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 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,169,661 (hereinafter referred to as Patent ‘661). Although the claims at issue are not identical, they are not patentably distinct from each other because claims in the continuation are broader than the ones in patent. In re Van Ornum and Stang, 214 USPQ T61, broad claims in continuation application are rejected as obvious double patenting over previously patented narrow claims. For example, claim 1 of the present invention is functionally similar to claim 1 of Patent ‘661 except that claim 1 of the present invention recites “A module that connects a factory installed microphone of a vehicle to an aftermarket radio by connecting to a computer having access to one or more computer programs on a server, the module comprising” ….”wherein the computer retrieves one of the computer programs on the server based on an identity of the vehicle and a model of the aftermarket radio and installs the retrieved computer program on the module through the third interface allowing the module to:” worded differently but functionally similar to “A module that connects a factory installed microphone of a vehicle to an aftermarket radio by selecting a computer program from a database of computer programs based on an identity of the vehicle and a model of the aftermarket radio, the module comprising:”….”wherein the module executes the computer program allowing the module to:” as recited in claim 1 of Patent ‘661.
Claim 2, rejected against claim 1 of Patent ‘661 for the reasons similar to rejection of claim 1 of the present invention as above, since claim 2 of the present invention merely replaces “computer program” of claim 1 the present invention with “data set”. “Computer program” is one type of “data set” and thus claim 2 the present invention is broader than claim 1 the present invention.
Claim 3, rejected against claim 2 of Patent ‘661.
Claim 4, rejected against claim 3 of Patent ‘661.
Claim 5, rejected against claim 4 of Patent ‘661.
Claim 6, rejected against claim 5 of Patent ‘661.
Claim 7, rejected against claim 7 of Patent ‘661.
Claim 8, rejected against claim 6 of Patent ‘661.
Claim 9, rejected against claim 8 of Patent ‘661.
Claim 10, rejected against claim 9 of Patent ‘661.
Claim 11, rejected against claim 10 of Patent ‘661.
Claim 12, rejected against claim 11 of Patent ‘661.
Claim 13, rejected against claim 12 of Patent ‘661.
Claim 14, of the present invention is functionally similar to claim 13 of Patent ‘661, except that claim 14 of the present invention recites “d. executing a computer program in the module so that the module receives at least one audio signal from the factory installed microphone, converts said at least one audio signal to an output audio signal that is compatible with said aftermarket radio, and transmits said output audio signal to the aftermarket radio, wherein during the method, an installer of the aftermarket radio activates the module by providing an audio instruction via the factory installed microphone” worded differently but functionally similar to “d. executing a computer program in the module so that the module receives at least one audio signal from the factory installed microphone, converts said at least one audio signal to an output audio signal that is compatible with said aftermarket radio, and transmits said output audio signal to the aftermarket radio, wherein during the method, an installer of the aftermarket radio activates the module while speaking into the factory installed microphone” as recited in claim 13 of Patent ‘661.
Claim 15, rejected against claim 14 of Patent ‘661.
Claim 16, rejected against claim 15 of Patent ‘661.
Claim 17, rejected against claim 16 of Patent ‘661.
Claim 18, rejected against claim 17 of Patent ‘661.
Claim 19, of the present invention is functionally similar to claim 18 of Patent ‘661, except that claim 19 of the present invention recites “b. transferring a computer program from said server to said computer wherein said computer program may be selected from a self-executing computer program, a module of a computer program, or a data set for use in a computer program” worded differently but functionally similar to “b. transferring a computer program from said server to said computer” as recited in claim 18 of Patent ‘661.
Claim 20, rejected against claim 19 of Patent ‘661.
Claim 21, rejected against claim 20 of Patent ‘661.
Claim 22, rejected against claim 21 of Patent ‘661.
Claim 23, rejected against claim 22 of Patent ‘661.
Claim 24, rejected against claim 23 of Patent ‘661.
Allowable Subject Matter
Claims 1-24 are objected to as they are rejected under Double Patenting as indicated above.
The following closest prior art are noted that alone or in combination fail to teach the claimed invention as claimed in detail when claims are considered as a whole.
Schmitt (US Patent Application Publication No. 2002/0197954).teaches a module (Fig. 1 item 100) that connects a factory installed microphone (Fig. 1 item 128) to an aftermarket radio (Fig. 1 item 106) by connecting to a computer (Fig. 1 item 118); a first interface (Fig. 1 item 126) facilitating a connection between the module and the microphone; a second interface (Fig. 1 item 102) facilitating a connection between the module and the aftermarket radio; receive at least one audio signal from said microphone (Paragraph 0021 voice signals from microphone to car radio communications logic, 0030 logic implemented as computer program) and the module can transmit said audio signal to said radio (Paragraph 0018 digitized or analog voice signals from car radio communications logic to radio) (Paragraphs 0018-0027, 0029-0030).
Boulais (US Patent Application Publication No. 2013/0139149) teaches a method to remotely flash a module comprising: a. establishing a connection between a computer (Fig. 2 item 203) and a server (Fig. 2 items 205, 207, 208); b. transferring a computer program from said server to said computer (Fig. 1 step 112) wherein said computer program may be selected from a self-executing computer program, a module of a computer program, or a data set for use in a computer program (Paragraphs 0014-0015, 0026-00030); c. establishing a connection between said computer (Fig. 2 item 203) and a module (Fig. 2 item 202); d. transferring said computer program from said computer to said module (Fig. 1 step 160) (Paragraphs 0018-0020, 0024-0025, 0030); e. installing a module in a vehicle (Fig. 1 step 120) (Paragraphs 0020, 0024-0025, 0030); and, h. Executing a computer program in the (Paragraph 0025) (Paragraphs 0005-0007, 0013-0032 for complete details).
Wincek (US Patent Application Publication No. 2021/0291746) teaches a programmable/ configurable aftermarket head unit to adapt to process signals among various components of vehicle (including microphone) (Paragraphs 0004, 0036-0042, 0048-0055, 0057-0060).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEMANT PATEL whose telephone number is (571)272-8620. The examiner can normally be reached M-F 8:00 AM - 4:30 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fan Tsang can be reached at 571-272-7547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
HEMANT PATEL
Primary Examiner
Art Unit 2694
/HEMANT S PATEL/Primary Examiner, Art Unit 2694
Prosecution Insights