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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/636,562
`
`02/04/2020
`
`Masakazu HOASHI
`
`20296.0134USWO
`
`2251
`
`HAY
`
`M
`
`LERé
`
`HAMRE, SCHUMANN, MUELLER & LARSON P.C.
`45 South Seventh Street
`Suite 2700
`MINNEAPOLIS, MN 55402-1683
`
`LAL DANIEL
`
`2645
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/25/2021
`
`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):
`PTOMail @hsml.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`12-18 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`(J Claim(s)__ is/are allowed.
`Claim(s) 12-15 and 17 is/are rejected.
`Claim(s) 16 and 18 is/are objected to.
`1) 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
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) 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). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)D) All
`1.1) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of 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)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20211017
`
`Application No.
`Applicant(s)
`16/636,562
`HOASHI etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`DANIEL LAI
`2645
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS 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 betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 10 August 2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/636,562
`Art Unit: 2645
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventor to file provisions of the AJA.
`
`Response to Amendment
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`Response to Arguments
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`Applicant’s arguments with respect to claim(s) 12-18 have been considered but are moot
`
`because the new groundofrejection does not rely on any reference applied in the prior rejection
`
`of record for any teaching or matter specifically challenged in the argument.
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`(a)(1) the claimed invention waspatented, described in a printed publication, or in public use, on sale,
`or otherwise available to the public before the effective filing date of the claimed invention.
`
`Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`“SMART AIR CONDITIONER USER MANUAL”byToshiba, dated July 2018 (hereinafter
`
`Toshiba).
`
`Regarding claim 12, Toshiba discloses a control method that is achieved by an
`
`application installed in a portable terminal (p. 5-7, an application (App)is installed on a
`
`

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`Application/Control Number: 16/636,562
`Art Unit: 2645
`
`Page 3
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`smartphone (portable terminal) to connect a smart appliance), the control method comprising the
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`steps of:
`
`displaying a screen that shows a user in what mannerto press a button of a
`
`communication device to make the communication device to operate in a software access point
`
`mode(p. 15, 8.5.3 and 8.5.4, display on the smartphoneinstructing user to press and hold a
`
`button for 3-5 secondsfor the smart appliance (communication device) to enter AP mode);
`
`connecting the portable terminal to the communication device in operation in the
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`software access point mode,as a result of an input by the user with the screen, the input being an
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`instruction to proceed to a next step (p. 15-16, 8.5.4, display screen showing “Next” button for
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`user to move to next step to connect to network formed by the smart appliance); and
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`sending a service set identifier (SSID) of an access point and a password for connecting
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`to the access point to the communication device (p. 16, 8.5.5 and 8.5.6, the App prompts user to
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`provide SSID and password to connect the smart appliance to an AP of the SSID), wherein
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`in the step of connecting, the application instructs an operating system (OS) ofthe
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`portable terminal to connect the portable terminal to the communication device in operation in
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`the software access point mode(p. 6, operating system for ANDROID or APPLE,p. 15, 8.5.4,
`
`using WLANsettings of operating system to connect to the smart appliance in AP mode); and
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`a SSID of the communication device that operates in the software access point mode, and
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`a password for connecting to the communication device that operates in the software access point
`
`mode are incorporated in a program ofthe application in advanceofinstallation of the
`
`application to the portable terminal (p. 4, wireless network standard according to IEEE 802.11
`
`b/g/n, p. 15, 8.5.4, the App displays network ID (network ID according to IEEE 802.11 b/g/n
`
`

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`Application/Control Number: 16/636,562
`Art Unit: 2645
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`Page 4
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`being displayed as a name(instead of IP address or MAC address) is essentially an SSID) and
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`password to connect the smartphone to the smart appliance in AP mode).
`
`Regarding claim 13, Toshiba further discloses displaying a screen that requests an input
`
`of the password by the user, when the connection between the portable terminal and the
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`communication device is established in the step of connecting (p. 15, 8.5.4, where a display
`
`prompts user to use a password to connect to network for the AP operated by the smart
`
`appliance), wherein in the step of sending, the password input from the screen is sent to the
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`communication device (p. 16, 8.5.5, screen prompting user to type in password).
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejectionsset forth in this Office action:
`
`A patent for a claimed invention maynot 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 obviousbefore the effective
`filing date of the claimed invention to a person having ordinaryskill in the art to which the claimed
`invention pertains. Patentability shall not be negated by the mannerin 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 priorart.
`
`2. Ascertaining the differences betweenthe prior art and the claimsat issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
`
`

`

`Application/Control Number: 16/636,562
`Art Unit: 2645
`
`Page 5
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`This application currently namesjoint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was commonly
`
`owned asofthe effective filing date of the claimed invention(s) absent any evidenceto the
`
`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly ownedasofthe effective filing date
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`of the later invention in order for the examinerto 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.
`
`Claims 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toshiba.
`
`Regarding claims 14 and 15, Toshiba discloses the limitations of claim 12 as applied
`
`above. Toshiba discloses the SSID and the password to be sentin the step of sending is the
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`passwordfor connecting the access point (see Toshiba, p. 16, 8.5.5 and 8.5.6, password typed by
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`user to connect to wireless network (access point) preferred by the user), and the SSID ofthe
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`access point is acquired from the OS(p. 15-16, 8.5.4 and 8.5.5, wireless network ID (SSIDs)
`
`obtained by wireless network settings function of operating system); and the password for
`
`connecting the access pointis identified based on the input by the user(p. 16, 8.5.5, password
`
`typed by user).
`
`Toshiba does not explicitly disclose the SSID is the SSID ofthe access point to which the
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`portable terminal is connected whenthe screenis displayed in the step of displaying.
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`However, since Toshiba discloses the useris instructed to select a preferred wireless
`
`network, it would simply be a matter of a preferred SSID being selected by the user, i.e., a home
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`SSID that is connected by the smartphone at a location where the smart appliance is
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`

