DETAILED ACTION
Claims 1-7 have been examined.
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 .
Priority
The current application is a National Stage entry of PCT/JP2021/038499, with International Filing Date: 10/18/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/17/2024 has been considered by the examiner.
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 1-7 of the current application, hereinafter “934” are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/701989, hereinafter “989” (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims within “934” and “989” are directed to an “analysis function” which acquires a “hook point that is a part where an analysis code is inserted by applying a hook” and also has “a virtual program counter that is a variable indicating an instruction of the virtual machine to be executed next”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 of “934” are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/701944, hereinafter “944” (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims within “934” and “944” are directed to an “analysis function” which acquires a “hook point that is a part where an analysis code is inserted by applying a hook” and also has “a virtual program counter that is a variable indicating an instruction of the virtual machine to be executed next”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 of “934” are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/701946, hereinafter “946” (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims within “934” and “946” are directed to an “analysis function” which acquires a “hook point that is a part where an analysis code is inserted by applying a hook” and also has “a virtual program counter that is a variable indicating an instruction of the virtual machine to be executed next”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
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 1-7 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.
The term “immediately” in claims 1, 6 and 7 is a relative term which renders the claim indefinite. The term “immediately” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to the proximity of the “preceding virtual program counter” is from the “next virtual program counter”.
Claims 2-5 are rejected by virtue of their dependency upon rejected independent claim 1.
When a claim is amenable to two or more plausible claim constructions, the claim is indefinite for failing to particularly point out and distinctly claim the subject matter the Applicant considers to be the invention. Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential).
Presently, some claims require speculation and conjecture by the Examiner and by one of ordinary skill in the art inasmuch as the claims under examination are rejected under 35 U.S.C. 112, second paragraph. In light of the precedence set forth in In re Steele, 305 F.2d 859, 862 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970), the Examiner applies cited art in accordance with a position as best understood in the context of the claims and the invention as a whole to expedite compact prosecution. Any claim not objected or rejected in view of art does not ascribe allowable subject matter, but remains pending and rejected under their respective titles supra.
A claim that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970). Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350, 75 USPQ2d 1801, 1807 (Fed. Cir. 2005)); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373, 112 USPQ2d 1188 (Fed. Cir. 2014) (holding the claim phrase "unobtrusive manner" indefinite because the specification did not "provide a reasonably clear and exclusive definition, leaving the facially subjective claim language without an objective boundary").
Allowable Subject Matter
Claims 1-7 distinguish themselves over the prior art, but remain rejected in view of the above Double Patenting and 35 U.S.C. 112(b) rejections. The filing and approval of an electronic Terminal Disclaimer would overcome the Double Patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references cited on form PTO-892 are cited to further show the state of the art with respect to virtual machine analysis.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH L AVERY whose telephone number is (571)272-8627. The examiner can normally be reached M-F 8:30am -5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynn Feild can be reached at 571-272-2092. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEREMIAH L AVERY/Primary Examiner, Art Unit 2431