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 . This Office action is based on the communications filed December 10, 2024. Claims 1 – 20 are currently pending and considered below.
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.
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Claims 1 – 3, 9 – 11, and 17 – 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 11,169,771 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because while obvious variations in wording are present claims 17 of US is narrower in scope and therefore anticipate claims 1 – 3, 9 – 11, and 17 – 18 of the instant application.
In regards to claim 1, U.S. Patent No. 11,169,771 B1 discloses a remote control device comprising: a microphone; and a controller coupled to the microphone, the controller configured to: control the microphone to detect audio output by a speaker coupled to a display device in response to receiving a set of instructions from a digital media player coupled to the display device (see, “17. A remote control device comprising: a microphone; and a controller coupled to the microphone, the controller configured to: control the microphone to detect audio output from a
speaker coupled to a display device in response to receiving a set of instructions from a digital media
player coupled to the display device,” claim 17 of U.S. Patent No. 11,169,771 B1); and transmit an affirmative message to the digital media player in response to successfully identifying an attribute associated with the audio output by the speaker, wherein successful identification of the attribute indicates that the display device is operational (see, “transmit an affirmative message to the digital media player, in response to determining that the attribute associated with the audio output from the speaker is within the predetermined threshold,” claim U.S. Patent No. 11,169,771 B1).
In regards to claim 2, U.S. Patent No. 11,169,771 B1 discloses the remote control device of claim 1, wherein the controller is further configured to transmit communication to the digital media player indicating detection of the audio output by the speaker (see, “transmit communication to the digital media player indicating detection of the audio output,” claim 17 of U.S. Patent No. 11,169,771 B1).
In regards to claim 3, U.S. Patent No. 11,169,771 B1 discloses the remote control device of claim 1, wherein to successfully identify the attribute the controller is configured to determine whether the attribute associated with the audio output by the speaker is within a predetermined threshold (see, “determine whether an attribute associated with the audio output from the speaker is within the predetermined threshold based on audio output from the speaker detected by the microphone,” claim 17 of U.S. Patent No. 11,169,771 B1).
Claim 9 – 11 and 17 – 18 are nondistinct from claims 1 – 3 and therefore are rejected for the same reasons.
Claims 4, 8, 12, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over 17 of US 11,169,771 B1 in view of Haughawout et al. (US 2007/0052547 A1), hereinafter Haughawout. While obvious variations in wording are present claim 17 of U.S. Patent No. 11,169,771 B1 are narrower in scope and therefore anticipate claims 4, 8, 12, and 16 of the instant application except for the limitations below and rendered obvious by Haughawout.
In regards to claim 4, U.S. Patent No. 11,169,771 B1 discloses the remote control device of claim 3, but does not disclose wherein the attribute is a volume of the audio output by the speaker. However, Haughawout discloses in regards to a system and method for simplified setup of a universal remote control disclose wherein the attribute includes content of the audio output by the speaker and a volume level of the audio output by the speaker (see at least, "In this regard, common operational functions include functions that are usually widely supported by devices of a common device type (e.g., power 202, digit tuning 204, volume control 208, channel up/down control 206, media transport 210, etc.)," Haughawout [0019]). It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to incorporate the universal remote control the operational functions as disclosed by Haughawout thereby insuring wide support for devices in the invention of U.S. Patent No. 11,169,771 B1.
In regards to claim 8, U.S. Patent No. 11,169,771 B1 discloses the remote control device of claim 1, but does not disclose wherein the attribute includes content of the audio output by the speaker and a volume level of the audio output by the speaker. However, Haughawout discloses in regards to a system and method for simplified setup of a universal remote control disclose wherein the attribute includes content of the audio output by the speaker and a volume level of the audio output by the speaker (see at least, "In this regard, common operational functions include functions that are usually widely supported by devices of a common device type (e.g., power 202, digit tuning 204, volume control 208, channel up/down control 206, media transport 210, etc.)," Haughawout [0019]). It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to incorporate the universal remote control the operational functions as disclosed by Haughawout thereby insuring wide support for devices in the invention of U.S. Patent No. 11,169,771 B1.
Claim 12 and 16 are nondistinct from claims 4 and 8 and therefore are rejected for the same reasons.
Claims 1 – 2, 4, 8 – 10, 12, and 16 – 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11,954,400 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while obvious variations in wording are present claims 17 of US is narrower in scope and therefore anticipate claims 1 – 2, 4, 8 – 10, 12, and 16 – 18 the instant application.
In regards to claim 1, U.S. Patent No. 11,954,400 B2 discloses a remote control device comprising: a microphone; and a controller coupled to the microphone, the controller configured to: control the microphone to detect audio output by a speaker coupled to a display device in response to receiving a set of instructions from a digital media player coupled to the display device (see, “19. A remote control device comprising: a microphone; and a controller coupled to the microphone, the controller configured to: control the microphone to detect audio output by a speaker coupled to a display device in response to receiving a set of instructions from a digital media player coupled to the display device,” claim 19 of U.S. Patent No. 11,954,400 B2); and transmit an affirmative message to the digital media player in response to successfully identifying an attribute associated with the audio output by the speaker, wherein successful identification of the attribute indicates that the display device is operational (see, “transmit an affirmative message to the digital media player, in response to successfully identifying an attribute associated with the audio output by the speaker, wherein successful identification of the attribute indicates that the display device is operational,” claim 19 of U.S. Patent No. 11,954,400 B2).
In regards to claim 2, U.S. Patent No. 11,954,400 B2 discloses the remote control device of claim 1, wherein the controller is further configured to transmit communication to the digital media player indicating detection of the audio output by the speaker (see, “transmit communication to the digital media player indicating detection of the audio output by the speaker,” claim 19 of U.S. Patent No. 11,954,400 B2).
In regards to claim 4, U.S. Patent No. 11,169,771 B1 discloses the remote control device of claim 3, wherein the attribute is a volume of the audio output by the speaker (see, “21. The remote control device of claim 19, wherein the attribute includes content of the audio output by the speaker and a volume level of the audio output by the speaker,” claim 21 of U.S. Patent No. 11,954,400 B2).
In regards to claim 8, U.S. Patent No. 11,169,771 B1 discloses the remote control device of claim 1, wherein the attribute includes content of the audio output by the speaker and a volume level of the audio output by the speaker (see, “21. The remote control device of claim 19, wherein the attribute includes content of the audio output by the speaker and a volume level of the audio output by the speaker,” claim 21 of U.S. Patent No. 11,954,400 B2).
Claim 9 – 10, 12, and 16 – 18 are nondistinct from claims 1 – 2, 4, and 8 and therefore are rejected for the same reasons.
Allowable Subject Matter
Claims 5 – 7, 13 – 15, 19, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/JOSEPH SAUNDERS JR/Primary Examiner, Art Unit 2692
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