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`Case: IPR2018-01592
`Patent No.: 9,320,122
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`EXHIBIT 1012
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`PRIME WIRE & CABLE, INC.
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` Petitioner,
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`v.
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`CANTIGNY LIGHTING
`CONTROL, LLC.
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` Patent owner
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`JASCO PRODUCTS, INC.
`
` Licensee
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
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`
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`15/822,295
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`11/27/2017
`
`John Joseph King
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`CEIC401D4
`
`7414
`
`THE LAW OFFICE OF JOHN J. KING, P.C.
`PO. BOX 1555
`WHEATON, IL 60187-1555
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`TRAN’ANHQ
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`PAPER NUIVIBER
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`ART UNIT
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`2844
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`NOTIFICATION DATE
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`DELIVERY MODE
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`03/26/2018
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`ELECTRONIC
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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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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`JOHN.KING @ JKINGLAWOFFICECOM
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 15/822,295 KING, JOHN JOSEPH
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`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2844ANH TRAN $233
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`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 CFR 1.136(a).
`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).
`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).
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`In no event, however, may a reply be timely filed
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 11/27/17.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| 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
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
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`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20180318
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`Disposition of Claims*
`5)|XI CIaim(s)1-_20is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s 1-_20 is/are rejected.
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`is/are objected to.
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`) )
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`_
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`are subject to restriction and/or election requirement.
`9)|:l Claim(s
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`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
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`, or send an inquiry to PPI-Ifeedback{<‘buspto.qov.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 11/27/17is/are: a)lZl accepted or b)I:I 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).
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`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
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
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`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
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`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.
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`Attachment(s)
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`
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`

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`Application/Control Number: 15/822,295
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`Page 2
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`Art Unit: 2844
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Double Patenting
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`1.
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
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`least one examined application claim is not patentably distinct from the reference
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`claim(s) because the examined application claim is either anticipated by, or would have
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`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
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`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
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`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321(d)
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`may be used to overcome an actual or provisional rejection based on nonstatutory
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`double patenting provided the reference application or patent either is shown to be
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`commonly owned with the examined application, or claims an invention made as a
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`result of activities undertaken within the scope of a joint research agreement. See
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`MPEP § 717.02 for applications subject to examination under the first inventor to file
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`

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`Application/Control Number: 15/822,295
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`Page 3
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`Art Unit: 2844
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(I)(1) -
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`706.02(I)(3) for applications not subject to examination under the first inventor to file
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`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321 (b).
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`The USPTO Internet website contains terminal disclaimer forms which may be
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`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
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`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
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`PTO/AlA/25, or PTO/AlA/26) should be used. A web-based eTerminal Disclaimer may
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`be filled out completely online using web-screens. An eTerminal Disclaimer that meets
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`all requirements is auto-processed and approved immediately upon submission. For
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`more information about eTerminal Disclaimers, refer to
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`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`2.
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`Claims 1, 8-9, 14-15, and 20 are rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 1-2, 7, 8, 14-17, and 20 of U.S. Patent No.
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`9,320,122. Although the claims at issue are not identical, they are not patentably distinct
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`from each other because the claim recitations are merely reworded to recite the same
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`limitation in different language and some of the limitations have been grouped in a
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`slightly different manner but still overall set forth the same limitations. All the recited
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`elements and limitations are found in claims 1-2, 7, 8, 14-17, and 20 of U.S. Patent No.
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`9,320,122.
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`

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`Application/Control Number: 15/822,295
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`Page 4
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`Art Unit: 2844
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`Claim Rejections - 35 USC § 102
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`2.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`3.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed invention was patented, 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.
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`4.
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`Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
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`Hatemata et al. (6,658,303).
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`Claim 1, Hatemata shows a timer (A, fig. 33 and 120, fig. 28) adapted to apply
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`power to a device (light L, fig. 33), the timer comprising:
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`a first user selectable button (K1, fig. 28) of a user interface, wherein the first
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`user selectable button establishes an on time and an off time of a first timing pattern
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`(...NORMAL... see col. 28, lines 12-50); and
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`a second user selectable button (K7, K8, or Daylight Saving Time K1 0 , fig. 28) of
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`the user interface, wherein the second user selectable button establishes an on time
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`and an off time of a second timing pattern that is different than the first timing pattern
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`(e.g., Daylight Saving Time K10 and see, col. 33, lines 12-34...The microcomputer 102
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`adopts the time resulting from advancing the time counted by the real-time clock 104 by
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`Application/Control Number: 15/822,295
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`Page 5
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`Art Unit: 2844
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`a predetermined time as the current time for performing timer control, etc....; therefore,
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`the on time and an off time are advancing time which is different).
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`Claim 2, Hatemata shows the timer of claim 1 wherein each of the first timing
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`pattern and the second timing pattern comprises a daily timing pattern (e.g., see Fig.
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`34).
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`Claim 3, Hatemata shows the timer of claim 1 wherein only one of the first user
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`selectable button and the second user selectable button can be selected at a time (only
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`one can be select at a time).
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`Claim 4, Hatemata shows the timer of claim 3 wherein a selected button of the
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`first user selectable button and the second user selectable button will be deactivated
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`when the other of the first user selectable button and the second user selectable button
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`is selected (when Daylight Saving Time K10 is press, the NOMAL is deactivated
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`because the pattern for NORMAL mode is not operated).
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`Claim 5, Hatemata shows the timer of claim 1 further comprising a selection
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`indicator indicating when either the first user selectable button or the second user
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`selectable button has been selected (...reverse-displayed...col. 28 and col. 33, lines 12-
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`22).
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`Claim 6, Hatemata shows the timer of claim 1 wherein each of the first user
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`selectable button and the second user selectable button comprises a selection indicator
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`indicating when the user selectable button has been selected (...reverse-
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`displayed...col. 28 and col. 33, lines 12-22).
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`Application/Control Number: 15/822,295
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`Page 6
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`Art Unit: 2844
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`Claim 7, Hatemata shows the timer of claim 1 wherein a selection indicator
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`associated with a selected button of the first user selectable button and the second user
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`selectable button will be turned off if the other of the first user selectable button and the
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`second user selectable button is selected (the reverse-displayed only shows one
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`selected button at a time).
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`Claim 8, Hatemata shows the timer of claim 1 further comprising an actuator
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`(Timer Off K9, Fig. 28 and see, col. 32, lines 5-25) for overriding a state of the timer to
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`turn a device attached to the timer on or off.
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`Claims 9-20 are rejected as above because of similar elements and limitations.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ANH TRAN whose telephone number is (571 )272-1 81 3.
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`The examiner can normally be reached on M-Th (8:00-6:30).
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Alexander Taningco can be reached on 571 -272-2048. The fax phone
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`number for the organization where this application or proceeding is assigned is 571-
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`273-8300.
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`

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`Application/Control Number: 15/822,295
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`Page 7
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`Art Unit: 2844
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`/ANH TRAN/
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`Primary Examiner, Art Unit 2844
`3/18/18
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`