DETAILED ACTION
This office action is in response to the initial filing dated July 9, 2025.
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 .
Claim Status
Claims 1-12 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1, 6, and 11, with support in the applicant’s specification cited, recite the concepts of:
obtaining first updated asset location information corresponding to a tagged asset, the first updated asset location information comprising possible updates to existing asset location information comprising current global positioning coordinates of one or more tagged assets (Figure 5A, Item 502 shows obtaining updated location information; Page 28, Lines 16-18 is the only section of the detailed description that recites obtaining updated asset location information corresponding to Figure 5A, Item 502);
in response to determining that the tagged asset is coupled to at least one gateway (Figure 5B, Item 520 flows from 502 and shows determining if the tagged asset is coupled to a gateway), determining whether first global positioning coordinates in the first updated asset location information overlap a first geofence of a first jobsite location (Figure 5C, Item 550, which flows from 520, shows determining if global positioning coordinates are within a prior geofence);
in response to determining that the first global positioning coordinates in the first updated asset location information overlap the first geofence, generating a first jobsite assignment indicating that the tagged asset is located in a first jobsite location;
obtaining second updated asset location information corresponding to the tagged asset (Figure 5A, Item 502 shows obtaining updated location information; Page 28, Lines 16-18 is the only section of the detailed description that recites obtaining updated asset location information corresponding to Figure 5A, Item 502);
in response to determining that the tagged asset is not coupled to a second gateway (Figure 5B, Item 520 shows determining whether the tagged asset is coupled to a previously coupled gateway), determining whether the tagged asset is scanned recently (Figure 5B, Item 526 shows determining if the tagged asset was scanned recently after determining that the tagged asset is not coupled to a previously coupled gateway);
in response to determining that the tagged asset is not scanned recently, uncoupling the tagged asset from any gateways (Figure 5B, Item 528 shows uncoupling the tagged asset from any gateway when the tagged asset has not been scanned recently);
determining second global positioning coordinates as unknown (Figure 4B, Items 430 and 442 show assigning asset location information as unknown);
identifying the first global positioning coordinates as in the first updated asset location information as last known global positioning coordinates (Figure 5B, Item 530 shows assigning asset location information as last read by; Page 29, Lines 15-17 recite assigning asset location information as last ready by the latest prior gateway coupled to the tagged asset);
determining that the second global positioning coordinates in the second updated asset location information do not overlap a second geofence of a second jobsite location (Figure 5C, Item 556 shows determining whether global position coordinates are within a new geofence); and
maintaining the first jobsite assignment indicating that the tagged asset is located in the first jobsite location (Figure 5C, Item 558 shows maintaining the existing jobsite assignment associated with the tagged asset).
Some elements of the claim do not map to the specification or drawings in correspondence with the claim language presented, such that it is not reasonably conveyed to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, generating a first jobsite assignment indicating that the tagged asset is located in a first jobsite location in response to determining that the first global positioning coordinates in the first updated asset location information overlap the first geofence and determining second global positioning coordinates as unknown along with determining that the second global positioning coordinates in the second updated asset location information do not overlap a second geofence of a second jobsite location lack written description.
As to the first limitation, based on the provided support in the specification, in response to Figure 5C, Item 550 determining that global positioning coordinates are within a prior geofence, an existing jobsite assignment is maintained at Item 558. Within Process 500, a first jobsite assignment is only generated at 560 in response to global positioning coordinates being within a new geofence after location information is assigned based on the last gateway location at 530 or a supplemental gateway location when the tagged asset is not scanned recently or scanned by a new gateway at 536. However, the claim does not recite this specific sequence of conditions. Therefore, it is not conveyed to one of skill in the art that the applicant has support for the claimed sequence of limitations resulting in generating a first jobsite assignment.
Further, the specification provides support for determining global positioning coordinates as unknown (Figure 4B, Items 430 and 442 show assigning asset location information as unknown) in order to generate an alert indicating that the asset location information is unknown (Figure 4D, Item 464). The concept of determining coordinates as unknown is done in relation to process 400, not process 500 which appears to be recited for the other claim elements. Therefore, the claim appear to combine different embodiments in the same sequence. However, it is not conveyed to one of skill in the art that the applicant has support for determining that the second global positioning coordinates are unknown AND determining that the, now unknown, second global positioning coordinates do not overlap a second geofence of a second jobsite location, as claimed.
Therefore, the scope of the subject matter of the independent claims cannot be ascertained in order to perform a search and reasonably examine the presented claims.
