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 .
Claims 1 and 2 are presented for examination.
Priority
The Applicants’ claim for priority based on U.S. Provisional Application 63/087,327 filed on October 5, 2020 is duly noted by the examiner.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,599,146 in view of Greiner et al. [U.S. Patent Publication 2019/0311335]
With regard to claim 1, U.S. Patent 11,599,146 meets all of the limitations except access the cloud backend via the portal. In the field of content management, Greiner et al. teaches:
access the cloud backend via the portal [a client device used for communicating with one or more servers and/or databases via a wired or wireless network (paragraph 0054) to an application store where the client device can connect to an application on a server through the application store (figure 1 and paragraph 0028)]
It would be obvious to one with ordinary skill in the art to combine the elements of U.S. Patent No. 11,599,146 and Greiner et al. before the effective filing date to create a system where the wearable device is able to read an RFID tag and connect to a portal based upon the information stored in the RFID device to access an application for use wherein the motivation to combine is to create a system for application store resource management (Greiner et al., paragraph 0002).
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,599,146 in view of Lim et al. [U.S. Patent Publication 2018/0167549]
With regard to claim 2, U.S. Patent 11,599,146 meets all of the limitations except the object comprises a radio frequency identification (RFID) passive tag and the wearable device comprises an active RFID reader. In the field of wearable electronic devices, Lim et al. teaches:
the object comprises a radio frequency identification (RFID) passive tag and the wearable device comprises an active RFID reader [an earpiece having an RFID tag that can be read by a worn RFID reader to capture the data on the RFID tag in the earpiece (figure 2, item 100 and figure 23, item E as well as paragraph 0142)]
It would be obvious to one with ordinary skill in the art to combine the elements of U.S. Patent 11,599,146 and Lim et al. to create a system where a worn RFID reader is able to read an object having an RFID tag in order to capture the data on the RFID tag wherein the motivation to combine is to actuate the device using the interface of a wearable device (Lim et al., paragraph 0001).
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 do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “wearable device configured to” in claim 1. Support for this is found in figure 9, item 104 and paragraph 0102 where a wearable device has speakers and is worn by a user.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. [U.S. Patent Publication 2018/0167549] in view of in view of Greiner et al. [U.S. Patent Publication 2019/0311335]
With regard to claim 1, Lim et al. meets the limitation of:
a wearable device configured to be worn by a user and an object [an earpiece having an RFID tag that can be read by a worn RFID reader to capture the data on the RFID tag in the earpiece (figure 2, item 100 and figure 23, item E as well as paragraph 0142)]
the wearable device configured to access [an earpiece having an RFID tag that can be read by a worn RFID reader to capture the data on the RFID tag in the earpiece (figure 2, item 100 and figure 23, item E as well as paragraph 0142)]
However, Lim et al. fails to disclose of a cloud backend, a cloud web portal, and access the cloud backend via the portal. In the field of content management, Greiner et al. teaches:
a cloud backend, a cloud web portal, and access the cloud backend via the portal [a client device used for communicating with one or more servers and/or databases via a wired or wireless network (paragraph 0054) to an application store where the client device can connect to an application on a server through the application store (figure 1 and paragraph 0028)]
It would be obvious to one with ordinary skill in the art before the effective filing date to combine the elements of Lim et al. and Greiner et al. before the effective filing date to create a system where the wearable device is able to read an RFID tag and connect to a portal based upon the information stored in the RFID device to access an application for use wherein the motivation to combine is to create a system for application store resource management (Greiner et al., paragraph 0002).
With regard to claim 2, Lim et al. meets the limitations of:
the object comprises a radio frequency identification (RFID) passive tag and the wearable device comprises an active RFID reader [an earpiece having an RFID tag that can be read by a worn RFID reader to capture the data on the RFID tag in the earpiece (figure 2, item 100 and figure 23, item E as well as paragraph 0142)]
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent 5,260,711 to Sterzer discloses a difference-in-time-of-arrival finders and signal sorter.
U.S. Patent Publication 2019/0182371 to Ashall et al. discloses a smartphone accessory for visually impaired or elderly users.
U.S. Patent 8,160,495 to Khedouri et al. discloses a wireless portable device for sharing digital content items.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMESHANAND MAHASE whose telephone number is (571) 270-7223. The examiner can normally be reached on Monday- Friday 8:00AM - 5:00PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Feild can be reached on 571-272-4090. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PAMESHANAND MAHASE/Examiner, Art Unit 2689
/TRAVIS R HUNNINGS/Primary Examiner, Art Unit 2689
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