DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
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.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/000964. Although the claims at issue are not identical, they are not patentably distinct from each other because: claims 1-4 of ‘964 recite additional elements and use the term target musical piece instead of a new musical piece, but they recite all the main patentable elements of claims 1-4 of present application ‘210.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims are generally indefinite, appearing to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. Much of the phrasing lacks clarity and it is unclear what the Applicant deems as their invention.
In claim 1, lines 5-6, please clarify what is intended by “in the past for each section of the musical piece in time”.
Further, with regards to those lines, “each section” is claimed, however, there is no previous mention of the musical piece having sections.
In claim 1, lines 7-8, please clarify what is intended by “pitches of notes configuring the musical piece”
Claim 1, line 8, “the section” is indefinite and lacks antecedent basis. Please clarify which of “each section” this section refers.
Claim 1, line 10, “a musical piece”, please clarify if this is the same as, related to, or different from the previously recited musical piece.
Claim 1, lines 13-14, the recitation of “the pitch information about the new musical piece” is indefinite, given there is no previous correlation between the pitch information and the new piece, and there is no recitation that pitch information is acquired for the new piece.
Claim 2, line 2, please clarify whether “an output” is the same as, related to, or different from the previously recited output.
Claim 2, lines 3-4, please clarify whether “a learning model” is the same as, related to, or different from the previously recited learning model.
Claim 3 recites that the processor uses the learning model, while preceding claim 1 recites that the processor builds the learning model. Please clarify whether the processor both builds and uses the learning model, and what exactly the processor uses the learning model for (i.e. “the at least one processor uses the learning model that further receives” is indefinite).
Claim 4, line 2, please clarify whether “a result of scoring” is the same as, related to or different from the previously recited result of scoring.
Claim 5, line 3, please clarify whether “a plurality of musical pieces” are related to the previously recited musical piece, and whether “a musical piece” is the same as, related to or different from the previously recited musical piece.
Claim 5 recites the limitation "the selection information" in line 5. There is insufficient antecedent basis for this limitation in the claim, given there is no previous mention of selection information.
Allowable Subject Matter
Claims 1-5 may be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
No prior art could be found which teaches, or fairly suggests, alone or in combination, all the claimed elements of the present invention.
However, once a better understanding of the present invention is received, a further search and consideration of the prior art will be conducted.
Presently, the closest prior art of record are the Japanese publications to Yabuki (JP 6366403 B2 & JP 2016-29429 A).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see the Notice of References Cited provided by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christina Schreiber whose telephone number is (571)272-4350. The examiner can normally be reached M-F 7-4 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is 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, Dedei Hammond can be reached at 571-270-7938. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTINA M SCHREIBER/Primary Examiner, Art Unit 2837 12/23/2025