`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
`
`
`
`
`
`14/364,911
`
`06/12/2014
`
`Shinya Hokazono
`
`732256.431USPC
`
`4864
`
`Seed IP Law Group LLPflDanasonic
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`MULL, FRED H
`
`PAPER NUIVIBER
`
`ART UNIT
`
`3648
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/30/2017
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patentinfo @ seedip.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/364,911 HOKAZONO ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`Fred H. Mull its“ 3648
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () 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).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 06/12/2017.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1-11 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-11 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'/\WNI.LISI>I‘.0. ov/ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 06/12/2014 is/are: a)IXI accepted or b)|:l 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).
`
`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in 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)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20170622
`
`

`

`Application/Control Number: 14/364,911
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`Page 2
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`Art Unit: 3648
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`DETAILED ACTION
`
`The present application is being examined under theM first to invent
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`provisions.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`USC 102 and 103 (or as subject to pre-AIA 35 USC 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new ground of
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`Claim Rejections - 35 USC § 1 12
`
`The following is a quotation of 35 U.S.C. 112(a)/1St 1i:
`
`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.
`
`1.
`
`Claims 1-11 are rejected under 35 U.S.C. 112(a)/1St 1i, as failing to comply with
`
`the written description requirement and the enablement requirement. The claim(s)
`
`contains subject matter which was not described in the specification in such a way as to
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`reasonably convey to one skilled in the relevant art that the inventor, at the time the
`
`application was filed, had possession of the claimed invention, or to enable one skilled
`
`in the art to which it pertains, or with which it is most nearly connected, to make and/or
`
`use the invention. This is a new matter rejection.
`
`Claims 1, 5, and 7-9 recite "processing circuitry". However, no processing
`
`circuitry was disclosed in the originally-filed disclosure. While there is reference to a
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`"processing section", there is no reference to it being circuitry.
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`

`

`Application/Control Number: 14/364,911
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`Page 3
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`Art Unit: 3648
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`Claims 1, 9, and 11 recite a call mode according to a defined wireless
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`communications protocol and a locator mode according to the defined wireless protocol.
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`Applicant argues that both modes use the same protocol. However, this does not
`
`appear to be consistent with the originally-filed disclosure.
`
`In the originally-filed
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`disclosure, 1117 reads "In the present embodiment, wireless communication using a
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`digital enhanced cordless telecommunications (DECT) protocol is assumed to be
`
`performed between base unit 600 and each of mobile terminal 100 and mobile terminal
`
`@ (solid line arrows). Further, wireless communication using a protocol for locator 400
`
`using a radio format for DECT is assumed to be performed between mobile terminal
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`100 and locator 400 (a dotted line arrow)." (emphasis added). This seems to be
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`disclosure of a (1) DECT protocol for communications between a base unit and mobile
`
`terminals (i.e. call mode), and (2) a locator protocol for communications between a
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`mobile terminal and a locator (i.e. locator mode).
`
`Claims 4-5 recites the distance information is indicated by a sound level.
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`However, the originally-filed disclosure provides support for the frequency of
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`transmission of the sound being used (e.g. Fig. 1OA-C) rather than a level of the sound
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`(i.e. volume).
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`“Entitlement to a filing date does not extend to subject matter which is not
`
`disclosed, but would be obvious over what is expressly disclosed. It extends only to that
`
`which is disclosed. While the meaning of terms, phrases, or diagrams in a disclosure is
`
`to be explained or interpreted from the vantage point of one skilled in the art, all the
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`limitations must appear in the specification. The question is not whether a claimed
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`

