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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 10, 17, 18, 25, and 26 of U.S. Patent No. 12,270,251. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application recite substantially equivalent limitations as the claims of the reference patent, or the instant claims are otherwise anticipated by the reference claims. For example, the recitation of “assign each sensor included in the plurality of sensors to one of a plurality of ambient light ranges based on the ambient light level at the respective sensor” in claim 1 and the corresponding limitations in claims 7 and 13 of the instant application are substantially equivalent to the limitations “dynamically form a plurality of daylight sensor subgroups” and “dynamically form a plurality of daylight sensor subgroups” in claim 9 and the corresponding limitations in claims 17 and 25 of the reference patent. Claims 1-18 are further rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,753,147 and over claims 1-47 of U.S. Patent No. 9,752,383. In the case of reference patent 9,752,383: although the reference claims do not explicitly recite a method or a non-transitory storage device including instructions, the corresponding claims of the instant application are nonetheless obvious over the configurations set forth in the system claims of the reference patent.
Claim Objections
Claims 2-6 are objected to because of the following informalities:
Claims 2-6 each recite “wherein the controller circuitry further to” or a similar limitation. These limitations should be amended to recite --wherein the controller circuitry is further configured to-- or similar, to ensure appropriate consistency and clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 7-10, and 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berman (U.S. Patent No. 7,977,904).
Regarding claims 1, 7, and 13, Berman discloses a system controller (100), a method to control a plurality of motorized window treatments (the steps of the method are disclosed in the corresponding sections of the disclosure set forth below), and a non-transitory, machine-readable storage device that includes instructions (column 26, lines 27-42), the system controller/method/instructions comprising:
communication interface circuitry (column 4, lines 32-53; the ADI 105 is configured to communicate with at least the controller 100 and the sensors 125); and
controller circuitry (110) communicatively coupled to the communication interface circuitry, the controller circuitry to:
receive, from each of a plurality of sensors (125) via the communication interface circuitry, a signal indicative of an ambient light level at the respective sensor (column 18, lines 36-45), each of the plurality of sensors associated with at least one of a plurality of motorized window treatments (column 4, line 54-column 5, line 7 and column 5, line 62-column 6, line 29 discloses categorization of zones including specified window treatments and associated sensors);
assign each sensor included in the plurality of sensors to one of a plurality of ambient light ranges based on the ambient light level at the respective sensor (column 18, line 53-column 19, line 2 discloses at least two ranges: in-range and out-of-range; column 23, line 59-column 24, line 24 further discloses at least two ranges: above threshold and below threshold);
associate each of the plurality of ambient light ranges with a respective target window treatment position (column 23, line 59-column 24, line 24); and
for each of the sensors included in each of the plurality of ambient light ranges, determine a target motorized window treatment position for the at least one motorized window treatment associated with the respective sensor, the target motorized window treatment position based on the assigned ambient light level range of the respective sensor (column 23, lines 42-58).
Regarding claims 2, 8, and 14, Berman discloses that the controller circuitry is further configured to: cause a communication of an instruction to each of the plurality of motorized window treatments via the communication interface circuitry, the instruction to cause the respective motorized window treatment to travel to the determined target motorized window treatment position (column 19, lines 3-23; column 23, lines 42-58).
Regarding claims 3, 9, and 15, Berman discloses that the controller circuitry is further configured to: determine each of the plurality of ambient light ranges based on a distribution of the measured ambient light level in the signals received from the plurality of sensors (column 18, line 53-column 19, line 2; column 20, line 66-column 21, line 40; the controller 100 is operable responsive to an average of a plurality of sensors, including identification of sensors having an in-range value, which defines a distribution of measured light levels).
Regarding claims 4, 10, and 16, Berman discloses that to receive from each of the plurality of sensors the signal indicative of the ambient light level at the respective sensor, the controller circuitry is further configured to: receive, at intervals, from each of the plurality of sensors the signal indicative of the ambient light level at the respective sensor (as shown in Figure 4, sensor readings are plotted along time intervals over the course of the day; column 18, lines 6-35 further discloses measurements of solar radiation values over time, and user-defined time intervals).
Allowable Subject Matter
Claims 5, 6, 11, 12, 17, and 18 would be allowable if rewritten to include all of the limitations of the base claim and any intervening claims, and upon filing of a Terminal Disclaimer to overcome the rejection under double patenting set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABE L MASSAD whose telephone number is (571)272-6292. The examiner can normally be reached M-F 7:30-4:00.
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/ABE MASSAD/Primary Examiner, Art Unit 3634
