, cell-tower triangulation systems detecting motions are housed and relay/logger unit 110, control unit 113, cellular telecommunications communications modem 114 [0019], a combination of the three [0034] – [0035], logs information into memory 107 and then transmits the logged information to the monitoring authorities [0019]);
wherein the communication module is coupled to the control module (fig. 1B); and
recording, via a camera (113), a picture of the user (image) using the detection unit, wherein the camera is physically separate from the communication module (fig. 1B), the camera comprising a cable (112) connection to the vehicle immobilization system.
Nelson does not disclose the GPS receiver and the cellular modem are coupled to a plurality of antennas. Ashly teaches a GPS receiver [0205] and a cellular module [0205] are coupled to a plurality of antennas [0205] integrated into the communication module (transponder or subscriber device), a processor of the communication module (CPU) connected to the GPS receiver and the cellular modem, and a memory of the communication module [0205] connected to the processor of the communication module. One of ordinary skill in the art prior to the effective filing date of the claimed invention would find modifying the GPS receiver and the cellular modem are coupled to a plurality of antennas in view of the teaching of Ashley obvious so as to provide the features, flexibility and capability of an intelligent device [0205].
Ashley further teaches the cellular modem is configured to report a movement of the vehicle (direction of the vehicle, distance, speed [0209] – [0210] reported by the transponder and/or subscriber device which is a cellular modem [0203]) and an attempt to defeat the vehicle immobilization system ([0340] and [0423] tampered nodes in the chain will be reported). One of ordinary skill at the time the invention was filed would find modifying Nelson such that it comprised the reports in view of the teachings of Ashley obvious so as to provide a suitable network configuration, old and well known in the art, with predictable results for communication [0179].
Nelson does not directly disclose the camera configured to connect to a USB interface. Yorke teaches the use of a USB interface [0108]. One of ordinary skill in the art prior to the effective filing date of the claimed invention would find modifying Nelson such that it comprised the USB interface in view of the teachings of Yorke obvious so as to provide an old and well known computer connection, making use of other optional expansion connectors that add extra functionality to the system [0108].
In reference to claims 33 and 35 – 38, Nelson in view of Ashley and Yorke further discloses [[claim 33]] recording, using information from the GPS receiver, a location of an intoxication test [0034];
[[claim 35]] after allowing the operation of the vehicle based on the level of intoxicant in the sample not exceeding the threshold, administer a re-test [0042] by prompting the user for a second sample (Block 312);and based on the signal, selectively record a violation [0020] based on the level of intoxicant in the sample exceeding the threshold;
[[claim 36]] further comprising the control module recording a violation if the sample exceeds the threshold [0020];
[[claim 37]] further comprising sending, using the cellular modem, the picture captured by the camera with the intoxication test result [0018] and a movement of the vehicle [0034];
[[claim 38]] wherein the detection element comprises a fuel cell (103) operable to operable to send a signal [0015] related to the level of ethanol in a breath sample (alcohol) provided by the user.
In reference to claim 39, Nelson discloses a method of installing [0013] a vehicle immobilization system (abstract) in a vehicle (abstract), comprising:
installing a control module (110) in a location (fig. 1) hidden under a dashboard (101) in the vehicle, wherein the control module is operable to selectively restrict operation of the vehicle based on a level of intoxicant (alcohol) in a sample (breath) provided by a user (person) exceeding a threshold [0019], the control module comprising:
a processor of the control module (108) operable to:
receive a signal (fig. 1B) related to the level of intoxicant in the sample from a detection unit (100), based on the signal, selectively restrict the operation of the vehicle based on the level of intoxicant in the sample exceeding the threshold; and
based on the signal, selectively allow the operation of the vehicle based on the level of intoxicant in the sample not exceeding the threshold [0019];
a memory of the control module (107) connected to the processor of the control module and storing instructions for the processor of the control module to selectively restrict the operation of the vehicle based on the level of intoxicant in the sample exceeding the threshold and selectively allow the operation of the vehicle based on the level of intoxicant in the sample not exceeding the threshold [0019];
connecting the control module to a detection unit (100), wherein the detection unit comprises:
a detection unit housing (fig. 1A) physically separate from the control module,
a detection element (103) within the detection unit housing and operable to detect a presence of and the level of intoxicant in the sample [0019],
a display (106) operable to display text to the user, a processor of the detection unit (104) coupled to the display,
a memory module of the detection unit (220) coupled to the processor of the detection unit, and wherein the detection unit is operable to send, to the control module, the signal related to the level of intoxicant in the sample (fig. 1B);
connecting a communication module (114) to the control module , the communication module comprising: a global positioning system (GPS) receiver [0034], a cellular modem [0034] configured to send an intoxication test result (abstract) associated with the level of intoxicant in the sample; wherein the cellular modem is configured to report a movement of the vehicle (movement detected by any available system motion sensor, software that detects vehicle’s movement via the diagnostic bus 115, GPS, cell-tower triangulation systems detecting motions are housed and relay/logger unit 110, control unit 113, cellular telecommunications communications modem 114 [0019], a combination of the three [0034] – [0035], logs information into memory 107 and then transmits the logged information to the monitoring authorities [0019]); and
connecting a camera (113) to the vehicle immobilization system, wherein the camera is physically separate from the communication module (fig. 1B), wherein the camera is configured to record a picture of the user (image) using the detection unit.