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`Application/Control Number: 14/364,911
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`Page 4
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`Art Unit: 3648
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`invention is an obvious variant of that which is disclosed in the specification. Rather,
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`[the disclosure] must describe an invention, and do so in sufficient detail that one skilled
`
`in the art can clearly conclude that the inventor invented the claimed invention as of the
`
`filing date sought.
`
`the specification must contain an equivalent description of the
`
`claimed subject matter. A description which renders obvious the [claimed] invention
`
`is
`
`not sufficient.” -- Lockwood v. American Airlines Inc., 41 USPQ2d 1961 at 1966.
`
`The text of those sections of Title 35, U.S. Code not included in this action can
`
`be found in a prior Office action.
`
`2.
`
`Claims 1, 5-6 and 8-10 are rejected under 35 U.S.C. 112(b)/2nd 11 as being
`
`indefinite for failing to particularly point out and distinctly claim the subject matter which
`
`the inventor or a joint inventor regard as the invention.
`
`With regard to claims 1, 6, 9, and 10, there is no antecedent basis in the
`
`specification for the claim term(s): "transceiver". The specification refers to a radio that
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`receives and transmits, but does not use the term "transceiver".
`
`With regard to claims 5-6 and 8, there is no antecedent basis in the specification
`
`for the claim term(s): "user interface".
`
`Instead, the specification uses the term "touch
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`panel arranged on the surface of [an] LCD" in 1j51.
`
`37 CFR 1.75(d)(1) requires the “claim or claims must conform to the invention as
`
`set forth in the remainder of the specification and the terms and phrases used in the
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`claims must find clear support or antecedent basis in the description so that the
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`

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`Application/Control Number: 14/364,911
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`Page 5
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`Art Unit: 3648
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`meaning of the terms in the claims may be ascertainable by reference to the
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`description.’
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`(emphasis added).
`
`According to MPEP 608.01 (0): "The use of a confusing variety of terms for the
`
`same thing should not be permitted.
`
`[Applicant] should make appropriate amendment
`
`of the specification whenever [application] nomenclature is departed from by
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`amendment of the claims so as to have clear support or antecedent basis in the
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`specification for the new terms appearing in the claims.".
`
`Simply paraphrasing the claim in the specification, without relating the language
`
`in the claim with the rest of the disclosure, would be insufficient. This would not make
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`the meaning of the terms in the claims any more ascertainable than they are using the
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`claim language, alone.
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`“We note that the patent drafter is in the best position to resolve the ambiguity in
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`the patent claims, and it is highly desirable that patent examiners demand that
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`applicants do so in appropriate circumstances so that the patent can be amended
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`during prosecution rather than attempting to resolve the ambiguity in litigation”,
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`Hal/iburton Energy Services Inc. v. M—l LLC., 85 USPQ2d 1654 at 1663.
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`Claim(s) 1-3, 8-9, and 11 is/are rejected under pre-AlA 35 U.S.C. 102(b) as being
`
`anticipated by Hironari (JP 2012-099016 A, submitted by applicant in the IDS dated
`
`06/12/2014), where all citations are to the English translation.
`
`In regard to claim 1, Hironari discloses:
`
`

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`Application/Control Number: 14/364,911
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`Page 6
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`Art Unit: 3648
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`a radio transceiver (17, Fig. 1; 16, Fig. 4; 1120); and
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`processing circuitry (10, 160, Fig. 4).
`
`The remaining claim limitation(s) are recited in functional language. There is no
`
`structure recited.
`
`While features of an apparatus may be recited either structurally or functionally,
`claims directed to an apparatus must be distinguished from the prior art in terms of
`structure rather than function.
`In re Schreiber, 44 USPQ2d 1429 at 1431 -32.
`“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard
`Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525 (emphasis in original). A claim containing
`a “recitation with respect to the manner in which a claimed apparatus is intended to be
`employed does not differentiate the claimed apparatus from a prior art apparatus” if the
`prior art apparatus teaches all the structural limitations of the claim. EX parte Masham,
`2 USPQ2d 1647. Where functional language is present, in order to anticipate, the prior
`art must be capable of performing the function claimed, but the function need not be
`disclosed by the prior art. The prior art must be devoid of any structure that would
`preclude it from functioning in that manner. See MPEP 2114. “It is well settled that the
`recitation of a new intended use for an old product does not make a claim to that old
`product patentable." In re Schreiber, 44 USPQ2d 1429. See also In re Pearson, 181
`USPQ 641 ; In re Yanush, 177 USPQ 705; In re Finsterwa/der, 168 USPQ 530; In re
`Casey, 152 USPQ 235; In re Otto, 136 USPQ 458; EX parte Masham, 2 USPQ 2d 1647.
`
`Here, the radio transceiver is disclosed as performing the function of operating in
`
`call mode receiving a first radio signal, and in locator mode receiving a second radio
`
`signal (Fig. 1; 1112), where the call signals are received from a base station and locator
`
`signals are received from an RFID tag. The transceiver would be capable of using a
`
`same protocol for both call mode and locator mode.
`
`It is noted that Hironari discloses
`
`the use of the same protocol to the extent that applicant discloses the use of the same
`
`protocol, where both have communications with a base to establish a phone call and
`
`both have communications with a tag to establish a level of distance between the phone
`
`and the tag.
`
`The processing circuitry is discloses as performing the functions of:
`
`

