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 .
Response to Arguments
Applicant’s arguments, see pages 5-8 of the response, filed 20 July 2026, with respect to 103 rejection have been fully considered and are persuasive. The 103 rejection of the claims has been withdrawn.
Since the applicant has not filed Terminal Disclaimers yet, the Double Patenting rejections are maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,326,771. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims and the patented claims are merely obvious variations of each other.
Below is a comparison between present claim 1 and patented claim 1:
Present claim 1
Patented claim 1
A temperature control device comprising:
A temperature control device comprising:
a button comprising a translucent body illuminated by one or more light sources located behind the button and a covering over the body, the covering bearing an indicia indicating a function of the device controlled by the button, such that only the indicia is illuminated;
a display illuminated by one or more light sources; and
a display; and
a processor configured to:
a processor configured to:
determine a temperature in a space around the temperature control device; and
determine a temperature in a space around the temperature control device; and
operate the display in an awake state where the display is illuminated;
operate the display in an awake state where the display is illuminated;
wherein the temperature is not determined when in the awake state.
wherein the temperature is not determined when in the awake state.
As shown above, besides wording, the main difference between the claims is that:
(i) Patented claim 1 recites “a button comprising a translucent body illuminated by one or more light sources located behind the button and a covering over the body, the covering bearing an indicia indicating a function of the device controlled by the button, such that only the indicia is illuminated” whereas present claim 1 fails to recite this feature, thus making present claim 1 broader than patented claim 1; and
(ii) Present claim 1 recites “a display illuminated by one or more light sources” whereas patented claim merely recites “a display,” however, since the same invention is being claimed and displays having backlights was well known, it would have been obvious to “one of ordinary skill” in the art to claim that the display in claim 1 of U.S. Patent No. 12,326,771 has one or more light sources [backlight] such that the display can be illuminated as claimed.
Claims 2-20 are similarly rejected as above over claims 1-20 of U.S. Patent No. 12,326,771.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,907,038. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims and the patented claims are merely obvious variations of each other.
Below is a comparison between present claim 1 and patented claim 1:
Present claim 1
Patented claim 1
A temperature control device comprising:
A temperature control device comprising:
a display illuminated by one or more light sources; and
a display; and
a processor configured to:
a processor configured to:
determine a temperature in a space around the temperature control device; and
determine a temperature in a space around the temperature control device; and
operate the display in an awake state where the display is illuminated;
operate the display in an awake state where the display is illuminated;
wherein the temperature is not determined when in the awake state.
wherein the temperature is not determined when in the awake state.
As shown above, besides wording, the main difference between the claims is that present claim 1 recites “a display illuminated by one or more light sources” whereas patented claim merely recites “a display,” however, since the same invention is being claimed and displays having backlights was well known, it would have been obvious to “one of ordinary skill” in the art to claim that the display in claim 1 of U.S. Patent No. 11,907,038 has one or more light sources [backlight] such that the display can be illuminated as claimed.
Claims 2-20 are similarly rejected as above over claims 1-20 of U.S. Patent No. 11,907,038.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,416,749. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are merely broader versions of the patented claims.
Below is a comparison between present claim 1 and patented claim 12:
Present claim 1
Patented claim 12
A temperature control device comprising:
A method for controlling an HVAC system by a control circuit of a temperature control device, the method comprising:
a display illuminated by one or more light sources; and
a processor configured to:
determine a temperature in a space around the temperature control device; and
receiving a temperature control signal indicating a temperature in a space around the temperature control device;
receiving a set point temperature; controlling, in an idle state, an internal electrical load to a first state; sampling, in the idle state, the temperature control signal; determining, in the idle state, a sampled temperature based on the temperature control signal; storing, in the idle state, the sampled temperature in memory;
operate the display in an awake state where the display is illuminated;
controlling, in an awake state, the internal electrical load to a second state, wherein the internal electrical load consumes more power in the second state than in the first state;
wherein the temperature is not determined when in the awake state.
ceasing sampling of the temperature control signal, in the awake state;
retrieving, in the awake state, the sampled temperature stored in the memory during the idle state; comparing the retrieved sampled temperature to the set point temperature; and based on comparing the retrieved sampled temperature to the set point temperature, controlling the HVAC system.
wherein the internal electrical load comprises a display backlight circuit for a visual display, further wherein controlling the internal electrical load to the first state comprises turning the display backlight circuit off during the idle state; and wherein controlling the internal electrical load to the second state comprises turning the display backlight circuit on during the awake state.