Nelson does not disclose the GPS receiver and the cellular modem are coupled to a plurality of antennas. Ashly teaches a GPS receiver [0205] and a cellular module [0205] are coupled to a plurality of antennas [0205] integrated into the communication module (transponder or subscriber device), a processor of the communication module (CPU) connected to the GPS receiver and the cellular modem, and a memory of the communication module [0205] connected to the processor of the communication module. One of ordinary skill in the art prior to the effective filing date of the claimed invention would find modifying the GPS receiver and the cellular modem are coupled to a plurality of antennas in view of the teaching of Ashley obvious so as to provide the features, flexibility and capability of an intelligent device [0205].
Ashley further teaches the cellular modem is configured to report a movement of the vehicle (direction of the vehicle, distance, speed [0209] – [0210] reported by the transponder and/or subscriber device which is a cellular modem [0203]) and an attempt to defeat the vehicle immobilization system ([0340] and [0423] tampered nodes in the chain will be reported). One of ordinary skill at the time the invention was filed would find modifying Nelson such that it comprised the reports in view of the teachings of Ashley obvious so as to provide a suitable network configuration, old and well known in the art, with predictable results for communication [0179].
Nelson does not directly disclose the camera configured to connect to a USB interface. Yorke teaches the use of a USB interface [0108]. One of ordinary skill in the art prior to the effective filing date of the claimed invention would find modifying Nelson such that it comprised the USB interface in view of the teachings of Yorke obvious so as to provide an old and well known computer connection, making use of other optional expansion connectors that add extra functionality to the system [0108].
In reference to claims 40, 41, and 43, Nelson in view of Ashley and Yorke further discloses [[claim 40]] the control module is configured to record a violation [0020] if the sample exceeds the threshold;
[[claim 41]] wherein the control module is configured to send, using the cellular modem, the picture captured by the camera with the intoxication test result [0018];
[[claim 43]] wherein the control module is operable to selectively restrict operation of the vehicle by restricting operation of a starter of the vehicle (abstract).
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nelson in view of Ashley, Jr. and Yorke as applied to claims 24 and 28 above, and further in view of Walter et al. U.S. 2010/0012417 (“Walter”). Nelson as modified discloses the cellular modem (114) is configured to report the attempt to defeat the vehicle immobilization system upon the vehicle immobilization system (as modified by Ashley) but does not disclose specifically detecting a shorting of a wire to the starter of the vehicle. Walter teaches detecting a short of a wire to the starter of the vehicle (attempts to short circuit the relay 228 will be detected and recorded [0067]). One of ordinary skill in the art prior to the effective filing date of the claimed invention would find modifying Nelson in view of Ashley and Yorke such that it comprised detecting a short circuit to the relay in view of the teachings of Walter obvious so as to record all attempts to start the vehicle without a successful breath, including tampering [0067].
Response to Arguments
Applicant's arguments filed 11 December 2025 have been fully considered but they are not persuasive. Applicant argues that Nelson lacks disclosure reporting the vehicle movement with a cellular Amodem. The Office disagrees. Nelson discloses wherein the cellular modem is configured to report a movement of the vehicle (movement detected by any available system motion sensor, software that detects vehicle’s movement via the diagnostic bus 115, GPS, cell-tower triangulation systems detecting motions are housed in relay/logger unit 110, control unit 113, cellular telecommunications communications modem 114 ([0019] and [0034]), or a combination of the three [0034] – [0035]. The system logs information into memory 107 and then transmits the logged information to the monitoring authorities via the cellular telecommunications modem 114 [0019]. The current rejection stands.
Conclusion
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 KAREN BECK whose telephone number is (571)272-6212. The examiner can normally be reached Monday - Thursday from 8:30AM - 4:00PM.
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KAREN BECK
Primary Examiner
Art Unit 3614
/KAREN BECK/Primary Examiner, Art Unit 3614