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 .
Response to Arguments
Applicant's arguments filed 9/8/2025 have been fully considered. The applicant’s arguments regarding the prior art are persuasive regarding how the nodes are determined at the server and how the nodes relate to each other. An updated search did not reveal any prior art that would anticipate or make the current claimed invention obvious. The applicant’s arguments regarding double patenting are not persuasive. The applicant states that they do not own patents 11570682 and 11570545. This is true. The “5” and “7” were inverted by mistake. The 892 showed what the correct number is and it is reasonable to assume that the applicant would know that they own 11750682 and 11750545, as they are parent cases of 18/143,312 and 18/220,805, respectively. The applicant argues the amendments overcome the other double patenting rejections without explaining what limitations are patentably distinct. All claims subject to the double patenting rejection are covering the exact same embodiment in each respective patent and application. Regarding written description, the amendments are not supported by the language of the original disclosure. The final two sentences of paragraph 86 do not actually make sense when considering what is disclosed. The applicant discloses that the pruned rule is run based on the partial decision but this does not make sense, considering what is disclosed, because as shown in the examples, the nodes that make up the pruned rule have nothing to do with the partial decision. The applicant has provided no explanation of how the pruned rule is executed based on the partial decision and it cannot be inferred what the applicant is trying to do with the pruned rule based on the partial decision when considering what is disclosed. The final sentence of paragraph 86 references a “final decision” but the disclosure does not provide any description of what this “final decision” actually is. The original disclosure failed to comply with the requirements for written description stipulated in section 2161.01(I) of the MPEP because the applicant failed to disclose how the functions of providing access to and configuring a feature are performed. Paragraph 86 does not provide a coherent description of the invention.
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 and 3-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-11, and 15 of copending Application No. 18/220,805 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the current application are covered by the claims in the ‘805 application. The third determination limitation in each independent claim cover the exact same subject matter when considering paragraph 86 of both applications.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-11, and 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,570,682. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim set is a broader version of that in the ’682 patent and does not feature any patentably distinct limitations.
Claims 1, 3-11, and 13-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,570,545. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim set is a broader version of that in the ’545 patent and does not feature any patentably distinct limitations.
Claims 1, 10, and 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, and 11 of U.S. Patent No. 11,258,738. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim set is a broader version of that in the ’738 patent and does not feature any patentably distinct limitations.
Claims 1, 10, and 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, and 11 of U.S. Patent No. 11,290,576. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim set is a broader version of that in the ’576 patent and does not feature any patentably distinct limitations.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-11, and 13-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Written Description Issue #1
Claim 1 covers the following limitations:
executing, at the first device, the second set of executable nodes of the pruned rule using the real-time device capabilities and the device hardware capabilities; and
configuring the requested feature based on the partial decision and the executed second set of nodes
Claims 10 and 11 cover the following limitations:
executing, at the first device, the second set of executable nodes of the pruned rule using the real-time device capabilities and the device hardware capabilities; and
providing access to the requested feature based on the partial decision and the results from executing the second set of nodes
The applicant disclosed the following regarding configuring the requested feature and providing access to the “feature”:
[0074] FIG. 9 is a diagrammatic representation of a client processing environment, in accordance with some example embodiments. The processor 902 includes one or more Client Feature 910, the Circumstance Engine 912, a Collection Scheduler 914,Rules 916 and a Data Bank 918. At runtime, the Client Feature 910 will call on the Circumstance Engine 912 to make a decision. The Circumstance Engine 912 can execute one or more rules from the Rules 916 locally and/or call the Circumstance Engine 810 to at least partially execute a relevant rule(s). The Circumstance Engine 912 can make a decision using data in the Data Bank 918, which includes device capabilities and/or user data (e.g., data usage, number of other client devices regularly in contact with, network type, connection type, storage memory remaining). Once a decision is reached, either by the Circumstance Engine 912 and/or in combination with the Circumstance Engine 810, the Client Feature 910 then acts per the decision made (e.g., implements the configuration decided on). The Collection Scheduler 914 schedules the collection of device data for the Collection Service 812 to ensure minimal interruption of the client device 102 (e.g., usage of processing power, battery, bandwidth) when the client device 102 is in use (e.g., collect data at night when a user is not communicating using the device).
