DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
General Information Matter
Please note, the instant Non-Provisional application (19/187,003) under prosecution at the United States Patent and Trademark Office (USPTO) has been assigned to David Zarka (Examiner) in Art Unit 2449. To aid in correlating any papers for 19/187,003, all further correspondence regarding the instant application should be directed to the Examiner.
Joint Inventors
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicants are advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential § 102(a)(2) prior art against the later invention.
Information Disclosure Statement (IDS)
The IDS filed April 23, 2025 complies with the provisions of 37 C.F.R. §§ 1.97, 1.98 and MPEP § 609. The IDS has been placed in the application file, and the information referred to therein has been considered.
Specification
The following is a quotation of 37 C.F.R. § 1.75(d)(1):
The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.
The Specification is objected to under § 1.75(d)(1) for failing to provide proper antecedent basis for the term “wireless digital audio distribution module” as recited in claim 1, lines 3–4 and claim 2, line 3. See MPEP § 608.01(o).
Nonstatutory Double Patenting1
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).2
A timely filed terminal disclaimer in compliance with 37 C.F.R. § 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 C.F.R. § 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
The ‘343 Patent, Summit Wireless, and PremierWave
Claims 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Madonna et al. (US 11,863,343 B2; filed Feb. 13, 2020; the ‘343 Patent) in view of
Summit Wireless Announces Global Collaboration with LG Electronics; Delivers Immersive, Wireless Sound Experiences For Home Entertainment Via LG’s 2019 Line-Up of OLED and Flagship UHD/LCD WiSA Ready TVs, Datavaultai, pp. 1–5 (Dec. 11, 2018)(“Summit Wireless”),
and in further view of
PremierWave® 2050, Lantronix, pp. 1–2 (2016)(“PremierWave”).
Regarding claims 1 and 3 of the instant App., although the conflicting claims are not identical, they are not patentably distinct from each other because:
Instant Application
the ‘343 Patent
Claim 1: An apparatus comprising:
a multi-role audio speaker which includes a multi-role automation host, a WiFi dual band module capable of serving as a wireless access point, and a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker,
said multi-role automation host having connectivity for communicating with a first user device, said first user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive;
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first multi-role automation hub, operating in a third role, a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said first multi-role automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one or more profiled devices become visible to and controllable by said first multi-role automation hub.
Claim 1: An automation control apparatus, said apparatus comprising:
a multi-role automation host,
said multi-role automation host having connectivity for communicating with a first user device, said at least one user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive; and
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first automation hub a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one of more profiled devices become visible to and controllable by said automation hub.
Claim 3. An apparatus comprising:
a multi-role audio speaker which includes a multi-role automation host, and a WiFi dual band module capable of serving as a wireless access point,
said multi-role automation host having connectivity for communicating with a first user device, said first user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive;
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first multi-role automation hub, operating in a third role, a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said first multi-role automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one or more profiled devices become visible to and controllable by said first multi-role automation hub.
Claim 1: An automation control apparatus, said apparatus comprising:
a multi-role automation host,
said multi-role automation host having connectivity for communicating with a first user device, said at least one user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive; and
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first automation hub a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one of more profiled devices become visible to and controllable by said automation hub.
Regarding claim 1 of the instant application, claim 1 of the ‘343 Patent does not teach (A) the automation control apparatus being a multi-role audio speaker; (B) the multi-role audio speaker including a WiFi dual band module capable of serving as a wireless access point; and (C) the multi-role audio speaker including a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker.
Summit Wireless teaches a multi-role audio speaker (“OLED and flagship UHD LCD TVs” at p. 2 that possess their own speakers, are compatible with WISA certified speakers, and are compatible with USB Transmitters at p. 2) including a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker (“compatible with WiSA USB Transmitters as well as a range of intelligent, WiSA Certified™ speakers” at p. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the automation control apparatus of the ‘343 Patent’s claim 1 to be a multi-role audio speaker including a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker as taught by Summit Wireless to “deliver unprecedented wireless sound for the home entertainment experience.” Summit Wireless 2.
