DETAILED ACTION
Status of the Application
1. Claims 1 is pending and is under examination in this action.
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
First Action Final Rejection
3. This Office Action is made FINAL because the presently presented claim 1 would have been properly finally rejected on the grounds and art of record had they been presented a second time in Parent application 18/533,963 or Grandparent application 17/974,477.
This Application is a continuation (hereinafter referred to as the “New Application”) of Application 18/533,963 (hereinafter referred to as the “Parent”) and Application 17/974,4776 (hereinafter referred to as the “Grandparent”). The claim of the Parent was rejected on June 27, 2024 and the claim of the Grandparent was rejected on March 3, 2023.
As set forth in MPEP §706.07(b), "claims of a new application may be finally rejected in the first Office action in those situations where (A) the new application is a continuing application of . . . an earlier application, and (B) all claims of the new application (1) are drawn to the same invention claimed in the earlier application, and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application."
The New Application is a continuation from the Parent and the Grandparent Applications, and all the claimed elements in the present application were properly rejected in both the Parent and Grandparent applications. Since the only claim of the New Application is identical to previously rejected claims 1 of the Parent and Grandparent Applications, all of the claimed elements in the present application would have been properly finally rejected on the grounds and art of record if they had been entered earlier. In other words, a mere restatement of the rejection of claim 1 of the Parent or Grandparent Applications would have amounted to a proper final rejection. Applicant has merely filed the New Application as a Continuation that only includes claim 1 of the Parent and Grandparent Applications without changing one word of the claim 1 of the Parent and Grandparent Applications. Therefore, the pending claim of the New Application is rejected for the exact same reasons set forth in the Parent and Grandparent Applications in the Office Action mailed June 27, 2024 and March 3, 2023, respectively.
Applicant should have known at the time of filing the New Application that the present recitations would be subject to a First Action Final Rejection because this claim "would have been properly finally rejected on the grounds and art of record in the next Office Action if they had been entered in the application prior to the filing of the Continuation”.
Therefore, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b).
Requirement for Necessary Information
4. The Examiner has become aware of documents that may be material to patentability but have not been included in any IDS submissions even though the Applicant has been aware of these references for a substantial amount of time.
37 CFR 1.56(a) requires that “[e]ach individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability”.
Specifically, Applicant has failed to disclose any prior art cited in co-pending CIP applications: 17/141,972, 17/974,477, and 18/533,963. Each of the references cited in these co-pending applications may be material to the patentability of this application for prior art purposes and thus constitute necessary information that must be submitted to the Office.
5. Required Information: 37 CFR 1.105(a)(1)(viii) – In light of the above findings by the Examiner, Applicant is required to submit a list of every reference of which they are aware that may be material to the patentability of the claimed invention, as defined by 37 CFR 1.56(b). This requirement is being made in view of 37 CFR 1.56 and 1.105 in order to ensure that the most relevant prior art is fully considered.
Failure to provide a detailed list of all information that may be material to patentability of the claimed invention as defined by 37 CFR 1.56(b) will be considered non-responsive.
Accordingly, each piece of information referred to above is necessary material that is required to be submitted in order to properly proceed with the examination of this Application.
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially create ad 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
7. Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent 11,507,217 in view of Emigh et al. (U.S. Pub. 2018/0191517) in view of O’Keeffe (U.S Pub. 2017/0017324).
For Example:
Claim 1 (App. 18/533,963)
Claim 1 (U.S. Patent No. 11,507,217)
A control device comprising: (line 1)
A control device comprising: (line 1)
an exterior panel comprising multiple regions, including a groove region and a surrounding region that surrounds the groove region; (lines 2 – 3)
an exterior panel comprising multiple regions, including a groove region and a surrounding region that surrounds the groove region; (lines 2 – 4)
a sensor layer comprising one or more sensors to detect touch inputs performed on the groove region and the surrounding region of the exterior panel (lines 4 – 5); and
. . . a sensor layer comprising one or more sensors to detect touch inputs performed on the groove region and the surrounding region of the exterior panel (lines 5 – 8)
a control module configured to operate a plurality of devices (line 7)
a control module (line 5) . . .
being configured to (line 8) . . .
control a set of devices (lines 18 – 19)
the control module being configured to: detect, using the one or more sensors of the sensor layer, a first touch input performed by a user on the groove region of the exterior panel; (lines 8 – 11) and
detect a second touch input performed by the user on the surrounding region of the exterior panel (lines 14 – 15)
a control including a sensor layer comprising one or more sensors to detect touch inputs performed on the groove region and the surrounding region of the exterior panel (lines 5 – 8)
Regarding claim 1, U.S. Patent No. 11,507,217 does not explicitly recite: based at least in part of the first touch input being performed on the groove region, operate a first device of the plurality of devices; and based at least in part on the second touch input being performed on the surrounding region, operate a second device of the plurality of devices.
However, Emigh teaches: based at least in part on the first touch input being performed on the groove region, operate a first device of the plurality of devices (FIG. 1; paragraphs [0030], [0031], [0039] – [0040]; microprocessor of home device controller 100 can interpret touch gesture inputs to touch groove 102 as a command to dim connected devices such as light 110 [first device]).
