DETAILED ACTION
This action is in response to communications filed 1/30/2025:
Claims 1-10 are pending
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12245009. Although the claims at issue are not identical, they are not patentably distinct from each other. For example:
Regarding claim 1, 12245009 teaches a wireless audio system having a configuration in which each of groups is formed from one or more wireless speakers, and masters are selected for the groups on a one-to-one basis so that one master selected for a group from the one or more wireless speakers belonging to the group reproduces audio data and transmits the reproduced audio data to each of the one or more wireless speakers belonging to the group (claim 1, a wireless audio system having a configuration in which each of groups is formed from one or more wireless speakers, and masters are selected for the groups on a one-to-one basis so that one master selected for a group from the one or more wireless speakers belonging to the group reproduces audio data and transmits the reproduced audio data to each of the one or more wireless speakers belonging to the group),
wherein each of the wireless speakers includes (claim 1, wherein each of the wireless speakers includes):
master search means configured to search for the masters (claim 1, a master search unit configured to search for the masters);
group joining request means configured to transmit, when given group joining operation is received from a user and the each of the wireless speakers does not belong to any of the groups, a group joining request to one of the masters found through a search by the master search means to join one of the groups to which the one of the masters belongs, and to transmit, when the given group joining operation is received from the user and the each of the wireless speakers belongs to one of the groups, a group leaving request to the master of the one of the groups to leave the one of the groups, and transmit a group joining request to one of the masters that is found through the search by the master search means and is other than the master of the one of the groups, to join a group to which the one of the masters belongs (claim 1, a group joining request unit configured to transmit, when given group joining operation is received from a user and the each of the wireless speakers does not belong to any of the groups, a group joining request to one of the masters found through a search by the master search unit to join one of the groups to which the one of the masters belongs, and to transmit, when the given group joining operation is received from the user and the each of the wireless speakers belongs to one of the groups, a group leaving request to the master of the one of the groups to leave the one of the groups, and transmit a group joining request to one of the masters that is found through the search by the master search unit and is other than the master of the one of the groups, to join a group to which the one of the masters belongs);
group joining means configured to add, when the each of the wireless speakers is set as the master and a group joining request is received from another of the wireless speakers, the wireless speaker that is a sender of the group joining request to a group of the each of the wireless speakers (claim 1, a group joining request unit configured to add, when the each of the wireless speakers is set as the master and a group joining request is received from another of the wireless speakers, the wireless speaker that is a sender of the group joining request to a group of the each of the wireless speakers);
group leaving means configured to remove, when the each of the wireless speakers is set as the master and a group leaving request is received from one of the other wireless speakers belonging to the group of the each of the wireless speakers, the wireless speaker that is a sender of the group leaving request from the group of the each of the wireless speakers (claim 1, the group joining request unit configured to transmit a group leaving request to remove, when the each of the wireless speakers is set as the master and a group leaving request is received from one of the other wireless speakers belonging to the group of the each of the wireless speakers, the wireless speaker that is a sender of the group leaving request from the group of the each of the wireless speakers); and
audio transmission control means configured to transmit, when the each of the wireless speakers is set as the master and one of the other wireless speakers is added to the group of the each of the wireless speakers by the group joining means during reproduction of audio data, the reproduced audio data to the added wireless speaker, and to stop, when the each of the wireless speakers is set as the master and one of the other wireless speakers is removed from the group of the each of the wireless speakers by the group leaving means, transmission of the reproduced data to the removed wireless speaker (claim 1, an audio transmission control unit configured to transmit, when the each of the wireless speakers is set as the master and one of the other wireless speakers is added to the group of the each of the wireless speakers by the group joining unit during reproduction of audio data, the reproduced audio data to the added wireless speaker, and to stop, when the each of the wireless speakers is set as the master and one of the other wireless speakers is removed from the group of the each of the wireless speakers by the group leaving request, transmission of the reproduced data to the removed wireless speaker).
The remaining independent and/or dependent claims can similarly be rejected using one or more claims of the patent (whether alone or in combination).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “master search means”, “group joining request means”, “group joining means”, “group leaving means”, and “audio transmission control means” in claim 1 (and similarly recited elements in claims 9-10).
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Allowable Subject Matter
Claims 1-10 are allowable upon overcoming the above rejection(s).
The following is an examiner’s statement of reasons for allowance: regarding claims 1 and 9-10, the prior art or combination thereof fails to disclose and make obvious the invention as a whole.
With reference to the parent application (17625236) and Millington (US20120117200) and Millington (M2) (US20210185101), the prior art fails to explicitly teach a “master search unit” as claimed.
The respective dependent claims are also allowable as they depend upon an allowable parent claim.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to PTO-892, Notice of References Cited for a listing of analogous art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QIN ZHU whose telephone number is (571)270-1304. The examiner can normally be reached on Mon-Fri: 7:30AM-5:00PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duc Nguyen can be reached on (571)272-7503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QIN ZHU/Primary Examiner, Art Unit 2691
