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 1-16 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-12 and 15-19 of U.S. Patent No. 12,094,666. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite substantially the same invention with only insignificant differences in the claims drafting and organization.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1, 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shivell (US20170102493).
Regarding claim 1, Shivell teaches a control device 100 for controlling power delivered to an electrical load, the control device comprising: a faceplate subassembly (102, 104, 114, 112, 150, 136, 132, 130), comprising: a faceplate 102, wherein the faceplate comprises a front surface and an opposed rear surface (Fig. 3), and an opening 106 extending between the front surface and the rear surface, the opening defined by a sidewall (thickness of the faceplate); a button 112 disposed in the opening such that a gap exists between the button and the sidewall defining the opening (occupied by 114, 116); a local control module (150, 130, 132, 136) coupled to the faceplate, the local control module comprising: a circuit board 136 positioned adjacent to the rear surface of the faceplate, such that depression of the button actuates a contact 130 on the circuit board; and at least one light source 157 coupled to the circuit board and configured to (via 158, 114) illuminate the gap between the button and the sidewall defining the opening; a main control module subassembly 120 comprising a main control module 128 electrically connected to the local control module and configured to: cause power delivered to the electrical load to be adjusted in response to an actuation of the button (Fig. 14); and control the at least one light source to illuminate the gap between the button and the sidewall defining the opening (paragraph 58).
Regarding claim 17, Shivell teaches the control device wherein the main control module is configured to be connected to a power source 322 (paragraph 90) and to a wired digital communication link 484 (paragraph 109), the main control module assembly configured to transmit, via the wired digital communication link, a message indicated an actuation of a first actuator of the main control module assembly (paragraphs 91, 110).
Regarding claim 18, Shivell teaches the control device wherein the main control module is configured to be connected to the wired digital communication link, the main control module comprising the first actuator 112 and a visible indicator 149 that may be illuminated to provide feedback (paragraphs 52, 57, 88).
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Shivell in view of Mosebrook (US. Pat. 6,687,487).
Regarding claim 16, Shivell does not teach a cable coupled to the local control module and the main control module to electrically connect the local control module and the main control module. However, Mosebrook teaches a similar control device in which one control module 506 is connected to another control module 502 through a cable 516 (Fig. 2). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the connection between the control modules in Shivell by using a cable as shown by Mosebrook provide a flexible connection between the electrical components.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M SAEED whose telephone number is (571)270-7976. The examiner can normally be reached 10-8pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Luebke can be reached at 571-272-2009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AHMED M SAEED/Primary Examiner, Art Unit 2831
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