Non-Final rejection
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a CON of 17/069,420 now a US PAT 11,535, 842, which claims benefit of 62/914,086 filed on 10/11/2019.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on 06/092023 before this office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
All the references cited therein have been considered by the examiner.
Claim status
4. In the claim listing filed on 06/09/2023 claims 1-17 are pending in this application. Claims 18-46 are canceled. Claims 4 and 6-17 are amended. No new matter has been added.
Abstract-Accepted
5. The abstract filed on 11/18/2022 has been accepted by the examiner
Specification-Accepted
6. The specification filed on 11/18/2022 has been accepted by the examiner.
The amendments to the specification in paragraph [0001 and 00171 have been accepted by the examiner. No new matter has been introduced.
The examiner has reviewed the specification. The specification is void of hyperlink and Trademark issues.
Drawings-Accepted
6. The drawings filed on 11/18/2022 has been accepted by the examiner.
Double Patenting Rejection
7. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
8. Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,535,842. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
9. Regarding instant claim 1, claim 1 of ‘842 patent is drawn to a method for preparing nucleic acid molecules for use in security and authentication of an artifact, the method comprising: obtaining a library of nucleic acid molecules encoding a security token, wherein the security token comprises a string of information which uniquely identifies the artifact; and applying a chemical operation to the library encoding the security token to obtain a hashed library of nucleic acid molecules encoding a hashed token.
Regarding instant dependent claims 2-17, claims of ‘842 patent are drawn to said dependent claims and therefore their subject matter is not patentably distinct.
Conclusion
10. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NARAYAN K. BHAT Ph. D. whose telephone number is (571)272-5540. The examiner can normally be reached MON-THURS 9am - 6.30 pm FRI 9 am -1 pm.
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/NARAYAN K BHAT/Primary Examiner, Art Unit 1683