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`Application/Control Number: 16/636,562
`Art Unit: 2645
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`Page 6
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`implemented(i.e., user’s home). It would have been obvious to one having ordinary skill in the
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`art before the effective filing date of the claimed invention to select an SSID whichrepresents
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`network that the smartphone is connected whenthe screen is displayedin the step of displaying
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`for user to configure devices in the same homenetwork environment for simple implementation.
`
`Claim 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toshiba in view
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`of “FAQ Home Network System” by Panasonic System Networks Co., Ltd., dated 02 February
`
`2017 (hereinafter Panasonic).
`
`Regarding claim 16, Toshiba discloses the limitations of claim 12 as applied above.
`
`Toshiba further discloses the App is configured to show the user whenthereis a failure and
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`urges the user to check networksettings and try again (p. 16, 8.5.6).
`
`Toshiba does not expressly disclose connecting the portable terminal device to the
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`communication device in operation in the software access point modeis failed, an error screen
`
`that urges the user to perform connecting again near the communication deviceis displayed.
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`In an analogous art, Panasonic discloses when a user receives an error message regarding
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`a telephone handset(relates to smartphone of Toshiba) has no connection with a hub(relates to
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`AP operated by the smart appliance of Toshiba), a salutation is to move closer to the hub andtry
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`again (p. 20, D12 and D13). It would have been obvious to one having ordinary skill in the art
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`before the effective filing date of the claimed invention to configure the App of Toshiba to
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`display message to urge user to movecloserto the smart appliance (operating as soft AP) when
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`the smartphonefails to connect to the soft AP operated by the smart appliance as suggested by
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`Panasonic in order to solve connection issue by moving the smartphonecloserto the smart
`
`

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`Application/Control Number: 16/636,562
`Art Unit: 2645
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`Page 7
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`appliance to improve signal quality and thereby allow userto be able to finish setup process for
`
`the smart appliance.
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`Allowable Subject Matter
`
`Claims 16 and 18 are objected to as being dependent upona rejected base claim, but
`
`would be allowable if rewritten in independent form includingall of the limitations of the base
`
`claim and any intervening claims.
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`Conclusion
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`The prior art made of record and notrelied upon is considered pertinent to applicant's
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`disclosure.
`
`Wingate, JR. et al. (US 2018/0101377 A1) discloses an application installed on a mobile
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`device (Abstract) with operating systems (paragraphs 93-94 and 108) configured to determine
`
`when the mobile device is connected to a WI-FI connection and when the mobile device is
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`determined not connected to a WI-FI connection, the application displays a message to prompt
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`user to connect to a WI-FI network (paragraph 110) and connect to a measurementdevice after
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`other connections are terminated (paragraph 114).
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`Sahni discloses a method of configuring WLAN between a mobile controlling device
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`(paragraphs 47 and 61, mobile device as controller 210) and a module (paragraph 61, module
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`220), wherein when the module operates in soft AP mode to discover the mobile controlling
`
`

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`Application/Control Number: 16/636,562
`Art Unit: 2645
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`Page 8
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`device, the module receives SSID and password from the mobile controlling device in a
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`connection request to establish a secure connection (paragraph 61).
`
`“Smart Humidifier User’s Guide” for Model: MBP86SN by Motorola, dated 09 August
`
`2017, discloses a process to setup a humidifier to a WI-FI network via an application installed in
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`a device running an operating system (p. 13), wherein a screen is displayed by the application
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`prompting userto press and hold a button for 3 seconds to enter WI-FI pairing mode (p. 15, A5
`
`and 4.1.3), and user selects a WI-FI network and enter passwordto send the information to the
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`humidifier, which connects the humidifier to the WI-FI network (p. 17).
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP§ 706.07(a).
`
`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
`
`MONTHSfrom the mailing date of this action. In the eventa first reply is filed within TWO
`
`MONTHSof the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTHshortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
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`however,will the statutory period for reply expire later than SIX MONTHSfrom the date of this
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`final action.
`
`

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`Application/Control Number: 16/636,562
`Art Unit: 2645
`
`Page 9
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DANIEL LAI whose telephone numberis (571)270-1208. The
`
`examiner can normally be reached Monday - Thursday, 10:00am - 4:30pm.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
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`
`encouraged to use the USPTO Automated Interview Request (AIR)at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Anthony Addycan be reached on (571)272-7795. The fax phone numberfor the
`
`organization wherethis application or proceedingis assigned is 571-273-8300.
`
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`
`/DANIEL LAI/
`Primary Examiner, Art Unit 2645
`
`