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 .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 05/22/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
3. The drawings were received on 01/14/2025. These drawings are considered by examiner.
Claim Objections
4. Claim 10 is objected to because of the following informalities:
Claim 10, line 5, the phrase “…transmit he short range only when….” is miss spelling.
Appropriate correction is required.
Terminal Disclaimer
5. Examiner suggests the Assignee must submit the Terminal Disclaimer accordingly, in order to process of the application promptly.
Double Patenting
6. 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 1-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,231,985 as further detailed in the table below:
Instant Application
United States Patent No. 12,231,985
Claim 1. A system, comprising:
a personal communication device comprising a first non-transitory memory for storing first processor-executable instructions wherein the first processor-executable instructions, when executed by the personal communication device, cause the personal communication device to determine a present location of the personal communication device, determine that the personal communication device has crossed a predetermined geographic boundary based on the present location of the personal communication device and a location of the predetermined geographic boundary, and
respond to determining that the personal communication device has crossed the predetermined geographic boundary by
transmitting via a short range communication interface a short range message; and
a point-to-point transceiver comprising a second non-transitory memory for storing second processor-executable instructions wherein the second processor-executable instructions, when executed by the point-to-point transceiver, cause the point-to-point transceiver respond to a receipt of the short range message by transmitting a wireless signal directly to a controller for causing one or more predetermined,
automatic actions to occur at a home or a business at which the point-to-point transceiver is located.
Claim 1. A personal communication device for automatically performing one or more home or business-based actions, comprising: a non-transitory memory for storing processor-executable instructions and a predefined geographic boundary; means for determining a location of the personal communication device; a short range communication interface for transmitting short range messages to a point-two-point transceiver in proximity to the personal communication device; and a processor, coupled to the memory, the means for determining a location of the personal communication device and the short range communication interface, for executing the processor-executable instructions that causes the personal communication device to: determine, by the processor via the means for determining a location of the personal communication device, a present location of the personal communication device; determine, by the processor, that the personal communication device has crossed a predetermined geographic boundary based on the present location of the personal communication device and the predetermined geographic boundary; and in response to determining that the personal communication device has crossed the predetermined geographic boundary,
transmit, by the processor via the short range communication interface,
a short range message to the point-to-point transceiver in proximity to the personal communication device,
the short range message causing the point-to-point transceiver to transmit a wireless signal directly to a controller located at the home or a business, for causing the one or more predetermined, automatic actions to occur at the home or business when the controller receives the point-to-point signal.
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claim 9
Claim 9
Claim 10
Claim 10
Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent claims include all the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, " a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claim preclude issuance of generic application claims”).
Claim Rejections - 35 USC § 103
7. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
8. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
9. Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al (US 2021/0065486), hereinafter “Johnson“, in view of Sathya et al (US 2019/0215753), hereinafter “Sathya“.
Regarding claim 1, Johnson teaches a system (fig. 1 a system), comprising:
a personal communication device (fig. 1 teaches a personal communication device 160) comprising a first non-transitory memory for storing first processor-executable instructions wherein the first processor-executable instructions, when executed by the personal communication device (par [0084]), cause the personal communication device to determine a present location of the personal communication device (par [0014]), determine that the personal communication device has crossed a predetermined geographic boundary based on the present location of the personal communication device and a location of the predetermined geographic boundary (pars [0014] [0074]), and respond to determining that the personal communication device has crossed the predetermined geographic boundary by transmitting via a short range communication interface a short range message (pars [0021] [0034-0035]); and
a point-to-point transceiver (fig. 1 teaches a control unit in the home, pars [0021-0022]) comprising a second non-transitory memory for storing second processor-executable instructions wherein the second processor-executable instructions (fig. 1 teaches the second processor), when executed by the point-to-point transceiver (fig. 1 teaches a control unit in the home, pars [0021-0022]), cause the point-to-point transceiver respond to a receipt of the short range message by transmitting a wireless signal directly to a controller for causing one or more predetermined (pars [0041] [0081-0083]), automatic actions to occur at a home or a business at which the point-to-point transceiver is located (pars [0041] [0081-0083]).
Johnson does not explicitly teach transmitting via a short range communication interface a short range message.
Sathya, in the same field of endeavor, teaches transmitting via a short range communication interface a short range message (par [0018]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to one of ordinary skill in the art to provide the above teaching of Johnson to Sathya, in order to provide short-range communication interface in an efficient way such as BLUETOOTH communication, near-field communication (NFC), or infrared (IR) communication or communication with a wireless local area networks (WLANs) (as suggested by Sathya in paragraph [0005]).
Regarding claim 2, the combination of Johnson and Sathya teach the system of claim 1, Johnson further teaches wherein a first action of the one or more predetermined, automatic actions comprises opening a garage door (pars [0021] [0035]).
Regarding claim 3, the combination of Johnson and Sathya teach the system of claim 1, Johnson further teaches wherein a first action of the one or more predetermined, automatic actions comprises illuminating at least one light (pars [0016] [0022]).
Allowable Subject Matter
10. Claims 4-10 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.
As to claim 4, the prior art of record fails to disclose wherein the personal communication device further comprises a wide-area communication interface and wherein the first processor- executable instructions cause the personal communication device to receive from the wide-area communication interface a location of a vehicle and transmit via the short range communication interface the short range message only when the personal communication device has crossed the predefined geographic boundary and the location of the personal communication device and the location of the vehicle are within a predetermined distance from each other as specified in the claim.
As to claim 6, the prior art of record fails to disclose wherein the first processor-executable instructions comprise further instructions that causes the personal communication device to determine from the short range communication interface that the personal communication device is inside the vehicle and transmit via the short range communication interface the short range message only when the personal communication device has crossed the predefined geographic boundary and the personal communication device is inside the vehicle.
As to claim 8, the prior art of record fails to disclose wherein the first processor-executable instructions comprise further instructions that causes the personal communication device to determine a speed of a personal communication device, determine a location of the personal communication device, and transmit the short range message only when the personal communication device has crossed the predefined geographic boundary and the speed of the vehicle is within a predetermined range.
As to claim 10, the prior art of record fails to disclose wherein the first processor-executable instructions comprise further instructions that cause the personal communication device to, prior to transmitting the short range message, display via a user interface of the personal communication device, a query asking a user to confirm that the user wishes the one or more predetermined, automatic actions to occur and transmit the short range only when a response to the query indicates that the user desires the one or more predetermined, automatic actions to occur.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL T VU whose telephone number is (571)272-8131. The examiner can normally be reached on 8:00AM to 6:00PM.
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, Charles Appiah can be reached on (571-272-7904. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL T VU/
Primary Examiner, Art Unit 2641
Prosecution Insights