DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
General Information Matter
Please note, the instant Non-Provisional application (18/756,234) under prosecution at the United States Patent and Trademark Office (USPTO) has been assigned to David Zarka (Examiner) in Art Unit 2449. To aid in correlating any papers for 18/756,234, all further correspondence regarding the instant application should be directed to the Examiner.
Joint Inventors
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicants are advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential § 102(a)(2) prior art against the later invention.
Information Disclosure Statement (IDS)
The IDSs filed June 27, 2024 and January 6, 2025 each comply with the provisions of 37 C.F.R. §§ 1.97, 1.98 and MPEP § 609. The IDSs have been placed in the application file, and the information referred to therein has been considered.
Possible Continuation or Divisional of 18/061834
This application discloses and claims only subject matter disclosed in prior Application No. 18/061834, filed December 5, 2022, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional of 18/061834. Should Applicants desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. § 120; 37 C.F.R. § 1.78; and MPEP § 211 et seq.
Current Benefit Claim
Applicants’ claim for the benefit of a prior-filed application under 35 U.S.C. §§ 120, 121, 365(c), or 386(c) is acknowledged. Notably, Applicants’ claim the instant application to be a “continuation” of application 18/061607, now Lojko et al. (US 12,368,708 B1; filed Dec. 5, 2022; the ‘708 Patent). See 18/756,234; Application Data Sheet (ADS) 3; filed June 27, 2024.
Thus, the instant application must be an application for an invention which is also disclosed in the application 18/061607. In other words, the disclosure of the invention in the parent application and in the instant application must be sufficient to comply with the requirements of 35 U.S.C. § 112(a), except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551 (Fed. Cir. 1994); see also MPEP § 211.05(I) (citing Transco).
Applicants, however, have not complied with one or more conditions for receiving the benefit of an earlier filing date. In particular, the disclosure of application 18/061607 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. § 112(a) for the original claims of the instant application.1
Notably, the disclosure of application 18/061607 does not provide adequate support and enablement for claims 1–20 in their entirety of the instant application filed June 27, 2024.
Accordingly, Applicants are required to delete the continuation-benefit-claim or change the relationship (continuation or divisional application) to continuation-in-part because the instant application contains the above matter not disclosed in the application 18/061607. See §§ MPEP 201.06(c); 201.07; 211.05.
Drawings
37 C.F.R. § 1.84(q) recites “Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed.” 37 C.F.R. § 1.84(r) recites “Arrows may be used at the ends of lines, provided that their meaning is clear, as follows: (1) On a lead line, a freestanding arrow to indicate the entire section towards which it points.”
Fig. 1A, item 100 and Fig. 2, item 200 are reference characters that do not indicate a surface or cross section on which they are placed. Thus, the drawings are objected to under 37 C.F.R. § 1.84(q) for failing to include lead lines for each reference character.
Moreover, 37 C.F.R. § 1.84(r) recites “Arrows may be used at the ends of lines, provided that their meaning is clear, as follows: (1) On a lead line, a freestanding arrow to indicate the entire section towards which it points.”
Fig. 1A, item 100 and Fig. 2, item 200 appear to indicate the entire section towards which they point. Thus, the Examiner recommends adding to arrow at the end of the lead line.
37 C.F.R. § 1.84(t) recites “These [numbering of sheets of drawings], if present, must be placed in the middle of the top of the sheet, but not in the margin. . . . The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(t) for failing to include the numbering of sheets of drawings (1) in the middle of the top of the sheet, but not in the margin and (2) larger than the numbers used as reference characters to avoid confusion.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Applicants are advised to employ the services of a competent patent draftsperson outside the Office, as the USPTO does not prepare new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 C.F.R. § 1.121(d). If the changes are not accepted by the Examiner, Applicants will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
37 C.F.R. § 1.71(a) recites “The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.”
(i) The Abstract is objected to under 37 C.F.R. § 1.71(a). Notably, line 6 of the Abstract should be “in time and the observed.”
(ii) claim 1, line 2 should be “first server.”
(iii) claim 1, line 13 should be “applications[[,]] [;]”. Claim 12, line 7; and claim 18, line 12 by analogy.
The following is a quotation of 37 C.F.R. § 1.75(d)(1):
The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.
The following is a quotation from MPEP § 2173.03:
The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. . . . If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).
See also MPEP §§ 608.01(o), 2111.01 (reciting
if a claim term does not have an ordinary and customary meaning, the examiner should check the specification to determine whether it provides a meaning to the claim term. If no reasonably clear meaning can be ascribed to the claim term after considering the specification and prior art, the examiner should apply the broadest reasonable interpretation to the claim term as it can be best understood. Also, the claim should be rejected under 35 U.S.C. 112(b) and the specification objected to under 37 CFR 1.75(d).
