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 .
DETAILED ACTION
This action is in response to application filed 06/01/2025.
Claims 1-16 are pending in this application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/01/2025, 03/17/2026 has been placed in record and considered 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.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,353,871 B2 (‘871 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations of each other as detailed below by the examiner.
Regarding claim 1 of current application, patent claim 1 recites an electronic device having a communication circuit and processor configured to receive an update file from a first external electronic device for updating a second external electronic device comprising a case for seating the electronic device. The electronic device determines whether the second external electronic device requires updating and transmits the update file to the second external electronic device in which the electronic device is seated and electrically connected, when a condition based on battery residual amounts is satisfied.
Claim 1 differs from patent claim 1 mainly in reciting the electronic device as a wearable device; the communication connection as wireless; the second external electronic device as an external charging device having a seating space and cover; the wearable device including a battery; charging circuitry electrically connected to the battery and configured to receive charging power for the battery from the external charging device; receive update data corresponding to a firmware installed in the external charging device; transmission of update while the wearable device is seated and electrically connected with the cover closed; transmission based on at least one of first battery state or a second battery state.
These differences constitute obvious variations of the subject matter claimed in the ‘871 patent. Patent claim 1 requires the electronic device to be seated in and electrically connected to a second external electronic device comprising a case and requires transmission of the update file based on state information including battery residual amounts of the electronic device and the second external electronic device. Further specifying the electronic device as a wearable device and the second external electronic device/case as an external charging device merely limits the types and structured of the devices already claimed. Regarding the battery and charging circuitry, patent claim 1 already requires a battery operated electronic device, battery-state information of the electronic device and the second external electronic device, and an electrical connection between the electronic device and the second external electronic device when the electronic device is seated on the second external electronic device. Further providing charging circuitry electrically connected to the battery for receiving charging power from the external charging device constitutes an obvious implementation of the battery operated and electrically connected arrangement.
Further, patent claim 2 recites information related to firmware installed in the second external electronic device; patent claim 5 recites terminal contact and closed cover detection; and patent claim 8 recites determining that the second external electronic device requires updating based on version information of the update file relative to version information of firmware associated with the second external electronic device. Therefore, the current claim 1 is not patentably distinct from the patented claims.
Regarding claim 2 of current application, patent claim 1 already requires determine whether to transmit the update file based on the battery state information of the electronic device and second external electronic device. Therefore, further specifying transmission based a first battery state of the wearable device or a second battery state of the external charging device constitutes an obvious variation of the transmission conditions of the patented claims.
Regarding claim 3 of current application, patent claim 5 recites determining that the electronic device is seated in the second external electronic device based on a terminal of the electronic device being physically in contact with a terminal of the second external electronic device. Accordingly, a first terminal electrically connected with charging circuitry and configured to be in physical contact with a second terminal constitutes an obvious variation of the terminal contact arrangement recited in the patented claims.
Regarding claim 4 of current application, patent claim 5 recites the physical contact between respective terminal of the electronic device and second external electronic device. Furthermore, patent claim 6 recites communication with second external electronic device while the electronic device is seated. Therefore, transmitting update data through contact terminals constitutes an obvious implementation of the patent claims terminal contact communication arrangement.
Regarding claim 5 of current application, patent claim 6 recites perform a power line communication (PLC) protocol with the second external electronic device when the electronic device is seated in the second external electronic device. Thus, transmitting update data using PLC protocol is not patentably distinct from the PLC communication of the patent claims.
Regarding claim 6 of current application, patent claim 5 recites determining seating based on the cover being detected in a closed state and further recites a designated time elapsing after the cover is detected as closed while the terminals are physically in contact. Thus, transmitting update data after an elapse of specified period of time from closure of the cover establishes an obvious variation of the cover state and timing condition of the patent claims.
Regarding claim 7 of current application, patent claim 8 recites determining that the second external electronic device requires updating based on version information of the update file received from the first external electronic device being a higher level version than version of firmware related to the second external electronic device. Thus, the update data corresponding to newer version of the firmware than the version currently installed is an obvious variation of the version update determination of the patented claims.
Regarding claim 8 of current application, patent claim 5 detects whether the cover is in closed state while the electronic device is seated and the respective terminals are in physical contact. Claim 8 of current application further specifies a Hall sensor for performing the detection, this constitutes an obvious implementation of cover detection function and does not render claim 8 patently distinct.
Claims 9-16 recite similar limitation as recited in claims 1-8.
Therefore, the differences between claims 1-16 of the current application and claims 1-15 of patent ‘871 constitute obvious variations and do not render the current claims patentably distinct. Thus, claims 1-16 are rejected on the ground of nonstatory obviousness-type double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,353,871 B2.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 7-13, 15-16 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yang et al. (US 2021/0136479 A1).
