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 21, 34, 40 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14, 20 of U.S. Patent No. 12,293,619. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Claim Objections
Claim 35 objected to because of the following informalities: a period is missing at the end of the claim. Appropriate correction is required.
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.
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. Applicant is advised of the obligation under 37 CFR 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 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 21-23, 28, 31, 34-37, 40-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boate (US 20060290519), and further in view of Weaver (US 20050131578 A1).
Regarding claim 21, 34, 40, Boate discloses a system and method for asset monitoring (wireless monitoring system 100 for tracking the location of objects including equipment within a facility covered by the monitoring system, Abstract, Para. 3, 8-9, 70 and 153), the system comprising:
a base station comprising a processor, a memory, and at least one antenna (via base station 50, Para. 103, 153);
a tag secured to a mobile asset (via RF tag attached to an object, Para. 43-45, 153, 70);
wherein the at least one antenna is structured to communicate with the tag via wireless communication signals (Each tag periodically transmits a `ping` containing the tag ID, over tag RF channels (centered at 303, 433 and 902-928 MHz) in a channel-friendly way. The base-station 50 is provided with at least one frequency-adjustable tag reader coupled to a separate tag antenna for listening to the tag IDs, Para. 70, 153); and
wherein the memory includes a plurality of instructions stored thereon that, in response to execution by the processor, cause the base station to receive communications from the tag via the at least one antenna (Para. 70, 153);
and transmit the determined location of the tag to an interface device (via central unit 70, Para. 74).
Boate fails to disclose wherein a plurality of installation locations are stored in the memory, wherein the plurality of installation locations includes a correct installation location correlated with the mobile asset; and determine whether the mobile asset is positioned at the correct installation location based on the communications received from the tag.
Weaver teaches a monitoring and tracking system including a plurality of installation locations stored in a memory, wherein the plurality of installation locations includes a correct installation location correlated with a mobile asset; and determine whether the mobile asset is positioned at the correct installation location based on the communications received from the tag (the communication unit 24 to receive item specific identification data via wireless or other means directly from a transmitter, such as an RFID tag, associated with each item 14 or container (e.g., pallet or box) of items 14, (v) of two-dimensional surface space to be divided during training by a narrow strip of material attached by an adhesive or other retention means including but not limited to living hinges on each strip that are affixed to the surface space helping maintain an orderly row and column arrangement, (vi) of the central host to support an item inventory map referenced to hanger and surface space so as to correlate and display inventory location to count update and alarm events, (vii) of the central host to associate alarm events to coverage surveillance cameras or other equipment 54 in support of quickly identifying potential shrink/theft and incorrect restocking events, and (viii) of the microcontroller 23 having as input a wireless RF/ID communications unit such that the microcontroller of a hanger and/or shelf could uniquely identify each item on its sensor surface for purposes of an individual stock item tracking and monitoring use, Para. 105-106, 109).
From the teachings of Weaver, it would have been obvious to try to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Boate to include a plurality of installation locations are stored in the memory, wherein the plurality of installation locations includes a correct installation location correlated with the mobile asset; and determine whether the mobile asset is positioned at the correct installation location based on the communications received from the tag in order to detect misplaced items and move the misplaced items to their correct location, thereby prevent loss of misplaced items.
Regarding claim 22, 35, 36, 41, Boate discloses wherein the wireless communication signals have a nominal frequency of 433 MHz (Para. 153).
Regarding claim 23, Boate discloses wherein the wireless communication signals have a nominal frequency of at least one of 433 MHz, 900 MHz or 2.4 GHz (Para. 153).
Regarding claim 37, 28, Boate discloses wherein the wireless communication signal includes an alert message; wherein the plurality of instructions further cause the base station to transmit the alert message to the interface device; and wherein the alert message is indicative that the mobile asset has moved (via motion sensor, Para. 46, 100, 164; via ping to indicate location upon sensing motion, Para. 164, 153).
Regarding claim 31, Boate discloses the plurality of installation locations are associated with a single worksite (objects within a facility, Abstract).
Claim(s) 24, 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boate in view of Weaver, and further in view of Chow (US 20130018438 A1).
Regarding claim 24, Boate fails to disclose wherein the at least one antenna comprises a first antenna and a second antenna; wherein the first antenna is structured to wirelessly and directly communicate with the tag via the wireless communication signals having the nominal frequency of 433 MHz; and wherein the second antenna is structured to wirelessly and directly communicate with the tag via the wireless communication signals having the nominal frequency of 900 MHz.
Chow teaches a communication device can be configured to include more than one antenna and each antenna tuned to operate at a particular frequency or frequency band to improve communications of the communication device (the first antenna 610 and/or the first matching network 612 may be configured or tuned to receive far field radiative signals in a first frequency band that includes a frequency of the first far field radiative signals 604. The second antenna 611 and/or the second matching network 613 may be configured or tuned to receive far field radiative signals in a second frequency band that includes a frequency of the second far field radiative signals 605. For example, the first and second frequency bands may be centered at one of approximately 433 MHz and 900 MHz, respectively, Para. 63).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Boate and Weaver to include wherein the at least one antenna comprises a first antenna and a second antenna; wherein the first antenna is structured to wirelessly and directly communicate with the tag via the wireless communication signals having the nominal frequency of 433 MHz; and wherein the second antenna is structured to wirelessly and directly communicate with the tag via the wireless communication signals having the nominal frequency of 900 MHz in order to improve range of communications via multiple antennas each tuned to a particular frequency.
