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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,059,626. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader versions of the parent patented claims.
Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/732,812. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite very similar claim language with minor rewording.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-19 have been rejected under nonstatutory double patenting, but would be allowable if an approved TD was filed.
The following is a statement of reasons for the indication of allowable subject matter:
In regards to art, claims 1 and 18 recite, "generating, by one or more processors, a battle queue of one or more battle options based at least in part upon the data".
Game activity causes an increase of generating in-game elements when playing the video game. The system may increase the chances of generating battle options when the player is active in the game. Applicant has broadened the claim language of the parent application to make fitness data into just generic data. The claims have been examined for creating 35 USC 112 issues due to these changes, but the claims appear to meet the 112 requirements.
There are many networked fitness apps and virtual games that collect fitness data, location data and biometric data from well-known sensors. The cited prior art does not show or teach the generation of a battle queue of one or more battle options based at least in part upon game collected data.
In regards to 35 USC 101, the current amendment provides that the fitness data
be generated during gameplay. This cannot be done mentally. Per the current guidelines, Step 2A, Prong One is now NO. Per Pathway B, the claims qualify as
eligible subject matter under 35 USC 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A CUFF whose telephone number is (571)272-6778. The examiner can normally be reached Monday - Friday 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at 571 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A CUFF/Primary Examiner, Art Unit 3715