Regarding claim 1, Yang discloses a wearable device comprising:
communication circuitry configured to establish a wireless communication connection with an external communication device ([0037]: after acquiring a firmware upgrade package from a preset terminal (e.g. external communication device) by a first audio output device. [0059]: the TWS headset (e.g. wearable device) according to the embodiment includes a charging box and multiple audio output devices.);
a battery; charging circuitry electrically connected to the battery and configured to receive charging power for the battery from an external charging device ([0160]: the TWS headset 20 further includes a wireless communication interface 23, a wired communication interface 24, an audio play unit 25, a sensor 26, and energy storage devices 27. [0166]: The energy storage devices 27 are arranged in the charging box (e.g. external charging device) for charging the audio output devices, and are respectively arranged in the audio output devices for supply electrical energy for electronic elements in the audio output devices), the external charging device including a seating space for the wearable device and a cover configured to be opened or closed with respect to the seating space ([0059]: multiple charging positions are provided in the charging box, and each audio output device is charged at one corresponding charging position. [0120]: the state of the lid of the charging box may be detected by a proximity switch arranged in the charging box. [0122]: the charging position in the charging box and the lid of the charging box is closed, a state adjustment prompt may be triggered if the audio output device is located at the charging position in the charging box and the lid of the charging box is opened, to prompt the user to close the lid of the charging box);
a processor, comprising processing circuitry, operatively connected with the communication circuitry, the battery and the charging circuitry (fig. 6, [0139]: The TWS headset 20 includes a processor 21 and a memory 22. [0160]: , the TWS headset 20 further includes a wireless communication interface 23, a wired communication interface 24, an audio play unit 25, a sensor 26, and energy storage devices 27), the processor configured to:
receive, using the communication circuitry, update data corresponding to a firmware installed in the external charging device via the wireless communication connection from the external communication device ([0038]: comparing a version of a current firmware of the charging box and a version of a third upgrade firmware in the firmware upgrade package which corresponds to the charging box); and
while the wearable device is electrically connected with the external charging device via the charging circuitry as seated in the seating space closed by the cover ([0120]: the state of the lid of the charging box may be detected by a proximity switch arranged in the charging box. [0122]: the charging position in the charging box and the lid of the charging box is closed), based at least in part on at least one of a first battery state of the wearable device or a second battery state of the external charging device, transmit the update data to the external charging device such that the firmware installed in the external charging device is to be updated using the update data received from the wearable device ([0016]-[0018]: before upgrading, detecting a state of the TWS headset; determining whether the TWS headset is in a preset state. [0028]: The preset state indicates that: the audio output device is located at a charging position in the charging box…and a current remaining power of the audio output device is greater than or equal to a preset power before upgrading any one of the first audio output device and the second audio output device. [0039]: if the version of the firmware of the charging box is older than the version of the third upgrade firmware, transmitting the third upgrade firmware to the charging box from the first audio output device to upgrade the charging box based on the third upgrade firmware).
Regarding claim 2, Yang discloses the wearable device of claim 1, wherein the processor is configured to: perform the transmitting of the update data based at least in part on a determination that the first battery state satisfies a first condition or the second battery state satisfies a second condition ([0023]-[0028]: The preset state indicates that: the audio output device is located at a charging position in the charging box and a current remaining power of the audio output device is greater than or equal to a preset power).
Regarding claim 3, Yang discloses the wearable device of claim 1, further comprising: a first terminal electrically connected with charging circuitry and configured to be in physical contact with a second terminal formed in the seating space when the wearable device is seated in the seating space ([0006]: The TWS headset includes multiple independent devices, and each of the devices has a corresponding firmware. [0016]-[0018], [0059]: before upgrading any one of the first audio output device and the second audio output device(e.g. first and second terminal), determining whether the TWS headset is in a preset state. [0028]: The preset state indicates that: the audio output device is located at a charging position in the charging box (e.g. seated inside charging box). [0047]: upgrade firmware in the firmware upgrade package acquired by the first audio output device is transmitted to the second audio output device by the charging box).
Regarding claim 4, Yang discloses the wearable device of claim 3, wherein the processor is configured to: perform the transmitting of the update data via the first terminal and the second terminal ([0047]: upgrade firmware in the firmware upgrade package acquired by the first audio output device is transmitted to the second audio output device by the charging box. [0096]: the charging box may compare, after the second audio output device is upgraded, the version of the firmware of the charging box with the version of the third upgrade firmware in the firmware upgrade package which corresponds to the charging box to determine whether the version of the current firmware of the charging box is older than the version of the third upgrade firmware).
Regarding claim 5, Yang discloses the wearable device of claim 1,wherein the processor is configured to: perform the transmitting of the update data using a power line communication (PLC) protocol ([0160]: the TWS headset 20 further includes a wireless communication interface 23, a wired communication interface 24, an audio play unit 25, a sensor 26, and energy storage devices 27. [0166]: The energy storage devices 27 are arranged in the charging box (e.g. external charging device) for charging the audio output devices, and are respectively arranged in the audio output devices for supply electrical energy (e.g. PLC) for electronic elements in the audio output devices).
