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 1-9, 16, and 23-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,158,788. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US Pat No. 12,158,788 anticipate the claims of the current application.
Claim 1 of the current application corresponds to claim 1 of US Pat No. 12,158,788.
Claim 2 of the current application corresponds to claim 15 of US Pat No. 12,158,788.
Claim 3 of the current application corresponds to claim 3 of US Pat No. 12,158,788.
Claim 4 of the current application corresponds to claim 4 of US Pat No. 12,158,788.
Claim 5 of the current application corresponds to claim 5 of US Pat No. 12,158,788.
Claim 6 of the current application corresponds to claim 6 of US Pat No. 12,158,788.
Claim 7 of the current application corresponds to claim 7 of US Pat No. 12,158,788.
Claim 8 of the current application corresponds to claim 11 of US Pat No. 12,158,788.
Claim 9 of the current application corresponds to claim 12 of US Pat No. 12,158,788.
Claim 16 of the current application corresponds to claim 2 of US Pat No. 12,158,788.
Claim 23 of the current application corresponds to claim 1 of US Pat No. 12,158,788.
Claim 24 of the current application corresponds to claim 4 of US Pat No. 12,158,788.
Claim 25 of the current application corresponds to claim 5 of US Pat No. 12,158,788.
Claim 26 of the current application corresponds to claim 4 of US Pat No. 12,158,788.
Claim 27 of the current application corresponds to claim 5 of US Pat No. 12,158,788.
Claim 28 of the current application corresponds to claim 6 of US Pat No. 12,158,788.
Claim 29 of the current application corresponds to claim 6 of US Pat No. 12,158,788.
Claim 30 of the current application corresponds to claim 1 of US Pat No. 12,158,788.
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.
Claims 23 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Schuster (US Pub No. 2016/0129182) and Deicke et al. (US Pub No. 2013/0236192).
Regarding claims 23 and 30, Schuster teaches an automatic power on system, comprising: when an second electronic device is positioned on, in, or proximate to the mounting area of the first electronic device, the automatic power on circuit is configured to: automatically establish a coupling signal between the first portion of the automatic power on circuit and the second portion of the automatic power on circuit in response to the second electronic device being positioned on, in, or proximate to the mounting area of the first electronic device or vice versa, automatically activate the automatic power on circuit based on the coupling signal, and automatically control an on/off state of the first electronic device or the second electronic device based on the activation of the automatic power on circuit (See abstract and [0355]).
Schuster does not explicitly teach a first electronic device including: a mounting area; and a first portion of an automatic power on circuit; and a second electronic device including: a housing configured to enable the second electronic device to be positioned on, in, or proximate to the mounting area of the first electronic device; and a second portion of the automatic power on circuit.
Deicke teaches a first electronic device (See abstract) including:
a mounting area (See abstract, Fig. 1A & 1B, and [0143]); and
a first portion of a power on circuit (See Fig. 1A & 1B, [0038], and [0041]); and
a second electronic device (See abstract) including:
a housing configured to enable the second electronic device to be positioned on, in, or proximate to the mounting area of the first electronic device (See abstract, Fig. 1A & 1B, and [0143]); and
a second portion of the power on circuit (See Fig. 1A & 1B, [0038], and [0041]).
One of ordinary skill in the art at the time the invention was filed would have been motivated to modify Schuster’s system to include Deicke’s device mounting system for increased “reliability and user-friendliness”. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claims 24-27 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Diecke and Schuster as applied to claim 1 above, and further in view of Kim et al. (US Pub No. 2014/0184516).
Regarding claim 24, Diecke does not teach upon the activation of the automatic power on circuit, the first electronic device is controlled to turn on so as to match an on state of the second electronic device.
Kim teaches upon the activation of the automatic power on circuit, the first electronic device is controlled to turn on so as to match an on state of the second electronic device (See [0015], [0025], and [0068] teaches matching the power modes of the two devices).
One of ordinary skill in the art at the time the invention was filed would have been motivated to modify Diecke’s system to include Kim’s power signaling for user convenience. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Regarding claim 25, Diecke does not teach that when the first electronic device is in an on/off state that matches the on/off state of the second electronic device prior to activation of the automatic power on circuit, the first electronic device is controlled to remain in a same on/off state after activation of the automatic power on circuit.
Kim teaches the first electronic device is in an on/off state that matches the on/off state of the second electronic device prior to activation of the automatic power on circuit, the first electronic device is controlled to remain in a same on/off state after activation of the automatic power on circuit (See [0015], [0025], and [0068] teaches matching the power modes of the two devices. If both devices are in the off state, then they will remain off.).
Regarding claim 26, Diecke teaches automatic activation of the power circuit (See [0355]) but does not teach the second electronic device is controlled to turn on so as to match an on state of the first electronic device.
Kim teaches the second electronic device is controlled to turn on so as to match an on state of the first electronic device (See [0015], [0025], and [0068] teaches matching the power modes of the two devices.).
Regarding claim 27, Diecke does not teach that when the second electronic device is in an on/off state that matches the on/off state of the first electronic device prior to activation of the automatic power on circuit, the second electronic device is controlled to remain in a same on/off state after activation of the automatic power on circuit.
Kim teaches when the second electronic device is in an on/off state that matches the on/off state of the first electronic device prior to activation of the automatic power on circuit, the second electronic device is controlled to remain in a same on/off state after activation of the automatic power on circuit (See [0015], [0025], and [0068] teaches matching the power modes of the two devices. If both devices are in the off state, then they will remain off.).
Regarding claim 31, [0143] of Dieck teaches a mounting area but does not specify a location. Fig. 2 of Schuster shows the monitor and carrier attached using a back surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS S MCCORMACK whose telephone number is (571)272-0841. The examiner can normally be reached Monday - Friday 8:30 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Zimmerman can be reached at (571) 272-3059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS S MCCORMACK/Primary Examiner, Art Unit 2686