PremierWave teaches a WiFi dual band module (“Lantronix® PremierWave® 2050 solution is a line of embedded modules” at p. 1) capable of serving as a wireless access point (“Soft Access Point with DHCP Server, DNS Proxy” at p. 2, subsection “Wireless Features”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the automation control apparatus of the ‘343 Patent’s claim 1 to include a WiFi dual band module capable of serving as a wireless access point as taught by PremierWave “for delivering reliable wireless connectivity for a wide range of industrial and commercial applications.” PremierWave 1.
Regarding claim 3 of the instant application, claim 1 of the ‘343 Patent does not teach (A) the automation control apparatus being a multi-role audio speaker; (B) the multi-role audio speaker including a WiFi dual band module capable of serving as a wireless access point.
Summit Wireless teaches a multi-role audio speaker (“OLED and flagship UHD LCD TVs” at p. 2 that possess their own speakers, are compatible with WISA certified speakers, and are compatible with USB Transmitters at p. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the automation control apparatus of the ‘343 Patent’s claim 1 to be a multi-role audio speaker as taught by Summit Wireless to “deliver unprecedented wireless sound for the home entertainment experience.” Summit Wireless 2.
PremierWave teaches a WiFi dual band module (“Lantronix® PremierWave® 2050 solution is a line of embedded modules” at p. 1) capable of serving as a wireless access point (“Soft Access Point with DHCP Server, DNS Proxy” at p. 2, subsection “Wireless Features”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the automation control apparatus of the ‘343 Patent’s claim 1 to include a WiFi dual band module capable of serving as a wireless access point as taught by PremierWave “for delivering reliable wireless connectivity for a wide range of industrial and commercial applications.” PremierWave 1.
The ‘343 Patent and Summit Wireless
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of the ‘343 Patent in view of Summit Wireless.
Regarding claim 2 of the instant App., although the conflicting claims are not identical, they are not patentably distinct from each other because:
Claim 2. An apparatus comprising:
a multi-role audio speaker which includes a multi-role automation host, and a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker,
said multi-role automation host having connectivity for communicating with a first user device, said first user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive;
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first multi-role automation hub, operating in a third role, a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said first multi-role automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one or more profiled devices become visible to and controllable by said first multi-role automation hub.
Claim 1: An automation control apparatus, said apparatus comprising:
a multi-role automation host,
said multi-role automation host having connectivity for communicating with a first user device, said at least one user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive; and
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first automation hub a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one of more profiled devices become visible to and controllable by said automation hub.
Regarding claim 2 of the instant application, claim 1 of the ‘343 Patent does not teach (A) the automation control apparatus being a multi-role audio speaker; (B) the multi-role audio speaker including a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker.
Summit Wireless teaches a multi-role audio speaker (“OLED and flagship UHD LCD TVs” at p. 2 that possess their own speakers, are compatible with WISA certified speakers, and are compatible with USB Transmitters at p. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the automation control apparatus of the ‘343 Patent’s claim 1 to be a multi-role audio speaker as taught by Summit Wireless to “deliver unprecedented wireless sound for the home entertainment experience.” Summit Wireless 2.
The 473 Patent, Summit Wireless, and PremierWave
Claims 1 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Madonna et al. (US 12,316,473 B2; filed Nov. 20, 2023; the ‘473 Patent) in view of Summit Wireless, and in further view of PremierWave.
Regarding claims 1 and 3 of the instant App., although the conflicting claims are not identical, they are not patentably distinct from each other because:
Instant Application
the ‘473 Patent
Claim 1: An apparatus comprising:
a multi-role audio speaker which includes a multi-role automation host, a WiFi dual band module capable of serving as a wireless access point, and a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker,
said multi-role automation host having connectivity for communicating with a first user device, said first user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive;
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first multi-role automation hub, operating in a third role, a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said first multi-role automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one or more profiled devices become visible to and controllable by said first multi-role automation hub.
Claim 1. An automation control apparatus, said apparatus comprising:
a multi-role automation host,
said multi-role automation host having connectivity for communicating with a first user device, said first user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive;
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first multi-role automation hub, operating in a third role, a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said first multi-role automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one or more profiled devices become visible to and controllable by said first multi-role automation hub; and
said first multi-role automation hub, operating in a fourth role, producing an on screen display (OSD) displayed on a first television coupled to said first multi-role automation hub, said OSD enabling a user to select one or more predetermined lighting scenes, select one or more television channels, and control said one or more profiled devices, and said first and second sets of one or more devices each of which is certified compliant with said predetermined control protocol.