).
The Specification is objected to under 37 C.F.R. § 1.75(d)(1) for failing to provide clear support so that the meaning of the terms in the claims are ascertainable by reference to the Specification. Notably, Specification fails to provide a clear meaning of the term “first se[r]ver” (claim 1, line 2), “second server” (claim 1, line 3), “multitenant application dependency mapping platform” (claim 1, line 4), “model input data” (claim 1, line 9), “dependency matrix” (claim 1, line 12), “improper activity” (claim 1, line 15); “input matrix” (claim 2, line 2); “application communication activity” (claim 2, lines 2–3); “three-dimensional tensor matrix” (claim 5, lines 1–2); and “application communications configuration information” (claim 11, lines 3–4).
Nonstatutory Double Patenting2
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).3
A timely filed terminal disclaimer in compliance with 37 C.F.R. § 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 C.F.R. § 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1–20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–20 of Nodzak et al. (US 12,052,146 B2; filed Dec. 5, 2022; the ‘146 Patent).
Regarding claims 1–20 of the instant App., although the conflicting claims are not identical, they are not patentably distinct from each other because:
Instant Application
the ‘223 Patent
Claim 1: A system comprising:
a first sever hosting a first application;
a second server hosting a plurality of applications;
a multitenant application dependency mapping platform, comprising:
at least one processor; and memory storing computer-readable instructions that, when executed by the at least one processor, cause the multitenant application dependency mapping platform to:
generate, based on information received from a network telemetry sensor monitoring network communications, model input data corresponding to communications between the plurality of applications;
identify, by a machine learning model and from the model input data, a dependency matrix corresponding to the communications between the plurality of applications,
generate, based on the dependency matrix, a likelihood matrix corresponding to a probability of application communications to the second server being directed to one or more application of the plurality of applications; and
trigger, by an external computing system, an indication of improper activity corresponding to the probability of application communications to the second server is being directed to a second application of the plurality of applications.
Claim 1: A system comprising:
a first sever hosting a first application;
a second server hosting a plurality of applications;
a multitenant application dependency mapping platform, comprising:
at least one processor; and memory storing computer-readable instructions that, when executed by the at least one processor, cause the multitenant application dependency mapping platform to:
receive, from a network telemetry sensor monitoring an enterprise network, network communications information corresponding communications between a plurality of applications;
generate model input data based on the network communications information corresponding communications between the plurality of applications;
identify, by a machine learning model of a machine learning module and from the model input data, a dependency matrix corresponding to communications between the plurality of applications,
generate, based on the dependency matrix, a likelihood matrix corresponding to a probability of application communications to the second server being directed to each application of the plurality of applications; and
trigger, by an external computing system, an indication of improper activity corresponding to the probability of application communications to the second server is being directed to a second application of the plurality of applications.
Claim 2. The system of claim 1, wherein the instructions cause the multitenant application dependency mapping platform to generate an input matrix corresponding to application communication activity for each time period of a plurality of time periods.
Claim 2. The system of claim 1, wherein the instructions cause the multitenant application dependency mapping platform to generate an input matrix corresponding to application communication activity for each time period of a plurality of time periods.
Claim 3. The system of claim 2, wherein the time period is an hour.
Claim 3. The system of claim 2, wherein the time period is an hour.
Claim 4. The system of claim 2, wherein the plurality of time periods comprises one or more of a week, a month, and a year.
Claim 4. The system of claim 2, wherein the plurality of time periods comprises one or more of a week, a month, and a year.
Claim 5. The system of claim 1, wherein the model input data comprises a three-dimensional tensor matrix comprising a plurality of two-dimensional representations of telemetry data for given time periods.
Claim 5. The system of claim 1, wherein the model input data comprises a three dimensional tensor matrix comprising a plurality of two dimensional representations of telemetry data for given time periods.
Claim 6. The system of claim 1, wherein the first server comprises a single tenant server.
Claim 6. The system of claim 1, wherein the first server comprises a single tenant server.
Claim 7. The system of claim 1, wherein first server comprises a second multitenant server hosting a second plurality of applications.
Claim 7. The system of claim 1, wherein first server comprises a second multitenant server hosting a second plurality of applications.
Claim 8. The system of claim 1, wherein the instructions cause the multitenant application dependency mapping platform to communicate a report comprising a dependency map of applications active within an enterprise network.
Claim 8. The system of claim 1, wherein the instructions cause the multitenant application dependency mapping platform to communicate a report comprising a dependency map of applications active within the enterprise network.
