`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
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`
`
`
` FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
`
`
`
`
`CONFIRMATIONNO.
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`13/662,663
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`10/29/2012
`
`Kevin R. Imes
`
`39285-00118
`
`4055
`
`04/12/2013
`
`7590
`59582
`DICKINSON WRIGHT PLLC
`2600 WEST BIG BEAVER ROAD
`SUITE 300
`TROY, MI 48084-3312
`
`EXAMINER
`
`PATEL, RAMESH B
`
`ART UNIT
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`2127
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`MAIL DATE
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`04/12/2013
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`PAPER NUMBER
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`

`

`
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`13/662,663
`Examiner
`RAMESH PATEL
`
`IMES ET AL.
`Art Unit
`2127
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTH(S) OR THIRTY(30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Anyreply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)X] Responsive to communication(s)filed on 29 October 2012.
`2a)L] This action is FINAL.
`2b)X] This action is non-final.
`3)L] An election was made bythe applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
`4)_] Sincethis application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)X] Claim(s) 1-24 is/are pending in the application.
`5a) Of the above claim(s) 1-17 and 24 is/are withdrawn from consideration.
`6)L] Claim(s) ___ is/are allowed.
`7) Claim(s) 12-23 is/are rejected.
`8)L] Claim(s) ___is/are objectedto.
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`9)L] Claim(s)
`are subject to restriction and/or election requirement.
`
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway
`program at a participating intellectual property office for the corresponding application. For more information, please see
`htto/Awww.uspto.gov/patenis/init events/ooh/index.jiso or send an inquiry to PPHieedback@usopio.qov.
`
`Application Papers
`
`10) The specification is objected to by the Examiner.
`11)] The drawing(s)filed on 29 October 2012 is/are: a)[_] accepted or b)X] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
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`Priority under 35 U.S.C. § 119
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`12)[] Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)L] All
`)LJ Some * c)L] None of:
`1..] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copiesof the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) Xx Notice of References Cited (PTO-892)
`
`2) | Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) CT] Interview Summary (PTO-413)
`Paper No(s)/Mail Date.
`4) | Other:
`
`PTOL-326 (Rev. 09-12)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20130225
`
`
`
`

`

`Application/Control Number: 13/662,663
`Art Unit: 2127
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`Page 2
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`DETAILED ACTION
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`Election/Restrictions
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
`
`I.
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`Claims 1-11, drawn to a method of managing or controlling a site in mobile
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`environment, classified in class 700, subclass 278.
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`II.
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`Claims 12-23, drawn to a system comprising a thermostat and a
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`communication module for communicating with mobile device and the
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`location of the mobile device, classified in class 455, subclass 404.02.
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`III.
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`Claim 24, drawn to a methodfor of managing energy use in a mobile
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`environment, classified in class 700, subclass 297.
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`2.
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`The inventions are distinct, each from the other becauseof the following reasons:
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`Inventions group |, group II and group III are unrelated.
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`Inventions are unrelated
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`if it can be shownthat they are not disclosed as capable of use together and they have
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`different modes of operation, different functions, or different effects (MPEP § 806.04,
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`MPEP § 808.01).
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`In the instant case the different inventions group | is related to a
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`method of managing or controlling a site in mobile environment and group II related to a
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`system which comprising a thermostat and a communication module for communicating
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`with mobile device and the location of the mobile device while the group Ill is related to
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`a method for of managing energy usein a mobile environment.
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`

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`Application/Control Number: 13/662,663
`Art Unit: 2127
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`Page 3
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`3.
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`Because these inventions are distinct for the reasons given above and have
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`acquired a separate status in the art as shownbytheir different classification, restriction
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`for examination purposesasindicatedis proper.
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`4.
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`Because theseinventions are distinct for the reasons given above and the
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`search required for Group | is not required for Group II, restriction for examination
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`purposesas indicated is proper.
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`5.
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`Becausethese inventions are distinct for the reasons given above and have
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`acquired a separate status in the art because of their recognized divergent subject
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`matter, restriction for examination purposes as indicated is proper.
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`6.
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`During a telephone conversation with Mr. Schomer, Bryan J. (Reg. No. 67,752)
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`on 2/25/2013 a provisional election was made without traverse to prosecute the
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`invention of Group II, claims 12-23. Affirmation of this election must be made by
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`applicant in replying to this Office action. Claims 1-11 and 24 are withdrawn from
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`further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-
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`elected invention.
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`7.
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`Applicant is advised that the reply to this requirement to be complete must
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`include an election of the invention to be examined even though the requirement be
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`traversed (37 CFR 1.143).
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`