Further, dependent claims 2 and 7 recite determining whether the second gateway provided the first updated asset location information during a start-up operation (Figure 5A, Item 504 shows determining whether updated location information was received from a gateway start up), but does not explicitly recite in conjunction with determining that the second gateway provided the second updated asset location information during a start-up operation, maintaining the first jobsite assignment indicating that the tagged asset is located in the first jobsite location.
Instead, Figure 5A shows Item 506 as maintaining existing asset location information corresponding to the tagged asset. Item 506 is silent with regards to a jobsite assignment, which is only generated at step 560, maintained at step 558, or removed at step 554 in Figure 5C. Therefore, it is not conveyed to one of skill in the art that the applicant has support for maintaining a jobsite assignment based on determining whether data is a result of a gateway start up.
Further, dependent claims 3 and 8 recite, in relation to process 500 shown in Figures 5A-5C5 obtaining second updated asset location information corresponding to the tagged asset (502);
determining whether the tagged asset is coupled to a first gateway (520);
in response to determining that the tagged asset is not coupled to the first gateway, determine whether the tagged asset is scanned recently (526);
in response to determining that the tagged asset is scanned recently, determine whether the tagged asset is scanned by a second gateway (532);
in response to determining that the tagged asset is scanned by the second gateway, determine global positioning coordinates of the second gateway as second global positioning coordinates in the second updated asset location information (540);
determine that the second global positioning coordinates in the second updated asset location information overlap the first geofence of the first jobsite location (550).
However, instead of continuing from step 550 to step 558 upon determining that the global positioning coordinates are within a prior geofence in order to maintain an existing jobsite assignment, the claim recites generating a second jobsite assignment indicating that the tagged asset is located in the first jobsite location. However, a new jobsite assignment is only generated at 560 based on global positioning coordinates being within a new geofence after location information is assigned based on the last gateway location at 530 or a supplemental gateway location when the tagged asset is not scanned recently or scanned by a new gateway at 536. However, the claim does not recite this specific sequence of conditions. Therefore, it is not conveyed to one of skill in the art that the applicant has support for the claimed sequence of limitations resulting in generating a second jobsite assignment.
Therefore, the independent claims do not recite language in a way that the scope of the claims can be properly ascertained for completing a reasonable examination. Claims 4-5 and 9-10 are rejected as being dependent from a rejected base claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “recently” in claims 1, 3, 6, 8, and 11-12 is a relative term which renders the claim indefinite. The term “recently” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The specification, at page 24, lines 22-24, recites determining “… whether the tagged asset 110A has been scanned recently. In this regard, the server 102 may determine whether the tagged asset 110A has been scanned by one of the gateways 114.” Therefore, it is not clear if there is a time element associated with the determination.
For purposes of examination, the claimed limitations are interpreted as determining whether the tagged asset has been scanned at any time.
Claims 2, 4-5, 7, and 9-10 are rejected as being dependent from a rejected base claim.
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 1-2, 6-7, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-4, 10-11, and 17, respectively, of U.S. Patent No. 12,425,809. 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”).
Claims 1-2, 6, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3, 8, and 14, respectively, of copending Application No. 19/263,809 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims include all of the limitations of the instant application claims, respectively. The copending application claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective copending application claims. As such, the instant application claims are anticipated by the copending application 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”).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Malik et al. (US PG Pub #2024/0054882) teach monitoring and recording assets brought within or removed from the proximity of gateways (Paragraph [0019]).
Lacatus et al. (US PG Pub #2014/0274225) teach a geofence area defined by GPS coordinates around a construction site that encompasses multiple safe-zones (Paragraph [0034]) where a tracking device transmits signals to a cell tower (Paragraph [0058]).
Eggleston (US PG Pub #2015/0161553) teaches geo-location tracking that associates travel time and time at a secondary location with an allocated activity and/or worksite (Paragraph [0062]).
Herbert et al. (US PG Pub #2017/0142549) teach a system for locating wireless beacons within a defined area (Paragraph [0032]), the system utilizes wireless bridge devices that act as a gateway and can communicate with the wireless tag (Paragraph [0034]).
Liao et al. (US PG Pub #2018/0103350) teach a geo-fence encapsulating a work zone (Paragraph [0016]) where a work zone ID is known when the location of a mobile device is within the geo-fence of a work zone (Paragraph [0019]).
Fang et al. (US PG Pub #2020/0137453) teach multiple gateways providing an accurately-known fixed location within a multi-space environment to locate a personal locator device (Paragraph [0005]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN W SHERWIN whose telephone number is (571)270-7269. The examiner can normally be reached M-F, 9:00-5:00 EST.
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/RYAN W SHERWIN/ Primary Examiner, Art Unit 2688
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