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 21-40 of currently pending Application No. 19/006,066 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,190,705. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of Application No. 19/006,066 are obvious variants of the claims of U.S. Patent No. 12,190,705.
Allowable Subject Matter
Claims 21-40 would be allowable if rewritten or amended to overcome the nonstatutory double patenting rejection set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: With respect to claim 21, Perkins (US 2020/0337162 A1) discloses an electronic device (see at least Figure 1, item 100 | Figure 5B, item 500 | [0178]) comprising:
an enclosure (see at least Figure 5B, items 502 and 516 | [0245]);
an audio output system comprising a conductive coil positioned within the enclosure (see at least Figure 5B, item 504 | [0258]);
a communication system configured to receive and transmit wireless signals, the communication system comprising an antenna (see at least Figure 5B, item 508 | [0250]), and;
a processing system positioned within the enclosure and operably coupled to the communication system and the audio output system (see at least Figure 5B, item 510 | [0255] | [0265]), the processing system configured to:
detect a wireless signal communicating a lost status to the electronic device (see at least [0173] | [0175] | [0183]); and
in response to detecting the wireless signal communicating the lost status (see at least [0183]):
transition the electronic device from a first mode to a second mode (see at least [0172-0173] | [0183]); and
after transitioning the electronic device to the second mode (see at least [0173]):
provide an audio signal to the audio output system (see at least [0189]).
While Gruhle (US 2004/0131194 A1) teaches determining, based on an electrical response induced in an antenna, whether the induced electrical response is indicative of the conductive coil moving in response to the audio signal being applied to the conductive coil (see at least [0009] | [0021]), Gruhle’s system does not make this determination (to self-test itself) based on detecting a wireless signal communicating a lost status. For at least this reason, Perkins (US 2020/0337162 A1) and Gruhle (US 2004/0131194 A1) do not disclose and/or fairly suggest the limitations as claimed. Moreover, combining Perkins (US 2020/0337162 A1) and Gruhle (US 2004/0131194 A1) to achieve the claimed limitations can only be done with hindsight.
Independent claims 28 and 35 recite similar limitations and are allowable as outlined above.
Claims 22-27, 29-34 and 36-40 are allowable by virtue of their dependency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN WILSON whose telephone number is 571-270-5884. The examiner can normally be reached Monday-Friday 9:00-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVETTA GOINS can be reached at 571-272-2957. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN WILSON/Primary Examiner, Art Unit 2689
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