`

`Application/Control Number: 14/364,911
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`Page 7
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`Art Unit: 3648
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`(120);
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`measuring received signal strength of the received second radio signal
`
`determining distance information indicating a level of a distance between
`
`the radio transceiver and the locator, based on the measured received signal
`
`strength (Fig. 5; 1122; 1140);
`
`outputting the determined distance information (12, Fig. 1; 104, Fig. 4; 76,
`
`Fig. 11;1121; 1139); and
`
`after outputting the determined distance information, transitioning from the
`
`locator mode to the call mode (Fig. 10, the final step after 8215, which is "End"
`
`written in Japanese; 1143), where the locator mode ends, leaving the phone as a
`
`phone (i.e. it's main function is call mode).
`
`In regard to claim 2, Hironari further discloses a distance information table
`
`storage section that stores a distance information table in which multiple levels of the
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`received signal strength are associated with the distance information, wherein the
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`respective distance information determining section determines the distance information
`
`based on the measured received signal strength with reference to the distance
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`information table (Fig. 5; 1122; 1140).
`
`In regard to claim 3, Hironari further discloses the distance information is image
`
`information indicating a level of the distance in text or graphic form; and image
`
`information is displayed on a screen of the mobile terminal (12, Fig. 1; 104, Fig. 4; 76,
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`Fig. 11;1139).
`
`In regard to claim 8, Hironari further discloses:
`
`

`

`Application/Control Number: 14/364,911
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`Page 8
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`Art Unit: 3648
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`identification information of the locator (Fig. 6; 1123);
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`a display, which in operation displays the stored identification information (Fig. 9;
`
`1133);
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`a user interface which, in operation receives an operation from a user indicating
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`user selection of the identification information (13, Fig. 4; 1112; 1135), wherein
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`the processing circuitry outputs the distance information of the locator
`
`corresponding to the selected identification information (1135).
`
`In regard to claim 9, Hironari discloses:
`
`a locator (2, Fig. 1; 1120);
`
`a mobile terminal including a radio transceiver (17, Fig. 1; 16, Fig. 4; 1120) and
`
`processing circuitry (10, 160, Fig. 4).
`
`The remaining claim limitation(s) are recited in functional language. There is no
`
`structure recited.
`
`While features of an apparatus may be recited either structurally or functionally,
`claims directed to an apparatus must be distinguished from the prior art in terms of
`structure rather than function.
`In re Schreiber, 44 USPQ2d 1429 at 1431 -32.
`“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard
`Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525 (emphasis in original). A claim containing
`a “recitation with respect to the manner in which a claimed apparatus is intended to be
`employed does not differentiate the claimed apparatus from a prior art apparatus” if the
`prior art apparatus teaches all the structural limitations of the claim. EX parte Masham,
`2 USPQ2d 1647. Where functional language is present, in order to anticipate, the prior
`art must be capable of performing the function claimed, but the function need not be
`disclosed by the prior art. The prior art must be devoid of any structure that would
`preclude it from functioning in that manner. See MPEP 2114. “It is well settled that the
`recitation of a new intended use for an old product does not make a claim to that old
`product patentable." In re Schreiber, 44 USPQ2d 1429. See also In re Pearson, 181
`USPQ 641 ; In re Yanush, 177 USPQ 705; In re Finsterwa/der, 168 USPQ 530; In re
`Casey, 152 USPQ 235; In re Otto, 136 USPQ 458; EX parte Masham, 2 USPQ 2d 1647.
`
`