[0086] The Circumstance Engine 912 on the client device sends the request to access the client device feature to the Circumstance Engine 810 (1504). The Circumstance Engine 810 receives the request to access the client feature and optionally determines the applicable rule for the access request (1506) from the Rules 816. In one embodiment, the applicable rule has a plurality of nodes. For example, rules 1000, 1100, 1200, and 1300 each have a plurality of nodes, as described above. Each feature has a rule associated with that feature as stored in the Rules 816 in a table or other format. The rules 816 are not limited to the rules 1000 - 1300 but include any number of rules including, but not limited to, the example properties listed below in any combination or subset thereof. The Device Lookup Service 814 then looks up the type of device sending the request (1508) and requests device capabilities from the device and/or data bank 818/918. The Circumstance Engine 810 determines nodes that can be executed and that cannot be executed based on device capabilities received and executes the rule based on the received device capabilities data from the Device Lookup Service 814 (e.g., type of device) (1510). For information unavailable to the Circumstance Engine 810, the Circumstance Engine 810 prunes the rule (1512) and sends a partial decision and pruned rule (undetermined nodes) to the Circumstance Engine 912 (1514) to use local data (e.g., bandwidth) to complete the decision. For example, in the rule 1100, the circumstance engine 810 executes the node 1106 to generate a partial decision and prunes the rule 1106 to remove the executed node 1106 to generate a pruned rule including any nodes that cannot be executed. The circumstance engine 810 then sends the result of node 1106 as the partial decision and a pruned rule 1100 that contains nodes 1104 and 1108, which can be determined by the circumstance engine 912 on the device. The Circumstance Engine 912 on the client device then runs (1516) the pruned rule based on the partial decision and local data and provides access to the client feature. The Client Feature 910 then configures and executes the feature based on the final decision reached.
The applicant did not provide support for what is claimed. Paragraph 74 references a “decision made” which it equates to a implementing a configuration decided on but does not provide any description of how the decision is reached or how that would implement a configuration. The final two sentences of paragraph 86 do not provide support for what is claimed. The next to last sentence of paragraph 86 states that “the client device then runs (1516) the pruned rule based on the partial decision and the local data and provides access to the client feature”. The applicant is stating that the act of running the pruned rule, performed by the client device, is based on the partial decision and the local data and also the client device provides access to the client feature. There is no disclosure that providing access to the requested feature is “based on the partial decision and the results from executing the second set of nodes”.
The next to last sentence of paragraph 86 actually states that it is the running of the pruned rule that is based on the partial decision. The applicant did not provide any description of how to run the pruned rule based on the partial decision. In the example in paragraph 86 regarding rule 1100, the applicant is stating that the server executes 1106 (user is employee) to generate a partial decision and then sends nodes 1104 and 1108 and the partial decision to the client. The client would then run the pruned rule, which is nodes 1104 and 1108 based on the partial decision of the user being an employee, according to the second to last sentence of paragraph 86. Node 1104 is an app version comparison and Node 1108 is a bandwidth comparison so it not at all apparent how these nodes, which define the pruned rule would be executed based on the user being an employee, as stipulated by the second to last sentence of paragraph 86. It cannot be inferred how evaluating an app version and bandwidth would be based on a user being an employee, as the concepts have nothing to do with each other.
The final sentence of paragraph 86 references configuring and executing the feature based on “the final decision” but the applicant does not define a “final decision” in any manner previously in paragraph 86. The final sentence does not convey a coherent idea in the context of what has been disclosed previously in paragraph 86. There is no support for claim 1, which configures the requested feature based on the partial decision and the executed second set of nodes. Configuration of the feature is based on the final decision which is not defined. Further, the second to last sentence of paragraph 86 make sit clear that it is the second set of nodes, which define the pruned rule, that are executed based on the partial decision so there is no reason to infer that the final decision that defines the configuration, in the final sentence of paragraph 86, also would include both the partial decision and the executed second set of nodes as claimed because the partial decision was already used to execute the pruned rule.
Written Description Issue #2
Claim 1 covers the following limitation:
wherein the plurality of nodes are logically interconnected such that execution results from the first set of nodes influence evaluation of the second set of nodes.
The applicant did not disclose any interconnection of nodes that makes the results of the first set of nodes influence the second set of nodes is evaluated. As previously explained, the example in paragraph 86 with respect to rule 1100 does not show any influence of the user being an employee on the evaluation of app version and bandwidth at the client device. The execution of the first set of nodes as disclosed does not have any influence of the evaluation of the second set of nodes. The evaluation is performed solely based on the conditions which define the nodes themselves and they are not disclosed as being evaluated dependent upon each other in any manner that would “influence”.
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 10, 11, and 13-21 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.
Claims 10 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: Claim 10 covers “a non-transitory computer-readable medium storing instructions that, when executed by one or more computer processors, cause one or more of the one or more processors to perform” the operations which define the claim. The first limitation makes it clear that the medium does not cover the server because the medium is performing a transmission to the server. Claim 11 covers a first device which performs the operations of the claim. Both claims 10 and 11 recite operations performed by a server which appear to be essential to the invention when considering paragraph 86 of the applicant’s disclosure. The server, however, is not covered by the scope of claims 10 and 11, which are solely directed towards the user device.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this 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 MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Trost can be reached at 571-272-7872. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOUGLAS B BLAIR/ Primary Examiner, Art Unit 2442