Claim 9. The system of claim 1, wherein the instructions cause the multitenant application dependency mapping platform to train the machine learning model based on historical communication information between applications communicating over an enterprise network.
Claim 9. The system of claim 1, wherein the instructions cause the multitenant application dependency mapping platform to train the machine learning model based on historical communication information between applications communicating over the enterprise network.
Claim 10. The system of claim 1, wherein the instructions cause the multitenant application dependency mapping platform to automatically retrain the machine learning model based on feedback received corresponding to accuracy of a dependency map of applications communicating on an enterprise network generated from output from the machine learning model.
Claim 10. The system of claim 1, wherein the instructions cause the multitenant application dependency mapping platform to automatically and continuously retrain the machine learning model based on feedback received corresponding to accuracy of a dependency map of applications communicating on the enterprise network generated from output from the machine learning model.
Claim 11. The system of claim 1, wherein the instructions cause the multitenant application dependency mapping platform to generate a three-dimensional tensor matrix for use as input to the machine learning model based on network telemetry information and application communications configuration information.
Claim 11. The system of claim 1, wherein the instructions cause the multitenant application dependency mapping platform to generate a three dimensional tensor matrix for use as input to the machine learning model based on network telemetry information and application communications configuration information.
Claim 12. The system of claim 11, wherein the instructions cause the multitenant application dependency mapping platform to generate application communications configuration information based on input received via a user interface presented at user device.
Claim 12. The system of claim 11, wherein the instructions cause the multitenant application dependency mapping platform to generate application communications configuration information based on input received via a user interface presented at user device.
Claim 13. A method comprising:
generating, based on information received from a network telemetry sensor monitoring network communications, model input data based on the network communications information corresponding communications between a plurality of applications;
identifying, by a machine learning model of a machine learning module and from the model input data, a dependency matrix corresponding to communications between the plurality of applications,
generating, based on the dependency matrix, a likelihood matrix corresponding to a probability of application communications to a second server being directed to at least two applications of the plurality of applications; and
triggering, by an external computing system, an indication of improper activity corresponding to the probability of application communications to the second server is being directed to a second application of the plurality of applications.
Claim 13. A method comprising:
receive, from a network telemetry sensor monitoring an enterprise network, network communications information corresponding communications between a plurality of applications operational within the enterprise network, wherein at least one application of the plurality of applications is operational on a multitenant server;
generate model input data based on the network communications information corresponding communications between the plurality of applications;
identify, by a machine learning model of a machine learning module and from the model input data, a dependency matrix corresponding to communications between the plurality of applications,
generate, based on the dependency matrix, a likelihood matrix corresponding to a probability of application communications to a second server being directed to each application of the plurality of applications; and
trigger, by an external computing system, an indication of improper activity corresponding to the probability of application communications to a second server is being directed to a second application of the plurality of applications.
Claim 14. The method of claim 13, further comprising generating an input matrix corresponding to application communication activity for each time period of a plurality of time periods.
Claim 14. The method of claim 13, further comprising generating an input matrix corresponding to application communication activity for each time period of a plurality of time periods.
Claim 15. The method of claim 14, wherein the time period is an hour.
Claim 15. The method of claim 14, wherein the time period is an hour.
Claim 16. The method of claim 14, wherein the plurality of time periods comprises one or more of a week, a month, and a year.
Claim 16. The method of claim 14, wherein the plurality of time periods comprises one or more of a week, a month, and a year.
Claim 17. The method of claim 13, wherein the model input data comprises a three-dimensional tensor matrix comprising a plurality of two-dimensional representations of telemetry data for given time periods.
Claim 17. The method of claim 13, wherein the model input data comprises a three dimensional tensor matrix comprising a plurality of two dimensional representations of telemetry data for given time periods.
Claim 18. A multitenant application dependency mapping platform comprising:
a processor; and
non-transitory computer readable media storing instructions that, when executed by a processor, cause the multitenant application dependency mapping platform to:
receive, from a network telemetry sensor monitoring an enterprise network, network communications information corresponding communications between a plurality of applications;
generate model input data based on the network communications information corresponding communications between the plurality of applications;
identify, by a machine learning model of a machine learning module and from the model input data, a dependency matrix corresponding to communications between the plurality of applications,
generate, based on the dependency matrix, a likelihood matrix corresponding to a probability of application communications to a second server being directed to each application of the plurality of applications; and
trigger, by an external computing system, an indication of improper activity corresponding to the probability of application communications to the second server being is being directed to a second application.