`

`Application/Control Number: 14/364,911
`
`Page 9
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`Art Unit: 3648
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`Here, the locator is disclosed as performing the function of transmitting and
`
`receiving radio signals (1112).
`
`Here, the radio transceiver is disclosed as performing the function of operating in
`
`call mode receiving a first radio signal, and in locator mode receiving a second radio
`
`signal (Fig. 1; 1112), where the call signals are received from a base station and locator
`
`signals are received from an RFID tag. The transceiver would be capable of using a
`
`same protocol for both call mode and locator mode.
`
`It is noted that Hironari discloses
`
`the use of the same protocol to the extent that applicant discloses the use of the same
`
`protocol, where both have communications with a base to establish a phone call and
`
`both have communications with a tag to establish a level of distance between the phone
`
`and the tag.
`
`The processing circuitry is discloses as performing the functions of:
`
`measuring received signal strength of the received second radio signal (120);
`
`determining distance information indicating a level of a distance between the
`
`radio transceiver and the locator, based on the measured received signal strength (Fig.
`
`5:122:14ox
`
`outputting the determined distance information (12, Fig. 1; 104, Fig. 4; 76, Fig.
`
`11; 1121; 1139); and
`
`after outputting the determined distance information, transitioning from the
`
`locator mode to the call mode (Fig. 10, the final step after 8215, which is "End" written
`
`in Japanese; 1143), where the locator mode ends, leaving the phone as a phone (i.e. it's
`
`main function is call mode).
`
`

`

`Application/Control Number: 14/364,911
`
`Page 10
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`Art Unit: 3648
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`In regard to claim 11, Hironari discloses:
`
`receiving, at the mobile terminal in the call mode, a first radio signal in
`
`accordance with a defined wireless communications protocol from a master device of a
`
`cordless phone system (1112), where mobile phones communicate with base stations
`
`using a defined wireless communications protocol;
`
`receiving, at the mobile terminal in the locater mode, a second radio signal
`
`transmitted in accordance with the defined wireless communications protocol from a
`
`locater (Fig. 1; 1112), where Hironari discloses the use of the same protocol to the extent
`
`that applicant discloses the use of the same protocol, where both have communications
`
`with a base to establish a phone call and both have communications with a tag to
`
`establish a level of distance between the phone and the tag;
`
`measuring, in the locater mode, received signal strength of the received second
`
`radio signal (120);
`
`determining, in the locater mode, distance information indicating a level of a
`
`distance between the mobile terminal and the locater; based on the measured received
`
`signal strength (Fig. 5; 1122; 1140);
`
`outputting, in the locater mode, the determined distance information (12, Fig. 1;
`
`104, Fig. 4; 76, Fig. 11; 1121; 1139); and
`
`after outputting the determined distance information, transitioning from the
`
`locater mode to the call mode (Fig. 10, the final step after 8215, which is "End" written
`
`in Japanese; 1143), where the locator mode ends, leaving the phone as a phone (i.e. it's
`
`main function is call mode).
`
`

`

`Application/Control Number: 14/364,911
`
`Page 11
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`Art Unit: 3648
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`4.
`
`Claim 4 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Hironari, as applied to claim 1, above, and further in view of Cyganski (US
`
`2013/0099975 A1).
`
`Hironari further discloses the distance information is sound information indicating
`
`a distance using a pulse rate of the sound signals (18, Fig. 4; 1141-42).
`
`Hironari fails to disclose the distance information is sound information indicating
`
`a distance using a level of the distance by sound level.
`
`Cyganski teaches that indicating a distance using sound pulse rate or sound
`
`level/volume are known alternatives (1161). Thus, these two elements were it-
`
`recognized eguivalents at the time of the invention. One of ordinary skill in the art would
`
`have found it obvious to substitute a sound level for the sound pulse rate of Hironari.
`
`Additionally, this is a simple substitution of one known, equivalent element for another to
`
`perform the same function and obtain predictable results. Because both elements are
`
`known systems for indicating a distance using sound, it would have been obvious to one
`
`of ordinary skill in the art to substitute one for the other to achieve the predictable result
`
`of indicating the distance using sound.
`
`5.
`
`Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Hironari and Cyganski, as applied to claim 4, above, and further in view of Charych (US
`
`2005/0285742 A1).
`
`Hironari further discloses:
`
`