Claim 3. An apparatus comprising:
a multi-role audio speaker which includes a multi-role automation host, and a WiFi dual band module capable of serving as a wireless access point,
said multi-role automation host having connectivity for communicating with a first user device, said first user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive;
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first multi-role automation hub, operating in a third role, a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said first multi-role automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one or more profiled devices become visible to and controllable by said first multi-role automation hub.
Claim 1. An automation control apparatus, said apparatus comprising:
a multi-role automation host,
said multi-role automation host having connectivity for communicating with a first user device, said first user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive;
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first multi-role automation hub, operating in a third role, a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said first multi-role automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one or more profiled devices become visible to and controllable by said first multi-role automation hub; and
said first multi-role automation hub, operating in a fourth role, producing an on screen display (OSD) displayed on a first television coupled to said first multi-role automation hub, said OSD enabling a user to select one or more predetermined lighting scenes, select one or more television channels, and control said one or more profiled devices, and said first and second sets of one or more devices each of which is certified compliant with said predetermined control protocol.
Regarding claim 1 of the instant application, claim 1 of the ‘473 Patent does not teach (A) the automation control apparatus being a multi-role audio speaker; (B) the multi-role audio speaker including a WiFi dual band module capable of serving as a wireless access point; and (C) the multi-role audio speaker including a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker.
Summit Wireless teaches a multi-role audio speaker (“OLED and flagship UHD LCD TVs” at p. 2 that possess their own speakers, are compatible with WISA certified speakers, and are compatible with USB Transmitters at p. 2) including a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker (“compatible with WiSA USB Transmitters as well as a range of intelligent, WiSA Certified™ speakers” at p. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the automation control apparatus of the ‘473 Patent’s claim 1 to be a multi-role audio speaker including a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker as taught by Summit Wireless to “deliver unprecedented wireless sound for the home entertainment experience.” Summit Wireless 2.
PremierWave teaches a WiFi dual band module (“Lantronix® PremierWave® 2050 solution is a line of embedded modules” at p. 1) capable of serving as a wireless access point (“Soft Access Point with DHCP Server, DNS Proxy” at p. 2, subsection “Wireless Features”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the automation control apparatus of the ‘473 Patent’s claim 1 to include a WiFi dual band module capable of serving as a wireless access point as taught by PremierWave “for delivering reliable wireless connectivity for a wide range of industrial and commercial applications.” PremierWave 1.
Regarding claim 3 of the instant application, claim 1 of the ‘473 Patent does not teach (A) the automation control apparatus being a multi-role audio speaker; (B) the multi-role audio speaker including a WiFi dual band module capable of serving as a wireless access point.
Summit Wireless teaches a multi-role audio speaker (“OLED and flagship UHD LCD TVs” at p. 2 that possess their own speakers, are compatible with WISA certified speakers, and are compatible with USB Transmitters at p. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the automation control apparatus of the ‘343 Patent’s claim 1 to be a multi-role audio speaker as taught by Summit Wireless to “deliver unprecedented wireless sound for the home entertainment experience.” Summit Wireless 2.
PremierWave teaches a WiFi dual band module (“Lantronix® PremierWave® 2050 solution is a line of embedded modules” at p. 1) capable of serving as a wireless access point (“Soft Access Point with DHCP Server, DNS Proxy” at p. 2, subsection “Wireless Features”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the automation control apparatus of the ‘473 Patent’s claim 1 to include a WiFi dual band module capable of serving as a wireless access point as taught by PremierWave “for delivering reliable wireless connectivity for a wide range of industrial and commercial applications.” PremierWave 1.
The ‘473 Patent and Summit Wireless
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of the ‘473 Patent in view of Summit Wireless.
Regarding claim 2 of the instant App., although the conflicting claims are not identical, they are not patentably distinct from each other because:
Claim 2. An apparatus comprising:
a multi-role audio speaker which includes a multi-role automation host, and a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker,
said multi-role automation host having connectivity for communicating with a first user device, said first user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive;
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first multi-role automation hub, operating in a third role, a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said first multi-role automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one or more profiled devices become visible to and controllable by said first multi-role automation hub.