Regarding claim 25, Chow teaches a communication device can be configured to include more than one antenna and each antenna tuned to operate at a particular frequency or frequency band to improve communications of the communication device (the first antenna 610 and/or the first matching network 612 may be configured or tuned to receive far field radiative signals in a first frequency band that includes a frequency of the first far field radiative signals 604. The second antenna 611 and/or the second matching network 613 may be configured or tuned to receive far field radiative signals in a second frequency band that includes a frequency of the second far field radiative signals 605. For example, the first and second frequency bands may be centered at one of approximately 433 MHz and 900 MHz, respectively, approximately 433 MHz and 2.4 GHz, respectively, Para. 63).
And MPEP 2144.04 section VI states that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Boate and Weaver to include a third antenna is structured to communicate with the tag via the wireless communication signals having the nominal frequency of 2.4 GHz in order to improve range of communications via multiple antennas each tuned to a particular frequency.
Claim(s) 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boate in view of Weaver, and further in view of Proska (US 20070200664 A1).
Regarding claim 26, Boate and Weaver fail to disclose wherein the mobile asset is an access control hardware component; and wherein the plurality of instructions further causes the base station to monitor the location of the access control hardware component from a shipping location to a worksite and receive verification of installation of the access control hardware component at the correct installation location on a particular door at the worksite.
Proska teaches a system to track a location of components from a shipping location to a construction site to improve security (via tracking of containers 18 including trucks with GPS to construction sites, Para. 14, 16).
And Weaver teaches a monitoring and tracking system configured to determine if an object is installed at the correct location (the communication unit 24 to receive item specific identification data via wireless or other means directly from a transmitter, such as an RFID tag, associated with each item 14 or container (e.g., pallet or box) of items 14, (v) of two-dimensional surface space to be divided during training by a narrow strip of material attached by an adhesive or other retention means including but not limited to living hinges on each strip that are affixed to the surface space helping maintain an orderly row and column arrangement, (vi) of the central host to support an item inventory map referenced to hanger and surface space so as to correlate and display inventory location to count update and alarm events, (vii) of the central host to associate alarm events to coverage surveillance cameras or other equipment 54 in support of quickly identifying potential shrink/theft and incorrect restocking events, and (viii) of the microcontroller 23 having as input a wireless RF/ID communications unit such that the microcontroller of a hanger and/or shelf could uniquely identify each item on its sensor surface for purposes of an individual stock item tracking and monitoring use, Para. 109).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Boate and Weaver to include wherein the mobile asset is an access control hardware component; and wherein the plurality of instructions further causes the base station to monitor the location of the access control hardware component from a shipping location to a worksite and receive verification of installation of the access control hardware component at the correct installation location on a particular door at the worksite in order to improve object tracking and ensure proper location of objects installed.
Regarding 27, Boate discloses wherein the access control hardware component comprises an electronic lock (via door lock, Para. 136).
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boate in view of Weaver, and further in view of Donlan (US 2018/0113897).
Regarding claim 29, Boate discloses a server configured to (i) receive the alert message from the base station (central unit 70, Para. 153, 164), but fails to disclose transmit the alert message to an interface device for visualization by a user of the interface device via an application programming interface (API).
Donlan teaches a management system including sending an alert message to an interface device for visualization by a user of the interface device via an application programming interface (Para. 229, 262, 286).
From the teachings of Donlan, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Boate and Weaver to include transmit the alert message to an interface device for visualization by a user of the interface device via an application programming interface (API) in order to make viewing of alerts easier for an operator.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boate in view of Weaver, and further in view of Teicher (US 2017/0069153 A1).
Regarding claim 30, Boate fails to disclose wherein the plurality of instructions further causes the base station to generate an alert message in response to determining that the location of the tag is not consistent with an access attempt at a secure location.
Teicher teaches generating an alert message in response to determining that the location of a tag is not consistent with an access attempt at a secure location (Para. 13, 153-154).
From the teachings of Teicher, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Boate and Weaver to include wherein the plurality of instructions further causes the base station to generate an alert message in response to determining that the location of the long-range tag is not consistent with an access attempt at a secure location in order to prevent access to restricted areas, thereby improve security.
Claim(s) 32, 38, 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boate in view of Weaver, and further in view of Wu (2015/0052029).
Regarding claim 32, 38, 42, Boate and Weaver fail to disclose wherein the correct installation location for the mobile asset is identified from image processing of the plurality of installation locations.
Wu teaches image processing of installation location to identify correct installation location (Para. 48).
From the teachings of Wu, it would have been obvious to try to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Boate and Weaver to include wherein the correct installation location for the mobile asset is identified from image processing of the plurality of installation locations in order to identify misplaced items, thereby allow correction of placement of the items.
Claim(s) 33, 39, 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boate in view of Weaver, and further in view of Clem (US 20180365634 A1).
Regarding claim 33, 39, 43, Boate and Weaver fail to disclose wherein the mobile asset is selected from a plurality of mobile assets based on a predictive machine learning model that identifies the mobile asset to be used at the correct installation location.
Clem teaches using a predictive machine learning model to identify an asset to be at a location (Para. 24).
From the teachings of Clem, it would have been obvious to try to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Boate and Weaver to include wherein the mobile asset is selected from a plurality of mobile assets based on a predictive machine learning model that identifies the mobile asset to be used at the correct installation location in order to improve efficiency of placing the asset at the correct location.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONG HANG JIANG whose telephone number is (571)270-3024. The examiner can normally be reached Monday - Friday 9:30-6 EST.
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/YONG HANG JIANG/ Primary Examiner, Art Unit 2689