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`Application/Control Number: 14/364,911
`
`Page 12
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`Art Unit: 3648
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`the distance information includes image information indicating a level of the
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`distance in text or graphic form (12, Fig. 1; 104, Fig. 4; 76, Fig. 11; 1139) and sound
`
`information indicating a level of the distance by sound level (18, Fig. 4; 1141-42), and
`
`the mobile terminal further comprises an operating section that receives an
`
`operation from a user (13, Fig. 4; 1112; 1135); and
`
`wherein the indicating section outputs the distance information (12, Fig. 1; 104,
`
`Fig. 4; 76, Fig. 11; 1121; 1139).
`
`Hironari fails to disclose the user selecting, through the operating section, any
`
`one of or both of displaying or indicating with sound information the distance
`
`information, wherein an output selecting section receives the selection and the
`
`indicating section outputs the distance information according to the selection received
`
`by the output selecting section.
`
`In particular, Hironari fails to specify whether the display disclosure and the audio
`
`disclosure are options to be used alternatively, whether they are to be used together to
`
`complement each other, or whether all three are options.
`
`Charych teaches that a visual indicator, an audio indicator, or both can be used
`
`in an object locator system (1121-22).
`
`Using one or the other or both options is a combining of prior art elements
`
`according to known methods to yield predictable results, the predictable result being
`
`that the distance to the object to be located is indicated.
`
`Alternatively, one of ordinary skill in the art would be left to consider the different
`
`possibilities based on the lack of specificity of Hironari, and would have recognized that
`
`

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`Application/Control Number: 14/364,911
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`Page 13
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`Art Unit: 3648
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`there are situations when each of the options would be preferred (e.g. when others are
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`nearby that may be disturbed by unwanted sounds, when someone visually-impaired is
`
`using the system, when someone desires to find an object most quickly), and would
`
`thus have found it obvious to provide all options to increase the flexibility, and thus the
`
`desirability, of the system.
`
`6.
`
`Claims 6-7 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Hironari, as applied to claim 1, above, and further in view of Doria (US
`
`2011/0304480 A1).
`
`In regard to claim 6, Hironari further discloses a user interface which, in
`
`operation, receives an operation from a user (13, Fig. 4; 1112; 1135).
`
`Hironari fails to disclose the operation from the user indicating user selection of
`
`whether or not the locator makes sound (13, Fig. 4; 1112; 1135), wherein the radio
`
`transceiver, in operation transmits instruction information indicating the received user
`
`selection to the locator.
`
`Doria teaches receiving a selection from a user of whether or not the locator
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`makes sound and that transmits instruction information indicating the received selection
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`to the locator through the radio section, in order to help the user identify the object the
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`locator is attached to (1130; 1133).
`
`It would have been obvious to one of ordinary skill in the art to include this
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`feature in order to help the user identify the location of the object of interest, as
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`motivated by Doria. Additionally, this is a combining of prior art elements according to
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`

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`Application/Control Number: 14/364,911
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`Page 14
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`Art Unit: 3648
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`known methods to yield predictable results, the predictable result being that the object
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`of interest is located/found by the user.
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`In regard to claim 7, it would have been obvious to one of ordinary skill in the art
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`to allow the user to select the sound disabling option of the mobile terminal of Hironari
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`and the visual indication option of the locator of Doria together when the user does not
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`wish to have sounds disturb others that may be nearby.
`
`7.
`
`Claim 10 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
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`Hironari, as applied to claim 9, above, and further in view of McCrosky (US
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`2010/0240404 A1).
`
`Hironari fails to disclose the locator further comprises making a sound on a
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`condition that a distance between the locator and the mobile terminal is not greater than
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`a predetermined value/is within a threshold.
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`McCrosky teaches a locator device, in a locating system for an object attached to
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`a locator, which comprises making a sound on condition that a distance between the
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`locator and the mobile terminal is not greater than a predetermined value/is within a
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`threshold, in order to help the user identify the location of the object (1149, final
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`sentence).
`
`It would have been obvious to one of ordinary skill in the art to include this
`
`feature in order to help the user identify the location of the object of interest, as
`
`motivated by McCrosky. Additionally, this is a combining of prior art elements according
`
`