Claim 1. An automation control apparatus, said apparatus comprising:
a multi-role automation host,
said multi-role automation host having connectivity for communicating with a first user device, said first user device having a set of user commands to which said multi-role automation host is responsive;
said multi-role automation host operating in a first role in which said multi-role automation host directly controls one or more profiled devices, each of said one or more profiled devices having an associated profile which is accessible by said multi-role automation host, each said associated profile including information which describes a set of device commands to which the associated profiled device is responsive;
said multi-role automation host operating in a second role in which said multi-role automation host directly controls a first set of one or more devices each of which is certified compliant with a predetermined control protocol, and indirectly controls through a first multi-role automation hub, operating in a third role, a second set of one or more devices each of which is certified compliant with said predetermined control protocol,
wherein said multi-role automation host includes an automation bridge communicating with said first multi-role automation hub using messages in a first form based on said predetermined control protocol, and converting said first form to a second form for processing by said multi-role automation host, wherein said one or more profiled devices become visible to and controllable by said first multi-role automation hub; and
said first multi-role automation hub, operating in a fourth role, producing an on screen display (OSD) displayed on a first television coupled to said first multi-role automation hub, said OSD enabling a user to select one or more predetermined lighting scenes, select one or more television channels, and control said one or more profiled devices, and said first and second sets of one or more devices each of which is certified compliant with said predetermined control protocol.
Regarding claim 2 of the instant application, claim 1 of the ‘473 Patent does not teach (A) the automation control apparatus being a multi-role audio speaker; (B) the multi-role audio speaker including a wireless digital audio distribution module capable of pairing with a WISA wireless audio speaker.
Summit Wireless teaches a multi-role audio speaker (“OLED and flagship UHD LCD TVs” at p. 2 that possess their own speakers, are compatible with WISA certified speakers, and are compatible with USB Transmitters at p. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the automation control apparatus of the ‘473 Patent’s claim 1 to be a multi-role audio speaker as taught by Summit Wireless to “deliver unprecedented wireless sound for the home entertainment experience.” Summit Wireless 2.
Claim Rejections – 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b): “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.”
Claims 1 and 2 are rejected under § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The MPEP recites:
If the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. 112(b) . . . . Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). See also Eli Lilly & Co. v. Apotex, Inc., 837 Fed. Appx. 780, 784-85, 2020 USPQ2d 11531 (Fed. Cir. 2020). . . . The claim scope is uncertain since the trademark or trade name cannot be used properly to describe any particular material or product. In fact, the value of a trademark would be lost to the extent that it became the generic name of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name. If the applicant responds to such a rejection by replacing the trademark or trade name with a generic term, the examiner should determine whether there is sufficient support in the application for use of a generic term.
MPEP 2173.05(u); see also MPEP § 608.01(v) and 15 U.S.C. § 1127.
Claim 1, line 4 introduces the trademark WISA. The trademark WISA is used in claim 1 as a limitation to identify or describe a particular material or product, and thus claim 1 is rejected under 35 U.S.C. § 112(b).
Claim 2 by analogy for reciting the trademark WISA.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure: US-20180034919-A1; US-20190155565-A1; US-11863343-B2; US-12316473-B2; Cliff-Heyne, WiSA Compliance Test Specifications Released, Audioholics, pp. 1–3 (Sept. 2012); Gene-Dellasala, WiSA Releases Industry’s First Compliance Test Specification for Interoperability Between Wireless Speakers &Electronics, Audioholics, pp. 1–3 (Aug. 2012); and WISA, Trademark Search, pp. 1–5 (May 2024).
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449
1 The Examiner will determine whether Applicants’ reply to the nonstatutory double patenting rejection is compliant under 37 C.F.R. § 1.111(b). See MPEP § 804(I)(B)(1) (reciting
[a] complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
). In the event the reply is non-compliant under 37 C.F.R. § 1.111(b), the Examiner will issue a Notice of Non-Compliant Response.
2 See, e.g., In re Berg, 140 F.3d 1428 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (CCPA 1969).
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