DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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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1. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,231,991.
Claims 1 and 11 of the instant application are “anticipated” by U.S. Patent No. 12,231,991 claims 1 and 11. For example, the instant application is a broader version therefore is an obvious variant. Claims 1 and 11 of the instant recites all the elements of claims 1 and 11 of U.S. Patent No. 12,231,991 with the exception of “a long-range transceiver configured to send and receive telephone calls”. Nonetheless, the removal of said limitation from claims 1 and 11 of the instant application makes the claims a broader version of U.S. Patent No. 12,231,991. Therefore, since omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same function as before (In re Karlson (CCPA) 136 USPQ 184 (1963). Claims 1 and 11 of the instant application are not patentably distinct from claims 1 and 11 of U.S. Patent No. 12,231,991.
Claims 2-10 of the instant application are covered by claims 2-10 of U.S. Patent No. 12,231,991.
Claims 12-20 of the instant application are covered by claims 12-20 of U.S. Patent No. 12,231,991.
Conclusion
2. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
---(2007/0242729) Quinn et al teaches during the initial secure pairing phase (0032 – GUI is used for device pairing) each device in the pairing negotiation can make use of pre-existing device-specific or device-generated information such as, for example: UWB device ID (e.g., device identifier), random number, secret nonce, vender-supplied information, other device-known or device-generated information. Using this existing device information, the present invention provides an automated technique for establishing the initial pairing secret. In short, the secure pairing is automated by using unique pre-existing information related to the device rather than hard-wired connections between devices and/or keys or PINs that must be manually entered by a user (0020-0025) and it is desirable for these devices to automatically connect and communicate with each other when in range (0030).
---(2007/0226778) Pietruszka teaches generating pairing signals in conjunction with a device address (e.g., device identifier associated with the remote device) (0031, 0036, 0078, 0080). For example, subsequent communications may be implemented without standard authentication or passkey entries by a user or user intervention in general.
---(2010/0121968) Clark teaches using a GUI to pair with household devices using the household device identifier(s) so the in the future automated protocol messages may be exchanged with the household device(s) (figure 3, 0021).
3. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BARRY W TAYLOR whose telephone number is (571)272-7509. The examiner can normally be reached Monday-Thursday: 7-5.
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/BARRY W TAYLOR/Primary Examiner, Art Unit 2646
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