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`Application/Control Number: 14/364,911
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`Page 15
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`Art Unit: 3648
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`to known methods to yield predictable results, the predictable result being that the
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`object of interest is located/found by the user.
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`8.
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`The following reference(s) is/are also found relevant:
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`Klitsgaard (US 2002/0014955 A1), which teaches a locator tag using a Digital
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`Enhanced Cordless Telecommunications (DECT) protocol (1127; 1135).
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`Soomro (US 2009/0315717 A1), which teaches a locator tag using a Digital
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`Enhanced Cordless Telecommunications (DECT) protocol (1122).
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`Cannon (US 5,689,238 A), which teaches an object locating system that
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`indicators a level of distance to the object.
`
`English translations of the IDS documents identified as X-references in the
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`International Search Report.
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`Applicant is encouraged to consider these documents in formulating their
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`response (if one is required) to this action, in order to expedite prosecution of this
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`application.
`
`Response to Arguments
`
`9.
`
`Applicant’s arguments on p. 7, with respect to the 35 USC 112(f) interpretation
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`and 35 USC 112(b) rejection(s), have been fully considered and are persuasive. The
`
`interpretations and rejection(s) have been withdrawn.
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`

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`Application/Control Number: 14/364,911
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`Page 16
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`Art Unit: 3648
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`10.
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`Applicant’s arguments on p. 7-8, with respect to the 35 USC 101 rejection(s)have
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`been fully considered and are persuasive. The rejection(s) of these claims have been
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`withdrawn.
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`11.
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`Applicant’s arguments on p. 8, with respect to the prior art rejection(s) have been
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`fully considered but they are not persuasive.
`
`Applicant argues that Hironari fails to disclose both call mode and locator mode
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`using a same defined wireless communications protocol. However, as detailed in the
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`rejection, above, it appears that Hironari uses the same protocol to the same extent the
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`originally-filed disclosure describes the use of the same protocol.
`
`Conclusion
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`12.
`
`Applicant's amendment of 06/12/2017 necessitated the new ground(s) of
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`rejection presented in this Office action, e.g., claim(s) 1 was/were significantly
`
`amended, necessitating the new grounds of rejection. Accordingly, THIS ACTION IS
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`MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time
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`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
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`

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`Application/Control Number: 14/364,911
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`Page 17
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`Art Unit: 3648
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to Fred H. Mull whose telephone number is 571-272—6975.
`The examiner can normally be reached on Monday through Friday from approximately
`9—5:30.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`supervisor, Tashiana R. Adams can be reached on 571-270-5228. The fax number for
`the organization where this application or proceeding is assigned, for the submission of
`official papers, is 571-273-8300. The direct fax number for the examiner for the
`submission of unofficial papers, such as a proposed amendment or agenda for an
`interview with the examiner, is 571-273-6975.
`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 access to the Private PAIR system, contact the Electronic
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`USPTO Customer Service Representative or access to the automated information
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
`
`Fred H. Mull
`
`Examiner
`
`Art Unit 3648
`
`/F. H. M./
`
`Examiner, Art Unit 3648
`
`/BERNARR GREGORY/
`
`Primary Examiner, Art Unit 3648
`
`

`

`
`
`Search ”ates
`
`Application/Control No.
`
`14/364,911
`Examiner
`
`Fred H. Mull
`
`Applicant(s)/Patent under
`Reexamination
`
`HOKAZONO ET AL.
`Art Unit
`
`3648
`
`
`
`Inventor Name Search
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`EAST
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`SEARCHED
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`G018
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`11/06
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`3/20/2017
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`/FM/
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`SEARCH NOTES
`(INCLUDING SEARCH STRATEGY)
`—--
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`Inventor Name Search
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`PLUS Search
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`EAST
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`3/20/2017
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`US Patent and Trademark Office
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`Part of Paper No. 20170622
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`