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.
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 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 6 of U.S. Patent No. 12166963. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 15 and 6 of US 12166963 including all limitations that anticipated all limitations that recited by the claims 1 and 10 of the instant application.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claims 1, 10, 13-17, and 20 are rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by Bontempi (US 20050073518 A1).
Regarding claim 1: Bontempi teaches a method for determining an operating state of a television, comprising:
receiving, at a meter from a current sensor, a current signal, wherein the current sensor outputs the current signal based on an electric current drawn from a power source by the television, and wherein the current sensor is coupled between the power source and the television (Fig. 1: Current sensor 150 coupled between the Power source 140 and Television 130; Detection Device 120 read on the claimed meter; and also see para [0022]-[0026]);
comparing, at the meter, the current signal to a threshold (para [0027]); and
determining, based on the comparing, the operating state of the television, wherein the operating state of the television is one of: an ON state or an OFF state (para [0027]).
Regarding claims 10 and 15: the method discussed in claim 1 above also supports these corresponding system claims. Also see para [0021].
Regarding claim 13: Bontempi teaches the system of claim 10, wherein the determining, based on the comparing, the operating state of the television comprises determining that the operating state of the television is the OFF state when the current data is less than the threshold (para [0027]).
Regarding claim 14: Bontempi teaches the system of claim 13, wherein the OFF state corresponds to at least one of: in a standby mode, in a sleep mode, or in a powered OFF mode (para [0027] and [0028]).
Regarding claim 16: Bontempi teaches the system of claim 15, wherein the determining, based on the comparing, the operating state of the presentation device comprises determining that the operating state of the presentation device is the OFF state when the current signal is less than the threshold (para [0027]).
Regarding claim 17: Bontempi teaches the system of claim 15, wherein the determining, based on the comparing, the operating state of the presentation device comprises determining that the operating state of the presentation device is the ON state when the current signal is greater than the threshold (para [0027]).
Regarding claim 20: Bontempi teaches the system of claim 15, wherein the current sensor is an alternating current sensor or a current sense transformer, and wherein the presentation device is a television (para [0025]).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 2 and 11 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bontempi (US 20050073518 A1) in view of Official Notice.
Regarding claims 2 and 11: Bontempi teaches the method of claim 1 but does not specify the current signal is a digital current signal. However, it is well-known in the art for applications processed by processors and program instructions, input signals commonly being digital signals (Official Notice).
It would have been obvious to one with ordinary skill in the art at the time of the invention to modify Bontempi in view of Official Notice to have the current signal is a digital current signal. The motivation is to provide proper format data for processing by processors and program instructions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L TON whose telephone number is (571)270-7839. The examiner can normally be reached Monday - Friday 8:00 AM - 6:00 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, Vivian Chin can be reached at (571)272-7848. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L TON/Primary Examiner, Art Unit 2695
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