DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 and 2 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.
Claim 1 recites the limitation “the local cache” in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation “the local proxy” in line 9. There is insufficient antecedent basis for this limitation in the claim.
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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 8,886,176 B2 in view of Knowles, Michael (WO 2007/009255 A1). Claims 1-29 of U.S. Patent No. 8,886,176 B2 disclose a method for optimizing traffic by having local proxy, including a local cache, for responding to requests made by applications of the mobile device. Claims 1-29 of U.S. Patent No. 8,886,176 B2 do not disclose that the proxy server queries the application server independent of activities of the mobile device for any changes to the data request that the mobile device has previously made and notifies the local proxy of such changes. Knowles discloses that the proxy server retrieves data from web server and transmits to the mobile device when the computed 1st and 2nd hash values, generated within proxy server, are not equal (Fig. 3. Herein, the proxy server performs calculated hash values, retrieves data from web server, and transmits data to the mobile device independent of activities of the mobile device since previously request being made). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1-29 of U.S. Patent No. 8,886,176 B2 to include updating the mobile device the changes of the data without any further intervention from the mobile device, as suggested by Knowles, to reduce signaling overhead.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim 2 is rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Knowles, Michael (WO 2007/009255 A1).
Regarding claim 2, Knowles discloses a proxy server (Fig. 1, proxy server 9) comprising:
a memory (Fig. 1, proxy server 9 must include a memory for storing executable instructions); and
a processor (Fig. 1, proxy server 9 must include at least a processor),
the proxy server configured for:
communicating with a mobile device (Fig. 1, communication between mobile device 1 and proxy server 9 via wireless network 3, Internet 5, corporate firewall 7, and relay 8), wherein the mobile device forwards a data request to the proxy server for transmission to an application server for a response to the data request (5th paragraph, the mobile device transmits document requests to the proxy server for retrieving data from the origin server);
querying the application server independent of activities of the mobile device for any changes to the data request that the mobile device has previously made and notifies the local proxy of such changes (Fig. 3, proxy server retrieves data from web server and transmits to the mobile device when the computed 1st and 2nd hash values, generated within proxy server, are not equal. Herein, the proxy server performs calculated hash values, retrieves data from web server, and transmits data to the mobile device independent of activities of the mobile device since previously request being made).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANH VU H LY whose telephone number is (571)272-3175. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nick Jensen can be reached at 571-270-5443. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANH VU H. LY
Primary Examiner
Art Unit 2472
/ANH VU H LY/Primary Examiner, Art Unit 2472
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