Regarding claim 7, Yang disclose the wearable device of claim 1, wherein the processor is configured to: perform the transmitting of the update data further based on the update data corresponding to a second version of the firmware newer than a first version of the firmware currently installed in the external charging device ([0038]-[0039]: comparing a version of a current firmware of the charging box and a version of a third upgrade firmware in the firmware upgrade package which corresponds to the charging box; and if the version of the firmware of the charging box is older than the version of the third upgrade firmware, transmitting the third upgrade firmware to the charging box from the first audio output device to upgrade the charging box based on the third upgrade firmware).
Regarding claim 8, Yang discloses the wearable device of claim 1, further comprising: a hall sensor configured to detect that the cover is closed with respect to the seating space while the wearable device is seated in the seating space ([0117]: the state of the lid of the charging box indicates whether the lid of the current charging box is currently opened or closed. [0164]: The sensor 26 is configured to collect the physical sign data of the user and the acceleration data of the audio output devices, or detect the state of the lid of the charging box).
Regarding claim 9, Yang discloses a portable charging device comprising: a battery; memory to store a firmware installed in the portable charging device ([0043]: a charging box includes a processor and a memory. [0061]: the firmware upgrade package may include a third upgrade firmware for upgrading the charging box); charging circuitry to supply power to a wearable device from the battery the wearable device to store update data corresponding to the firmware; a case including a seating space for the wearable device ([0166]: The energy storage devices 27 are arranged in the charging box for charging the audio output devices, and are respectively arranged in the audio output devices for supply electrical energy for electronic elements in the audio output devices); and a cover configured to be opened or closed with respect to the seating space ([0028]: the audio output device is located at the charging position in the charging box and the lid of the charging box is closed);
a processor, comprising processing circuitry, operatively connected with the battery and the charging circuitry, the processor configured to: while the wearable device is electrically connected with the external charging device via the charging circuitry as seated in the seating space closed by the cover, receive the update data from the wearable device ([0028]: the audio output device is located at the charging position in the charging box and the lid of the charging box is closed. [0038]-[0039]: comparing a version of a current firmware of the charging box and a version of a third upgrade firmware in the firmware upgrade package which corresponds to the charging box); and while the wearable device is electrically connected with the external charging device via the charging circuitry as seated in the seating space closed by the cover, update the firmware using the update data ([0039]: if the version of the firmware of the charging box is older than the version of the third upgrade firmware, transmitting the third upgrade firmware to the charging box from the first audio output device to upgrade the charging box based on the third upgrade firmware).
Regarding claims 10; the claim is interpreted and rejected for the same reason as set forth in claim 2.
Regarding claim 11; the claim is interpreted and rejected for the same reason as set forth in claim 3.
Regarding claims 12; the claim is interpreted and rejected for the same reason as set forth in claim 4.
Regarding claim 13; the claim is interpreted and rejected for the same reason as set forth in claim 5.
Regarding claim 15; the claim is interpreted and rejected for the same reason as set forth in claim 7.
Regarding claim 16; the claim is interpreted and rejected for the same reason as set forth in claim 8.
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Yang in view of Yang (herein after Yang II, US 2022/0248123 A1).
Regarding claim 6, Yang disclose the wearable device of claim 1, transmitting of the update data after the cover being closed with respect to the seating space ([0016]-[0018]: before upgrading, detecting a state of the TWS headset; determining whether the TWS headset is in a preset state. [0028]: The preset state indicates that: the audio output device is located at a charging position in the charging box and the lid of the charging box is closed).
However, Yang does not disclose wherein the processor is configured to: perform the transmitting after an elapse of a specified period of time from the cover being closed with respect to the seating space.
In an analogous art, Yang II discloses wherein the processor is configured to: perform the transmitting after an elapse of a specified period of time from the cover being closed with respect to the seating space ([0068]: the wireless earphone is in the charging case. When the lid of the charging case is closed, the charging case transmits to the wireless earphone the instruction indicating that the lid of the charging case is closed, and it is determined that the first predetermined condition is met. Preferably, in order to avoid a mistaken determination resulted from the user mistakenly closing the lid, a countdown of a predetermined time period, such as 10s, from the reception of the instruction indicating that the lid of the charging case is closed by the wireless earphone may be set).
Therefore, it would have been obvious before the effective filed date of the claimed invention to a person having ordinary skill in the art to modify Yang to comprise “wherein the processor is configured to: perform the transmitting after an elapse of a specified period of time from the cover being closed with respect to the seating space” taught by Yang II.
One of ordinary skilled in the art would have been motivated because it would have enabled to set a predetermined time period from the reception of the indication that the lid of the charging case is close, because it would allow to avoid a mistaken determination resulted from the user accidently closing the lid (Yang II, [0068]).
Regarding claim 14; the claim is interpreted and rejected for the same reason as set forth in claim 6.
Additional References
The prior art made of record and not relied upon is considered pertinent to applicants disclosure.
Chen et al., US 2020/0310780 A1: Update Control Device and Update Control Method.
Kontopidis et al., US 11,197,142 B1: Method and Systems for Communication with Device Cases.
Conclusion
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/J.C.T/Examiner, Art Unit 2454
/GLENTON B BURGESS/Supervisory Patent Examiner, Art Unit 2454
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