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`Application/Control Number: 13/662,663
`Art Unit: 2127
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`Page 4
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`8.
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`Claims 12-23 are presented for examination. Claims 1-11 and 24 are withdrawn
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`from further consideration by the examiner as state above. Applicant is requested to
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`cancel non-elected claims 1-11 and 24 in responsetothis office action.
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`Drawings/Specification
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`9.
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`The drawings are objected to under 37 CFR 1.83(a). The drawings must show
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`every feature of the invention specified in the claims. Therefore, the “a thermostat
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`including communication module”;
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`“said thermostat having a proximity detection
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`module”; “home mode” and “away mode”as claimed in claim 12, lines 2-5, 8; "the
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`thermostat includes a generally round housing” as claimed in claim 13; “the housing
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`includes a control mechanism configured to rotate clockwise and counterclockwise” as
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`claimed in claim 14; “LCD display” as claimed in claims 15-18; must be shown or the
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`feature(s) canceled from the claim(s). No new matter should be entered. Examiner has
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`provided some examples and suggested applicant review all drawings and entire
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`disclosure and make appropriate correction as required to drawings and/or specification
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`to provide adequate description for related elements and/or parts of the drawings of the
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`system as claimed in claims 12-23 as necessary.
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`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in
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`reply to the Office action to avoid abandonmentof the application. Any amended
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`replacement drawing sheet should includeall of the figures appearing on the immediate
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`

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`Application/Control Number: 13/662,663
`Art Unit: 2127
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`Page 5
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`prior version of the sheet, evenif only one figure is being amended. The figure or figure
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`number of an amended drawing should not be labeled as “amended.”If a drawing figure
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`is to be canceled, the appropriate figure must be removedfrom the replacement sheet,
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`and where necessary, the remaining figures must be renumbered and appropriate
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`changes madeto the brief description of the several views of the drawings for
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`consistency. Additional replacement sheets may be necessary to show the renumbering
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`of the remaining figures. Each drawing sheet submitted afterthe filing date of an
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`application must be labeled in the top margin as either “Replacement Sheet” or “New
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`Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner,
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`the applicant will be notified and informed of any required corrective action in the next
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`Office action. The objection to the drawings will not be held in abeyance.
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`Claim Rejections - 35 USC § 112
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`10.
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`Thefollowing is a quotation of 35 U.S.C. 112(b):
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`(B) CONCLUSION.—The specification shall conclude with one or more claims
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`particularly pointing out and distinctly claiming the subject matter which the inventor or a
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`joint inventor regards as the invention.
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`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
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`The specification shall conclude with one or moreclaims particularly pointing out and
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`distinctly claiming the subject matter which the applicant regards as his invention.
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`

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`Application/Control Number: 13/662,663
`Art Unit: 2127
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`Page 6
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`Claims 12-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AlA the
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`applicant regards as the invention.
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`Claim 12 recite the limitation "said proximity detection having..." in lines 4-5.
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`Thereis insufficient antecedent basis for this limitation in the claim.
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`It should be “said
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`proximity detection module having...” to be consistent with previous limitations by
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`adding term “module” after the term “detection”.
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`Dependent claims which are not rejected are rejected based on the rejected base
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`claim.
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`Claim Rejections - 35 USC § 102
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`11.
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`The following is a quotation of the appropriate paragraphsof 35 U.S.C. 102 that
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`form the basis for the rejections underthis section madein this Office action:
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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in public
`use or on sale in this country, more than one year prior to the date of application for patent in the United
`States.
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`Claims 12-23 are rejected under 35 U.S.C. 102(b) as being anticipated by
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`Pouchak (Pub. no. US 2005/0040247 A1).
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`