Claim 18. Non-transitory computer readable media storing instructions that, when executed by a processor, cause a multitenant application dependency mapping platform to:
receive, from a network telemetry sensor monitoring an enterprise network, network communications information corresponding communications between a plurality of applications;
generate model input data based on the network communications information corresponding communications between the plurality of applications;
identify, by a machine learning model of a machine learning module and from the model input data, a dependency matrix corresponding to communications between the plurality of applications,
generate, based on the dependency matrix, a likelihood matrix corresponding to a probability of application communications to a second server being directed to each application of the plurality of applications; and
trigger, by an external computing system, an indication of improper activity corresponding to the probability of application communications to the second server being is being directed to a second application of the plurality of applications.
Claim 19. The multitenant application dependency mapping platform of claim 18, wherein the instructions cause the multitenant application dependency mapping platform to generate a three-dimensional tensor matrix for use as input to the machine learning model based on network telemetry information and application communications configuration information.
Claim 19. The non-transitory computer readable media of claim 18, wherein the instructions cause the multitenant application dependency mapping platform to generate a three dimensional tensor matrix for use as input to the machine learning model based on network telemetry information and application communications configuration information.
Claim 20. The multitenant application dependency mapping platform of claim 19, wherein the instructions cause the multitenant application dependency mapping platform to generate application communications configuration information based on input received via a user interface presented at user device.
Claim 20. The non-transitory computer readable media of claim 19, wherein the instructions cause the multitenant application dependency mapping platform to generate application communications configuration information based on input received via a user interface presented at user device.
Means-plus-Function Language
The following is a quotation of 35 U.S.C. § 112(f):
ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with § 112(f). The presumption that § 112(f) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with § 112(f). The presumption that § 112(f) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
The instant application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under § 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“network telemetry sensor” (claim 13, line 2);4
“machine learning model of a machine learning module” (claim 13, line 5); and
“external computing system” (claim 13, line 11).
If Applicants do not intend to have the claim limitations treated under § 112(f), Applicants may amend the claims so that they will clearly not invoke § 112(f), or present a sufficient showing that the claims recite sufficient structure, material, or acts for performing the claimed function to preclude application of § 112(f).
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011) (available at https://www.govinfo.gov/content/pkg/FR-2011-02-09/pdf/2011-2841.pdf).
Claim Rejections – 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b): “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 MPEP recites “[d]uring examination, after applying the broadest reasonable interpretation consistent with the specification to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected.” MPEP § 2173.02(I) (citing In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)). “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) . . . is appropriate.” Id. See also id. § 2173.05(e)(discussing indefiniteness arising for terms lacking proper antecedent basis).
Claims 13–17 are rejected under § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In particular,
As discussed above, claim element “machine learning model of a machine learning module” (claim 13, line 5) and “external computing system” (claim 13, line 11) are limitations that invoke 35 U.S.C. § 112(f).
With respect to the function the “machine learning model of a machine learning module” (claim 13, line 5) performs in claim 13, the Specification does not recite a “dependency matrix,” let alone a dependency matrix corresponding to communications between a plurality of applications (claim 13, lines 6–7). Thus, the written description, therefore, fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function.
With respect to the function the “external computing system” (claim 13, line 11) performs in claim 13, the Specification does not recite “improper activity,” let alone improper activity corresponding to probability of application communications to a second server (claim 13, lines 12–13). Thus, the written description, therefore, fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function.
Applicants may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. § 112(f); or
(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR § 1.175(d) and MPEP §§ 608.01(o) and 2181.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure: US-20210294393-A1; US-20200382405-A1; and US-5740438-A.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449
1 The Examiner notes the instant Office action does not include a rejection under 35 U.S.C. § 112(a). The statute 35 U.S.C. § 112(a) is recited because that is the manner in determining whether the instant application is entitled to receiving the benefit of the parent application’s filing date.
2 The Examiner will determine whether Applicants’ reply to the nonstatutory double patenting rejection is compliant under 37 C.F.R. § 1.111(b). See MPEP § 804(I)(B)(1) (reciting
[a] complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
). In the event the reply is non-compliant under 37 C.F.R. § 1.111(b), the Examiner will issue a Notice of Non-Compliant Response.
3 See, e.g., In re Berg, 140 F.3d 1428 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (CCPA 1969).
4 The Examiner notes “Applicants are free to invoke § 112 ¶ 6 for a claim term nested in a method claim. We have never held otherwise.” Rain Computing, Inc. v. Samsung Elecs. Am. Inc., 989 F.3d 1002, 1006 (Fed. Cir. 2021). See also Media Rights Technologies, Inc. v. Capital One Financial Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015) (holding that the term “compliance mechanism” in a method claim was a means-plus-function term); see also MPEP § 2181.