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.
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Claims 1, 2, 5, 7, 10 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-8 of U.S. Patent No. 12,033,025. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 6-8 of U.S. Patent No. 12,033,025 cover and encompass the limitations as recite in claims 1, 2, 5, 7, 10 and 18 of the instant application.
Moreover, because omission element(s) in the claims would make the claims in the instant application broader, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the claim(s) in the U.S. Patent No. 12,033,025 to as now recited in the instant application since it is just merely an obvious variation of the claims. Furthermore, it is well settled that omission of an element and it function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 163 USPQ 184 (CCPA 1963). In light of the foregoing discussion, the claims 1, 2, 5, 7, 10 and 18 of the instant application are rejected as obvious double patenting over the claims 1 and 6-8 of U.S. Patent No. 12,033,025.
The corresponding claims as follow:
U.S. Patent No. 12,033,025
Instant Application
Claim 7: A touchless utility controller comprising:
a housing encompassing: circuitry configured to receive a signal from an RFID tag, and based on the received signal,
provide an activation signal to a valve control device for a valve;
wherein the housing comprises: a face having an illuminated portion to allow for a visual indictor to illuminate the illuminated portion, wherein the face does not include any physically activated interface elements; and
at least one of an outer side perimeter connected to the face or a back side; wherein at least one of the outer side perimeter or the back side defines at least one through hole for receiving a input power wiring and output transmission wires for connecting to the valve control device for the valve controlling one of gas or water
Claim 1: A touchless utility controller comprising:
a housing encompassing: circuitry configured to receive a signal from a wireless transmitter, the signal comprising a radio frequency signal or an infrared-based signal, and based on the received signal,
provide an activation signal to a valve control device for a valve;
wherein the housing comprises: a face having an illuminated portion to allow for a visual indicator to illuminate the illuminated portion, wherein the face does not include any physically activated interface elements; and
at least one of an outer side perimeter connected to the face or a back side; wherein at least one of the outer side perimeter or the back side defines at least one through hole for receiving a input power wiring and output transmission wires for connecting to the valve control device for the valve controlling one of gas or water.
Claim 7: A touchless utility controller comprising: a housing encompassing: circuitry configured to receive a signal from an RFID tag, and based on the received signal, provide an activation signal to a valve control device for a valve;
wherein the housing comprises: a face having an illuminated portion to allow for a visual indictor to illuminate the illuminated portion,
wherein the face does not include any physically activated interface elements; and at least one of an outer side perimeter connected to the face or a back side; wherein at least one of the outer side perimeter or the back side defines at least one through hole for receiving a input power wiring and output transmission wires for connecting to the valve control device for the valve controlling one of gas or water
Claim 2:
wherein the face allows for a plurality of visual indicators to illuminate respective illuminated portions.
Claim 7: A touchless utility controller comprising:
a housing encompassing: circuitry configured to receive a signal from an RFID tag, and based on the received signal,
provide an activation signal to a valve control device for a valve;
wherein the housing comprises: a face having an illuminated portion to allow for a visual indictor to illuminate the illuminated portion, wherein the face does not include any physically activated interface elements; and
at least one of an outer side perimeter connected to the face or a back side; wherein at least one of the outer side perimeter or the back side defines at least one through hole for receiving a input power wiring and output transmission wires for connecting to the valve control device for the valve controlling one of gas or water
Claim 5:
wherein the radio frequency signal or an infrared-based signal is an RFID signal
Claim 8: wherein the illuminated portion has a surface area that is at least 10% of a surface area of the face
Claim 7: wherein the illuminated portion occupies at least 30% of the surface area of the face.
Claim 1: A system for controlling a utility, the system including: an RFID reader; a visual indicator; a processor; and memory, storing a list of registered unique identifiers and storing instructions that, when executed the processor, cause the system to perform operations including:
receiving, by the RFID reader, an RFID signal from an RFID tag, the RFID signal including a unique identifier, wherein the RFID tag is one of a set of RFID tags that includes a master RFID tag and a configuration RFID tag;
comparing the unique identifier to the list of registered unique identifiers to determine that the RFID tag is a registered RFID tag;
in response to determining the RFID tag is a registered RFID tag:
transmitting an activation signal to a valve control device to cause a valve controlling a utility to open;
illuminating the visual indicator to a first color; and
initiating a shutdown timer; and
upon expiration of the shutdown timer: ceasing the transmission of the activation signal; and
illuminating the visual indicator to a second color;
detecting the master RFID tag; in response to detecting the master RFID tag, entering a configuration mode; while in the configuration mode, detecting the configuration RFID tag; and based on the detection of the configuration RFID tag, modifying one or more settings of the system.
Claim 10: A method for controlling a utility, the method comprising:
receiving, by an RFID reader of a utility controller, a first RFID signal from a first RFID tag;
comparing, by a processor of the utility controller, the first RFID signal to a list of registered unique identifiers to determine that the first RFID tag is a registered RFID tag;
in response to determining the first RFID tag is a registered RFID tag:
transmitting an activation signal to a valve control device to cause a valve controlling a utility to open;
illuminating a visual indicator to a first color; and
initiating a shutdown timer; and
upon expiration of the shutdown timer:
ceasing the transmission of the activation signal; and
illuminating the visual indicator to a second color.