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`Application/Control Number: 13/662,663
`Art Unit: 2127
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`Page 7
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`As to claim 12, Pouchak teaches the invention including system, comprising: a
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`thermostat disposedat a site and including a communication module capable of
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`communicating with a mobile device associated with the site (see, figure 1-2 and para
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`0006, 0009-0010); said thermostat having a proximity detection module disposed
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`thereon, said proximity detection having a home mode and an away mode, said
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`proximity detection module being configured to: detect a location of the mobile device
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`with respectto the site (see, figures 1-2, 20A-23 and para 0008-00010, 0017-0018,
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`0055-0057, 0134-0135) and alter an operating condition of the thermostat during the
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`away modein responseto the detected location of the mobile device (see, figures 1-2,
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`20A-23 and para 0006, 0008-00010, 0017-0018, 0055-0057, 0134-0135, 0137, 0142-
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`0145).
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`Asto claims 13-14, Pouchak teaches the system wherein the thermostat includes
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`a generally round housing whichincludes a control mechanism configured to rotate
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`clockwise and counterclockwiseto allow for the selection of the home mode and the
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`away mode (see, abstract and figures 2, 7A-8B, 16 and 20-20B and para 0004-0006,
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`0008, 0012-0013, 0089-0090, 0113-0115, 0134-0135).
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`Asto claims 15-18, Pouchak teaches the system wherein the thermostat includes
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`an LCD display configured to indicate use of the home mode, the away mode and
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`display a current set-point and the LCD display has an energy savings indicator to
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`provide a visual indication of energy savings related to the away mode, an energy
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`

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`Application/Control Number: 13/662,663
`Art Unit: 2127
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`Page 8
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`savings indicator to provide a visual indication of energy savings related to the away
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`mode, an energy history section to display how much energy has been used daily by an
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`HVAC system at the site and a schedule section to display scheduling data of the
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`thermostat (see, figures 2-14Z, 20A-20B and 28A-32D and para 0004-0006, 0068-0069,
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`0092, 0123, 0134-0135, 0137, 0142-0145).
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`As to claim 19, Pouchak teaches the system wherein the thermostatis further
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`configured to: detect a selection of a home setting or an away setting on a user
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`interface of the mobile device, enable the home modeof the proximity detection module
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`in response to the homesetting and enable the away modeof the proximity detection
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`module in responseto the awaysetting (see, figures 1-2, 20A-23 and para 0008-00010,
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`0017-0018, 0055-0057, 0134-0135, 0142-0145).
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`As to claim 20, Pouchak teaches the system further comprising: a second
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`thermostat disposedat a site and including a communication module capable of
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`communicating with the mobile device, said thermostat configured to: alter an operating
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`condition of the second thermostat in response to detecting the change in the location e
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`of the mobile device (see, figure 1-2 and para 0006, 0009-0010).
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`Asto claims 21-23, Pouchak teaches the system wherein the thermostatis
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`further configured to: communicate with a networklocation that stores distance
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`information of a plurality of mobile devices including a first mobile device and a second
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`

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`Application/Control Number: 13/662,663
`Art Unit: 2127
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`Page 9
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`mobile device; detecta first distance information of the first mobile device relative to the
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`site (see, figures 2-14Z, 20A-20B and 28A-32D and para 0004-0006, 0068-0069, 0092,
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`0123, 0134-0135, 0137, 0142-0145), detect a second distanceinformation of the
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`second mobile device relative to the site and communicatethe first distance information
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`of the first mobile device and the second distance information of the second mobile
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`device to the network location to be compared(see, figure 1-2 and para 0006, 0009-
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`0010); andinitiate the change to the operating condition of the thermostat if a change in
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`the first distance of the first mobile device is different than a change in the second
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`distance of the second mobile device (see, figures 2-142, 20A-20B and 28A-32D and
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`para 0004-0006, 0068-0069, 0092, 0123, 0134-0135, 0137, 0142-0145); detect an
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`availability of a WIFI network including a device connected to the WIFI network, access
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`the device using the WIFI networkto detect an operating condition of the device, and
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`initiate an altering of the operating condition of the network device using the WIFI
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`network(see, figures 1-142, 20A-20B and 28A-32D and para 0004-0006, 0056, 0068-
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`0069, 0092, 0123, 0134-0135, 0137, 0142-0145).
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`12.
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`+The prior art made of record and notrelied upon is considered pertinent to
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`applicant's disclosure.
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`13.|=Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to RAMESHB. PATEL whosetelephone numberis
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`(571)272-3688. The examiner can normally be reached on M-Th; 6:30 AM to 5:00 PM.
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`

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`Application/Control Number: 13/662,663
`Art Unit: 2127
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`Page 10
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, MohammadAli can be reached on 571-272-4105. The fax phone number
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`for the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on accessto the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automatedinformation
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`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Ramesh B. Patel/
`Primary Examiner, Art Unit 2127
`
`