As shown above, besides wording [such as processor vs control circuit, not determined vs ceasing sampling, etc.], the main difference between the claims is that patented claim 12 recites “receiving a set point temperature; controlling, in an idle state, an internal electrical load to a first state; sampling, in the idle state, the temperature control signal; determining, in the idle state, a sampled temperature based on the temperature control signal; storing, in the idle state, the sampled temperature in memory” and “retrieving, in the awake state, the sampled temperature stored in the memory during the idle state; comparing the retrieved sampled temperature to the set point temperature; and based on comparing the retrieved sampled temperature to the set point temperature, controlling the HVAC system” and “wherein controlling the internal electrical load to the first state comprises turning the display backlight circuit off during the idle state” whereas present claim 1 fails to recite these features. Thus, present claim 1 is merely a broader version of patented claim 12, and therefore is anticipated by patented claim 12.
Claims 2-20 are similarly rejected as above over claims 1-18 of U.S. Patent No. 10,416,749.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,133,337. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are merely broader versions of the patented claims.
Below is a comparison between present claim 1 and patented claim 13:
Present claim 1
Patented claim 13
A temperature control device comprising:
A temperature control device comprising:
a temperature sensing circuit configured to generate a temperature control signal indicating a temperature in a space around the temperature control device;
a display illuminated by one or more light sources; and
at least one internal electrical load configured to generate heat when energized; and
a processor configured to:
a control circuit configured to:
receive the temperature control signal; control the internal electrical load;
be in an idle state or an awake state; and receive a set point temperature;
wherein, when the control circuit is in the idle state, the control circuit is configured to:
determine a temperature in a space around the temperature control device; and
cause the internal electrical load to consume less power as compared to when the control circuit is in the awake state;
sample the temperature control signal;
determine a sampled temperature based on the temperature control signal; and store the sampled temperature in memory; and
wherein, when the control circuit is in the awake state, the control circuit is configured to:
operate the display in an awake state where the display is illuminated;
energize the internal electrical load;
wherein the temperature is not determined when in the awake state.
cease sampling the temperature control signal;
use the sampled temperature stored in the memory in the idle state as a present temperature; compare the present temperature to the set point temperature; and based on comparing the present temperature to the set point temperature, control an HVAC system
wherein the internal electrical load comprises a display backlight circuit for a visual display, the control circuit configured to turn the display backlight circuit on during the awake state and to turn the display backlight circuit off during the idle state.
As shown above, besides wording [such as processor vs control circuit, not determined vs ceasing sampling, etc.], the main difference between the claims is that patented claim 13 recites “a temperature sensing circuit configured to generate a temperature control signal indicating a temperature in a space around the temperature control device”, “receive the temperature control signal; control the internal electrical load; be in an idle state or an awake state; and receive a set point temperature”, “cause the internal electrical load to consume less power as compared to when the control circuit is in the awake state”, “use the sampled temperature stored in the memory in the idle state as a present temperature; compare the present temperature to the set point temperature; and based on comparing the present temperature to the set point temperature, control an HVAC system” and “turn the display backlight circuit off during the idle state” whereas present claim 1 fails to recite these features. Thus, present claim 1 is merely a broader version of patented claim 13, and therefore is anticipated by patented claim 13.
Claims 2-20 are similarly rejected as above over claims 1-20 of U.S. Patent No. 10,133,337.
Allowable Subject Matter
Claims 1-20 would be allowable if a Terminal Disclaimer is filed or the claims are rewritten or amended to overcome the Double Patenting rejection(s) set forth in this Office action.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN G SHERMAN whose telephone number is (571)272-2941. The examiner can normally be reached Monday - Friday, 8:00am - 4pm ET.
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/STEPHEN G SHERMAN/Primary Examiner, Art Unit 2621
11 August 2026
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