Claim 6: wherein the system further includes a shutdown timer indicator that changes to indicate an amount of time remaining on the shutdown timer.
Claim 18: wherein the visual indicator comprises a graphical shutdown timer indicator, and further comprising causing the graphical shutdown timer indicator to change as the shutdown timer counts down.
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, 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) 10 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cortlan et al. (US 2019/0151879, cited by applicant) in view of Dallas et al. (US 2019/0280507, cited by applicant).
Regarding claim 10, Cortlan teaches a method (figs. 3, 8A, 9A and 9B) for controlling a utility, the method comprising: receiving, by an RFID reader (302) of a utility controller (300), a first RFID signal from an first RFID tag ([0035]); comparing, by a processor ([0088]) of the utility controller, the first RFID signal to a list of registered unique identifiers to determine that the first RFID tag is a registered RFID tag ([0051] and [0071]); in response to determining the first RFID tag is a registered RFID tag: transmitting an activation signal to a valve control device (810, [0075]) to cause a valve controlling a utility to open; illuminating a visual indicator to a first color ([0054]). See [0042]-[0054] and [0066]-[0076].
Cortlan fails to teach a shutdown timer and upon expiration of the shutdown timer; ceasing the transmission of the activation signal; and illuminating the visual indicator to a second color.
However, Dallas teaches activation control system that in active mode, illuminating the visual indicator to a first color ([0017]); initiating a shutdown timer ([0018] and [0020]); and upon expiration of the shutdown timer: ceasing the transmission of the activation signal; and illuminating the visual indicator to a second color ([0025]).
In view of Dallas’s teaching, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Cortlan by incorporating the teaching as taught by Dallas so as to indicate the cease of transmission of activation signal.
Regarding claim 17, Cortlan as modified by Dallas teaches all subject matter claimed as applied above except for illuminating a third color as claimed.
However, Cortlan teaches the visual indicator may be use different colors to provide different forms of feedback ([0039]). Moreover, Dallas also teaches the visual indicator may flash or change color ([0025] and [0027]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Cortlan and Dallas to provide the visual indicator with third color as claimed in order to arrive at the claimed invention.
Claim(s) 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cortlan as modified by Dallas as applied to claim 10 above, and further in view of Hamilton et al. (US 2015/0216369).
Regarding claims 11-13, 15 and 16, Cortlan as modified by Dallas teaches all subject matter claimed as applied above except for resetting the shutdown timer and ceasing the transmission of the activation signal based on the receiving signal as claimed.
However, Hamilton teaches resetting the shutdown timer and ceasing the transmission of the activation signal based on the receiving signal as claimed (figs. 4, 5 and [0057]).
In view of Hamilton’s teaching, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Cortlan and Dallas by incorporating the teaching as taught by Hamilton so that the resetting the shutdown timer and ceasing the transmission of the activation signal can be controlled based on the receiving command signal.
Regarding claim 14, Cortlan as modified by Dallas and Hamilton teaches all subject matter claimed as applied above. The claim is not given any patentable weight since claim further defines the limitation which was not rely upon based on the condition “at least one of” as recited in claim 13.
Claim(s) 18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cortlan as modified by Dallas as applied to claim 10 above, and further in view of Warren et al. (US 2019/0056131).
Regarding claim 18, Cortlan as modified by Dallas teaches all subject matter claimed as applied above. Dallas further teaches causing the shutdown timer indicator to change as the shutdown timer counts down ([0025]) except for the visual indicator comprises a graphical shutdown timer indicator.
However, Warren teaches the visual indicator comprises a graphical shutdown timer indicator (fig. 5).
In view of Warren’s teaching, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Cortlan and Dallas by incorporating the teaching as taught by Warren since it is just a matter of design option for the shutdown timer.
Regarding claim 20, Cortlan as modified by Dallas teaches all subject matter claimed as applied above except for the shutdown timer duration to be display on the smartphone as claimed. However, Cortlan further teach using a smartphone to control the utility controller (fig. 8A, [0002] and [0072]). Moreover, Warren teach user can control and view a current setpoint of the utility controller via a smartphone (fig. 1, [0050], [0133] and [0137]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Cortlan and Dallas for the smartphone configured to control the shutdown timer and the shutdown timer duration to be displayed on the smartphone device in order to arrive at the claimed invention.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cortlan as modified by Dallas as applied to claim 10 above, and further in view of Paul et al. (US 2008/0275465).
Regarding claim 19, Cortlan as modified by Dallas teaches all subject matter claimed as applied above except for emitting a first sound when the utility is activated and a second sound when the utility is deactivated.
However, Paul teaches generating different audio outputs based on condition of interest (activating or deactivating) ([0009]).
In view of Paul’s teaching, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Cortlan and Dallas to generating different audio outputs (different sounds) as taught by Paul so that the user can be able to recognize the condition of the utility based on the sound condition.
Allowable Subject Matter
Claims 3, 4, 6, 8 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tuyen Kim Vo whose telephone number is (571)270-1657. The examiner can normally be reached Mon-Thurs: 8AM-6:30PM.
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/TUYEN K VO/Primary Examiner, Art Unit 2876