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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/4/2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4, 9, 15, 16, and 34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s):
Claim 1. A load control system for controlling an amount of daylight in a space of a building, the load control system comprising:
a motorized window treatment configured to adjust a covering material to control the amount of daylight the space; and
control circuitry configured to:
receive an indicated problem with an operation of the at least one motorized window treatment;
receive an indication of a time period in which the operation of the at least one motorized window treatment is performed;
access a plurality of motorized window treatment control parameters that were used to control the motorized window treatment for the period of time;
determine a recommended adjustment to the motorized window treatment control parameter based on the indicated problem, wherein the motorized window treatment control parameter is in the plurality of motorized window treatment control parameters; and
display the recommended adjustment to the motorized window treatment control parameter.
Claim 34. A non-transitory, machine-readable, storage device that includes instructions, that when executed by motorized window treatment control circuitry to recommend an adjustment to a motorized window treatment control parameter for controlling a position of a covering material of at least one motorized window treatment in a space of a building, cause the motorized window treatment control circuitry to:
receive an indicated problem with an operation of the at least one motorized window treatment;
receive an indication of a time period in which the operation of the at least one motorized window treatment is performed;
access a plurality of motorized window treatment control parameters that were used to control the motorized window treatment for the period of time;
determine a recommended adjustment to the motorized window treatment control parameter based on the indicated problem, wherein the motorized window treatment control parameter is in the plurality of motorized window treatment control parameters; and
cause a display of the recommended adjustment to the motorized window treatment control parameter via a communicatively coupled user interface.
Step 1: The claims recite a load control system and a storage device including instructions to cause a motorized window treatment control circuitry the instructions. Thus, the claims are to a manufacture, machine, or process; which are statutory categories of invention.
Step 2A, Prong One: The limitation of “determine a recommended adjustment to the motorized window treatment control parameter based on the indicated problem” falls into the “mental process” group of abstract ideas, because the determining could practically be performed in the human mind. Note that even if most humans would use a physical aid to help them complete the recited determination, the use of such physical aid does not negate the mental nature of the limitation.
Step 2A, Prong Two: Besides the abstract idea, the claims recite additional elements of “receive an indicated problem…”, “receive an indication of a time period…”, and “access a plurality of motorized window treatment parameters…”. These additional elements represent mere data gathering that is necessary for use of the recited judicial exception and is recited at a high level of generality. Additionally, the claims recite an additional element of “display the recommended adjustment to the motorized window treatment control parameter”. This limitation is merely displays results of the abstract idea. Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claims are directed to the judicial exception.
Step 2B: The claims as a whole do not amount to significantly more than the recited exception. The claim has multiple additional elements. These additional elements cannot provide an inventive step. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept. The claims are ineligible.
Note: Dependent claims 2-4, 9, 15, and 16 do not provide any inventive concept and only introduce insignificant extra-solution activity, thus these claims are also ineligible.
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 1-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-29, 31, and 32 of U.S. Patent No. 10,139,791. Please see chart below for comparison between independent claim 1 of the instant patent application and independent claim 29 of the US Patent. Note that independent claims 17 and 34 of the instant patent application are rejection for the same reasons as independent claim 1 of the instant patent application.
Instant Patent Application
US Patent No. 10,139,791
Notes
1. A load control system for controlling an amount of daylight in a space of a building, the load control system comprising:
29. A load control system for controlling an amount of daylight in a space, the load control system comprising:
Instant application specifies the space is of a building…not patentably distinct
a motorized window treatment configured to adjust a covering material to control the amount of daylight the space; and
a motorized window treatment comprising a covering material and configured to adjust the covering material in response to received messages to control the amount of daylight in the space; and
Instant applications limitation is more broad and not patentably distinct
control circuitry configured to:
at least one control circuit configured to:
Not patentably distinct
store in memory daylight intensities determined from measurements made by at least one sensor over a
period of time;
Not included in instant application
store in the memory motorized window treatment control information reflecting control of the motorized window treatment over the period of time,
Not included in instant application
wherein the motorized window treatment control information
comprises a plurality of control states over the period of time, and a plurality of positions to which the covering material was adjusted over the
Not included in instant application
period of time, wherein each position of the plurality of positions is associated with at least one of the plurality of control states and is further associated with at least one of the daylight intensities;
Not included in instant application
receive an indicated problem with an operation of the at least one motorized window treatment;
receive, from a computing device via a communications network, an indicated problem with an operation of the motorized window treatment;
Not patentably distinct
receive an indication of a time period in which the operation of the at least one motorized window treatment is performed;
receive, from the computing device, an indication of a time period in which the operation of the motorized window treatment is performed, wherein the period of time comprises the time period;
Not patentably distinct
access a plurality of motorized window treatment control parameters that were used to control the motorized window treatment for the period of time;
access a plurality of motorized window treatment control parameters that were used to control the motorized window treatment for the time period;
Same
access from the memory the motorized window treatment
control information associated with the time period;
Not included in instant application
determine a recommended adjustment to the motorized window treatment control parameter based on the indicated problem, wherein the motorized window treatment control parameter is in the plurality of motorized window treatment control parameters; and
determine a recommended adjustment to at least one of
the plurality of motorized window treatment control parameters based on the indicated problem and at least a portion of the accessed motorized window treatment control information;
Not patentably distinct
display the recommended adjustment to the motorized window treatment control parameter.
display, via a graphical user interface on the computing
device, the recommended adjustment to the at least one
motorized window treatment control parameter;
Not patentably distinct
receive, from the computing device, an indication to make the recommended adjustment to the at least one motorized window treatment control parameter;
Not included in instant application
based at least in part on the indication to make the recommended adjustment to the at least one the motorized window treatment control parameter, determine a position of the covering material for the motorized window treatment; and
Not included in instant application
communicate, to the motorized window treatment via a
communications network, a message that includes the
determined position, wherein the motorized window treatment is configured to adjust the covering material to the determined position in response to the message.
Not included in instant application
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant patent application and the US Patent No. 10,139,791 teach displaying a recommended adjustment to a motorized window treatment control parameter; however, language included in the US Patent and not included in the instant application does not make the instant patent application patentably distinct from the US Patent. The instant patent application is merely a broader representation of the US Patent and therefore subject to Double Patenting rejection.
Allowable Subject Matter
Claims 1-34 would be allowable with resolution to the above Double Patenting and 35 U.S.C. 101 rejections.
The following is a statement of reasons for the indication of allowable subject matter: Outside of the source of the above Double Patenting rejection (Lundy et al. US Patent 10,139,791), prior art fails to specifically teach determining a recommended adjustment to a motorized window treatment control parameter based on a problem indicated with an operation of the motorized window treatment. Accordingly, with a timely filed Terminal Disclaimer and resolution to the above 35 U.S.C. 101 rejection the instant patent application would be in condition for allowance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael J. Brown whose telephone number is (571)272-5932. The examiner can normally be reached Monday-Thursday from 5:30am-4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kamini Shah can be reached at (571)272-2279. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Brown/
Primary Examiner, Art Unit 2115
Prosecution Insights