DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-28 are rejected under 35 U.S.C. 101 because the disclosed invention is directed to a judicial exception (i.e. law of nature, a natural phenomenon, or an abstract idea) without significantly more. The independent claims 1, 8 and 15 recited the terms “receiving, formatting and sending/transmitting command messages and translating parameters between formats using generic networked components”. The claims do not include additional elements that are sufficient to amount to significantly more than the judiciary exception because the generally cited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation (data manipulation and message routing implement on generic computers).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 8 and 15 recite the terms “associated with”, “based on”, configured to facilitate” and who performs the step “sending … to the second computing device via a gateway” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-28 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-47 of U.S. Patent No. US 12,177,506, and claims 1-42 of 11,700,413. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S Patent No. US 12,177,506 and US 11,700,413 fully encompass, and therefore anticipate the independent claims 1, 8, 15 and 22 accordingly as below:
(A) Application claimed that “sending, via a remote control device that is associated with a second computing device that is at a location that is different from a location of a first computing device, a first command message to the first computing device”.
(B) Patent No. 11,700,413 claimed that “receiving, by a computing device from a wireless device that is associated with a content access device located at a premises at a location different from the computing device”.
It would have been obvious to one skill in the art to recognize that the remote control device that is associated with a second computing device is functionally equivalent to the wireless device, which is associated with a content access device located at a premises, since the remote control device is communicated and associated with the computing device for transmitting and receiving commands and/or content message, wherein the remote control device also can be used of any applications and can be located at any locations such as at office, premises, hospital, school, industry, etc.. So that, the remote control device and/or the wireless device can be accessed and operated by an operator or user.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Uranaka et al discloses the communication system may be configured as follows. A second telephone that is one of the N telephones and different from the first telephone is correlated with a second computer that is one of the M computers and different from the first computer; and the exchange sends out a first circuit state report relating to circuit switching between the first telephone and the second telephone. The communication system further comprises circuit state reporting means for receiving the first circuit state report, and for sending the first computer a second circuit state report formed by adding an address of the second computer to the first circuit state report; and a data communication network for enabling a data communication at least between the first computer and the second computer among the M computers. The first computer starts, when receiving the second circuit state report, a data communication with the second computer via the data communication network by using the address of the second computer that is accommodated in the second circuit state report.
[US 6,421,536]
Katis et al discloses the communication device configured to receive messages containing media over a communication network and to receive locally created messages containing media created using the communication device. The device also includes a time-shifting buffer to store in a time-based format the media contained in both the messages received over the communication network and the locally created messages. [US 8,345,836]
Colvin et al discloses the computer base system having one or more computers is provided. In one embodiment, the system comprises a plurality of trainee client computers. The system can include at least one controlled digital character and a non-trainee digital entity, a plurality of models, and a rendering module for rendering the models on a display. The system is usable in training workforce teams and in a wide variety of additional applications. [US 2007/0238085]
Any inquiry concerning this communication or earlier communications from examiner should be directed to primary examiner craft is Van Trieu whose telephone number is (571) 2722972. The examiner can normally be reached on Mon-Fri from 8:00 AM to 3:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Wang Quan-Zhen can be reached on (571) 272-3114.
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/VAN T TRIEU/
Primary Examiner, Art Unit 2685
03/25/2026