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
As to the double patenting rejections, the applicant has filed a terminal disclaimer to overcome the double patenting rejections in view of U.S. Patent No. 11,985,199 B2. However, double patenting rejections were also made in view of U.S. App. No. 18/999,625. The terminal disclaimer only makes reference to U.S. Patent No. 11,985,199 B2. Therefore, the double patenting rejections in view of U.S. App. No. 18/999,625 are maintained.
Double Patenting
Claims 1-4, 6-13, and 15-20 of this application are patentably indistinct from claims 1, 3, 5-8, 10, 11, 13, and 16-20 of Application No. 18/999,625. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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, 6-13, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-8, 10, 11, 13, and 16-20 of copending Application No. 18/999,625 (hereafter referred to as the “reference application”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application are anticipated by the claims of the reference application. For example, in claim 1 of this application, there is a limitation directed to accessing a data object. This limitation is not present in claim 1 of the reference application. However, there is a limitation in claim 1 of the reference application directed to allocating an endpoint based on a data object. Inherently, the data object must be accessed at some point in time in order to base the allocation of the endpoint on the data object.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application
Reference Application
Claim 1
Claim 1
A method comprising:
receiving a request to allocate an endpoint in a jurisdiction to an account;
A method comprising:
receiving a request to allocate an endpoint in a jurisdiction to an account; and
accessing a data object associated with a jurisdictional requirement; and
allocating the endpoint in the jurisdiction to the account based on the data object.
allocating the endpoint in the jurisdiction to the account based on a data object associated with a jurisdictional requirement.
As to claims 2 and 3, the claims of this application are anticipated by claim 3 of the reference application.
As to claim 4, the claim of this application is anticipated by claim 5 of the reference application.
As to claim 6, the claim of this application is anticipated by claim 6 of the reference application.
As to claim 7, the claim of this application is anticipated by claim 7 of the reference application.
As to claim 8, the claim of this application is anticipated by claim 8 of the reference application.
As to claim 9, the claim of this application is anticipated by claim 10 of the reference application (as claim 10 of the reference application also includes the language of parent claim 9 of the reference application).
As to claim 10, the claim of this application is anticipated by claim 10 of the reference application.
As to claim 11, the claim of this application is anticipated by claim 11 of the reference application according to a mapping similar to that given for claim 1 above.
As to claim 12, the claim of this application is anticipated by claim 13 of the reference application.
As to claim 13, the claim of this application is anticipated by claim 13 of the reference application.
As to claim 15, the claim of this application is anticipated by claim 16 of the reference application.
As to claim 16, the claim of this application is anticipated by claim 17 of the reference application.
As to claim 17, the claim of this application is anticipated by claim 18 of the reference application.
As to claim 18, the claim of this application is anticipated by claim 19 of the reference application (as claim 19 of the reference application also includes the language of parent claim 18 of the reference application).
As to claim 19, the claim of this application is anticipated by claim 10 of the reference application.
As to claim 20, the claim of this application is anticipated by claim 20 of the reference application according to a mapping similar to that given for claim 1 above.
Allowable Subject Matter
Claims 5 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 Brian Whipple whose telephone number is 571-270-1244. The examiner can normally be reached Mondays-Fridays from 9:30 AM to 3:30 PM ET and Saturdays from 10:30 AM to 8:30 PM ET.
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, Joon Hwang can be reached at 571-272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brian Whipple/
Primary Examiner
Art Unit 2447
2/28/26