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 . This Office Action responds to the application filed on 5/2/2023, preliminary amendment filed on 5/8/2024, IDS filed on 11/20/2023, 5/7/2024, and 3/6/2026. Claims 1-20 are pending.
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).
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/142,483 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are obvious variations of each other, reciting similar steps/operations of performing a first routing operation and supplying the first set of routes to a machine-trained network to identify/add one or more via/redundant via locations, wherein the present claims recites “adding one or more redundant via locations” which is an obvious subset of the claims in the referenced application which recites “identifying one or more via locations”, wherein the further step of “modifying the one or more identified one or more identified via locations in each route in the group of routes” as recited in the reference application are covered the present claims 2 and 12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Allowable Subject Matter
Claims 1-20 would be allowable if the non-statutory obviousness double patenting rejection(s) under 35 U.S.C. 101, set forth in this Office action, are overcome.
The following is a statement of reasons for the indication of allowable subject matter:
As per claims 1-20, the independent claims 1 and 11, from which the respective claims depend, recite the method/non-transitory machine readable medium comprising a combination inventive steps/operations for performing a first routing operation to define a first set of one or more routes for a first set of one or more nets in the design layout; and supplying the first set of routes to a machine-trained network (MTN) to add, in the design layout, a set of one or more redundant via locations for a group of one or more routes in the set of routes to modify, as claimed, which the prior arts made of record failed to teach or suggest as claimed. Furthermore, under the 2019 Patent Eligibility Guideline, the claims are directed to patent eligible subject matter because (1) under Step 1, the claims are directed to a process, and article of manufacture, respectively; (2) under Step 2A, Prong One, the claims are not directed to mathematical concepts comprising mathematical relationships, mathematical formulas or equations, and mathematical calculations since no expressed equation or formula is recited in the claims; nor are the claims directed to a mental process since one of ordinary skilled in the art at the time of the filing of the invention, would NOT reasonably be able to perform the method mentally since the calculations would involve large amount of data associated with the electronic design, as normally found in the art of computer-aided design and analysis of circuits; nor are the claims directed to certain methods of organizing human activity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHALLAKA KIK whose telephone number is (571)272-1895. The examiner can normally be reached Maxiflex Mon-Fri 8:30AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Chiang can be reached at 5712727483. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Any response to this action should be mailed to:
Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450
or faxed to:
571-273-8300
/PHALLAKA KIK/Primary Examiner, Art Unit 2851 March 21, 2026
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