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 24-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,663,375 B2 (formerly application number 16/560,596, note that the instant application is a continuation of this application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are related to the reference claims in a genus/species relationship, with the instant claims being the genus to the reference claims’ species. The concordances between claims are as follows:
Instant claim 24 is equivalent to reference claim 1.
Instant claim 25 is equivalent to reference claim 1.
Instant claim 26 is equivalent to reference claim 2.
Instant claim 27 is equivalent to reference claim 3.
Instant claim 28 is equivalent to reference claim 4.
Instant claim 29 is equivalent to reference claim 5.
Instant claim 30 is equivalent to reference claim 6.
Instant claim 31 is equivalent to reference claim 7.
Instant claim 32 is equivalent to reference claim 8.
Instant claim 33 is equivalent to reference claim 1.
Instant claim 34 is equivalent to reference claim 1.
Instant claim 35 is equivalent to reference claim 2.
Instant claim 36 is equivalent to reference claim 6.
Instant claim 37 is equivalent to reference claim 1.
Instant claim 38 is equivalent to reference claim 9.
Allowable Subject Matter
Claims 24-38 would be allowable if rewritten or amended to overcome the double patenting rejections set forth in this Office action.
The following is an examiner’s statement of reasons for allowance:
The claims recite the same features that led to the parent application being allowed (though this means they also necessitate the above double patenting rejection due to the similarity). Notably, steps iv., v., and vi. of claim 1 are not taught or suggested by the prior art in the level of granularity and detail set forth by the claims (this was discussed in significant detail in the notice of allowance for the parent application, and remains equally true here.)
Following an updated search, the additional documents are deemed to be pertinent in addition to those already on the record from the IDS and the parent application:
US 20190138667 A1 discloses a digital twin for various building planning and construction operations, including compliance review, though not at the granularity required by the claims.
US 20080059220 A1 discloses code compliance checks done automatically with CAD files.
US 20200134106 A1 discloses digital twins for working with engineering (i.e. architectural) drawings of a building
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BIJAN MAPAR whose telephone number is (571)270-3674. The examiner can normally be reached Monday - Thursday, 11:00-8:30.
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, Rehana Perveen can be reached at 571-272-3676. 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.
/BIJAN MAPAR/ Primary Examiner, Art Unit 2189
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