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, 3, 7, 8, 9, 10 and 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. US 11,405,470. Although the claims at issue are not identical, they are not patentably distinct from each other because all claimed limitations are disclosed.
Claims 1-4 and 6-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. US 11, 574, 734. Although the claims at issue are not identical, they are not patentably distinct from each other because all claimed limitations are disclosed.
Claims 1-3 and 5-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. US 11,575,760. Although the claims at issue are not identical, they are not patentably distinct from each other because all claimed limitations are disclosed.
Claims 1, 7-10 and 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. US 11,314,617. Although the claims at issue are not identical, they are not patentably distinct from each other because all claimed limitations are disclosed. The current application discloses a communicatively insulated device while the patent discloses a device not having internet connectivity, there are being interpreted as the same.
Mapping is shown below for each Patent.
18/695,870
US 11,405,470
US 11,574,734
US 11,575,760
US 11,314,617
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Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite obtaining performance data, converting data to a scannable code, capturing the code and transmitting the data to a server, which constitutes data collection, encoding and transmission which fall under the metal process.
This judicial exception is not integrated into a practical application because the claims do not include any additional elements that integrate the abstract idea into practical application. The communicatively insulated device, communicatively enabled device, server are descried at a high level of generality and perform generic computer functions. The claims do not improve the functioning of the computer or technology.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations of encoding the data, generating a scannable code and data transmission are well understood, routine and conventional activities in the field. These element amount to no more than implementing the abstract idea using generic computing components and fail to amount to significantly more than the abstract idea.
Dependent claims 2-14 and 16-19 recite limitations directed to performing analysis on the data, transmitting results, displaying data and specifying types of devices. These limitations are insignificant post solution activities, field of use limitations or well understood, routine and conventional functions. The dependent claims fail to amount to significantly more than the abstract idea.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 6 and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Permenter (US 2020/0133698).
As to claim 1, Permenter discloses a method comprising:
obtaining performance data of a communicatively-insulated device (¶0051-¶0057 & ¶0074);
converting the performance data into a scannable code (¶0074);
capturing an image of the scannable code (¶0074);
decoding the scannable code using a communicatively-enabled device to extract an address string encoded in the scannable code, the address string comprising an address of a remote server and the performance data (¶0074); and
initiating, by the communicatively-enabled device, a communications link with the remote server using the address string thereby to provide the performance data to the remote server (¶0074).
As to claim 2, Permenter discloses the method of claim 1, further comprising: performing, by the remote server, analytics on the performance data (¶0071).
As to claim 3, Permenter discloses the method of claim 2, further comprising at least one of: sending historic device performance data and/or analytical results to a remote computing device; and sending a link to the historic device performance data and/or analytical results to the remote computing device (¶0060).
As to claim 6, Permenter discloses the method of claim 1, further comprising, prior to the converting, encoding the performance data (¶0074, encoding into a QR).
As to claim 11, Permenter discloses the method of claim 1, wherein the scannable code is a matrix code (¶0074).
As to claim 12, Permenter discloses the method of claim 11, wherein the matrix code is a quick response (QR) code (¶0074).
As to claim 13, Permenter discloses the method of claim 1, further comprising, after the converting, presenting the scannable code on a display console of the communicatively-insulated device and/or printing the scannable code on a physical medium (¶0074).
As to claim 14, Permenter discloses the method of claim 1, further comprising capturing the image of the scannable code with the communicatively-enabled device (¶0074).
As to claim 15, Permenter discloses a method comprising: receiving, by a server, a network connection request from a communicatively- enabled device, the network connection request comprising an address string extracted from an image of a scannable code, the address string comprising an address of the server and performance data of a communicatively-insulated device; extracting, by the server, from network connection request the performance data; and verifying, by the server, the performance data (¶0071 & ¶0074).
Allowable Subject Matter
Claims 4, 5, 7-10 and 16-19 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. All other outstanding rejections must be overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES EHNE whose telephone number is (571)272-2471. The examiner can normally be reached 8:00-5:00 M-F.
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, Bryce Bonzo can be reached at 571-272-3655. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES EHNE/ Primary Examiner, Art Unit 2113
Prosecution Insights