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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,624,958. Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose an apparatus for hands-free interaction in a vehicle.
Application Claim 1 (9 and 17)
An apparatus comprising:
an interface, related to a vehicle, configured to receive inputs and provide outputs for a user; and
a controller, related to the vehicle and operatively connected with the interface, configured to cause:
initiation of a connectivity function that supports data communications with respect to the inputs and outputs for the user, the connectivity function configured to support mobile phone connectivity, e-mail account connectivity and server connectivity; and
handling of, upon assistance from the connectivity function, the inputs and outputs to allow the user to perform hands-free interaction and seamless access to information with respect to a navigation experience in accordance with at least one user profile that is accessible through at least one among the mobile phone connectivity, the e-mail account connectivity and the server connectivity, depending on information in a user profile,
whereby an aggregate configuration of the interface and the controller provides enhanced hands-free interaction and enhanced seamless access to information in contrast to an apparatus having an absence of the aggregate configuration.
Patent Claim 1 (9 and 17)
An apparatus comprising:
an interface, related to a vehicle, configured to receive inputs and provide outputs for a user; and
a controller, related to the vehicle and operatively connected with the interface, configured to cause:
initiation of a connectivity function that supports data communications with respect to the inputs and outputs for the user, the connectivity function configured to support at least one of mobile phone connectivity, e-mail account connectivity and server connectivity; and
handling of, upon assistance from the connectivity function, the inputs and outputs to allow the user to perform hands-free interaction and access to information with respect to a navigation experience in accordance with at least one user profile that is accessible through at least one among the mobile phone connectivity, the e-mail account connectivity and the server connectivity, depending on information in a user profile,
wherein the controller is further configured to access said at least one user profile.
Although claims are not identical, both patent claim 1 (and corresponding independent claim 9), and applicant claim 1 (and corresponding independent claim 9) disclose an interface and controller for a mobile device and a user profile for hands-free interaction with various communications including connectivity function that supports a mobile phone, email account connectivity and server connectivity. The only difference is the whereby clause that states “an aggregate configuration of the interface and the controller provides enhanced hands-free interaction and enhanced seamless access to information in contrast to an apparatus having an absence of the aggregate configuration.”
It is clear that patent claims would have been obvious over the application since both disclose mobile device interfaces with a vehicle. Although the patent claim is not explicit concerning the “aggregate configuration”, it is clear that patent claim contains both interface and controller features and that together constitutes the aggregate configuration. Patent claim does not use the term “enhanced hands-free” or “enhanced seamless access”, the recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Corresponding applicant claims 2-8, 10-20 are similarly rejected on the ground of nonstatutory obviousness-type double patenting over claims 2-8 and 10-20 of U.S. Patent No. 12,624,958.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “seamless access” and “enhanced hands-free” and “enhanced seamless access” in claims 1 and 9, are relative terms which render the claim indefinite. The term “seamless access” and “enhanced hands-free” and “enhanced seamless access” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Dependent claims 2-8 and 10-16 are similarly rejected based on being dependent on rejected base claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAE LENNY LOUIE whose telephone number is (571)272-5195. The examiner can normally be reached M-F 6AM-3PM.
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/W.L.L/Examiner, Art Unit 3661
/PETER D NOLAN/Supervisory Patent Examiner, Art Unit 3661
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