Additionally, O’Keeffe teaches: based at least in part on the second touch input being performed on the surrounding region, operate a second device of the plurality of devices (FIG. 5B; paragraphs [0090], [0114]; when a tap [second touch] input is applied to faceplate 170 [surrounding region], the device [lights] are turned on/off. When combined with Emigh, this “second touch input” on the “surrounding region” would toggle the on/off state of light 115 [second device]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of Applicant’s claimed invention to combine the known teachings of Emigh and O’Keeffe with the requirements of claim 1 of U.S. Patent 11,507,217 to yield predictable results. Specifically, it would have been obvious to apply different functionality to different touch regions, as disclosed by the combination of Emigh and O’Keeffe set forth in the prior art rejection provided below, to the device of claim 1 of U.S. Patent 11,507,217 which includes the same structural configuration as that required by claim 1 of the present application. Such a combination merely provides additional details as to how to use these separate areas with a plurality of devices.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 1 is rejected under 35 U.S.C. 103 as being unpatentable over Emigh et al. (U.S. Pub. 2018/0191517) in view of O’Keeffe (U.S Pub. 2017/0017324).
Regarding claim 1, Emigh teaches: a control device (FIG. 1; paragraph [0017]; home device controller 100) comprising:
an exterior panel comprising multiple regions, including a groove region and a surrounding region that surrounds the groove region (FIG. 1; paragraphs [0017], [0018]; control [exterior] panel 101 includes touch control groove [region] 102. The remainder of the surface of control [exterior] panel 101 is interpreted as a “surrounding region” which surrounds touch groove [region] 102);
a sensor layer comprising one or more sensors to detect touch inputs performed on the groove region of the exterior panel (FIG. 1; paragraph [0018], [0025]; home device controller 100 includes capacitive touch sensors to detect touch and gesture inputs applied to touch groove [region] 102),
a control module configured to operate a plurality of devices (FIG. 1; paragraphs [0039] – [0040]; microprocessor of home device controller 100 can interpret touch gesture inputs to control a plurality of devices. For example, touch input gestures may be used to control first light 110 and second light 115), the control module being configured to:
detect, using the one or more sensors of the sensor layer, a first touch input performed by a user on the groove region of the exterior panel (FIG. 1; paragraph [0025]; touch gesture inputs applied to touch groove 102 are detected by the capacitive touch sensors in conjunction with the microprocessor);
based at least in part on the first touch input being performed on the groove region, operate a first device of the plurality of devices (FIG. 1; paragraphs [0030], [0031], [0039] – [0040]; microprocessor of home device controller 100 can interpret touch gesture inputs to touch groove 102 as a command to dim connected devices such as light 110 [first device]).
Emigh fails to explicitly disclose: the sensors detect touch inputs performed on the surrounding region of the exterior panel; wherein the control module is configured to: detect a second touch input performed by the user on the surrounding region of the exterior panel; and based at least in part on the second touch input being performed on the surrounding region, operate a second device of the plurality of devices.
However, in a related field of endeavor, O’Keeffe discloses: a touch-controlled dimmer switch (Abstract).
With regard to claim 1, O’Keeffe teaches: the sensors detect touch inputs performed on the surrounding region of the exterior panel (FIG. 5B; paragraphs [0090], [0114]; touch sensitive electrical switch includes an “exterior panel” having touch sensitive user surface 140 [groove region] and faceplate 170 [surrounding region]. A tap input may be applied to faceplate 170 [surrounding region] to turn the device [lights] on/off);
wherein the control module is configured to: detect a second touch input performed by the user on the surrounding region of the exterior panel (FIG. 5B; paragraphs [0090], [0114]; tap [second touch] input may be applied to faceplate 170 [surrounding region] to turn the device [lights] on/off); and
based at least in part on the second touch input being performed on the surrounding region, operate a second device of the plurality of devices (FIG. 5B; paragraphs [0090], [0114]; when a tap [second touch] input is applied to faceplate 170 [surrounding region], the device [lights] are turned on/off. When combined with Emigh, this “second touch input” on the “surrounding region” would toggle the on/off state of light 115 [second device]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of Applicant’s claimed invention to combine the known teachings of Emigh and O’Keeffe to yield predictable results. Specifically, the teachings of a wall-mounted home control device with an exterior panel having a touch groove for detecting touch gesture inputs such as a swipe to dim lights, as taught by Emigh, are known. Additionally, the teachings of a wall-mounted touch sensitive control light switch with an exterior panel having a touch sensitive surface region that receives a swipe gesture input to dim lights and a faceplate region surrounding the touch sensitive surface region that receives a tap input to turn the lights on/off, as taught by O’Keeffe, are known as well. The combination of the known teachings of Emigh and O’Keeffe would yield the predictable results of a wall-mounted home control device for controlling lights having an exterior panel with a touch groove region for detecting touch gesture inputs, such as swipes to dim the lights, and a faceplate region surrounding the touch groove region for detecting touch gesture inputs, such as a tap to turn the lights on/off. In other words, it would have been obvious to incorporate the on/off touch input recognition on a region surrounding a touch gesture input region, as disclosed by O’Keeffe, into the device of Emigh. Such a modification merely requires including additional touch electrodes and corresponding logic in the device of Emigh in an area surrounding touch groove to implement the disclosed functionality of O’Keeffe. This application of the teachings of O’Keeffe to those of Emigh would result in at least light 110 of Emigh being dimmed in response to “first touch input” applied to the “groove region” and in at least light 115 of Emigh being turned on/off in response to a “second touch input” applied to the “surrounding region”. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of Applicant’s claimed invention to combine the known teachings of Emigh and O’Keeffe to yield the aforementioned predictable results.
Conclusion
This is a Continuation of applicant's earlier Application Nos. 18/533,963 and 17/974.477. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier applications (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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 RYAN A LUBIT whose telephone number is (571)270-3389. The examiner can normally be reached M - F, ~6am - 3pm.
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/RYAN A LUBIT/Primary Examiner, Art Unit 2626
