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 2-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18, respectively of U.S. Patent No. 12,078,716. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims clearly anticipate claims 2-19.
Claim Objections
Claims 5, 14 objected to because of the following informalities:
Claims 5 and 14 at lines 3 and 4, respectively, “objection” should be:--object--.
Claims 6 and 15 require the hypersonic object “includes a terminal phase”, however it is clear that the object itself does not “include” a phase per se, but rather undergoes phases, e.g. per [0005] and [0007] of the specification: “the hypersonic object undergoes three phases…”; “…the phases further include a terminal phase”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims because the disclosure consistently describes the invention as fundamentally including an “unscented Kalman filter”, whereas the newly presented claims (preliminary amendment of 10/28/2024) utilize generically a “Kalman filter” (first appearing in the independent claims at claim 2, line 10 and claim 11, line 12), e.g. an extended Kalman filter. The original disclosure specifically describes that such filters are undesirable for hypersonic object tracking ([0004]) and highlights particular mathematical problems with doing so (e.g. calculations of the Jacobian and Hessian matrices). The disclosure later describes mathematically in substantial detail an unscented Kalman filter approach without any teaching as to an extended Kalman filter implementation, but rather contrasting the invented solution with such (e.g. [0026]-[0030] and beyond). For example, there is no attempt to overcome the problems described in [0004] for an extended Kalman filter embodiment, rather the described invention avoids these problems via the unscented Kalman filter approach. As such, persons skilled in the art would clearly recognize the invention fundamentally as an unscented Kalman filter approach and would not recognize an extended (or any other) Kalman filter approach as part of Applicant’s invention at the time the application was filed.
Claims 2-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the invention employing an unscented Kalman filter, does not reasonably provide enablement for all Kalman filters generically, e.g. an extended Kalman filter. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
As established above, the specification does not describe the invention to include other Kalman filtering techniques to address the challenges of hypersonic object tracking, as is currently included in the scope of the claims as amended (claim 2, line 10 and claim 11, line 12). The original disclosure specifically describes that extended Kalman filters are undesirable for hypersonic object tracking ([0004]) and highlights particular mathematical problems with doing so, e.g. difficult calculations of the Jacobian and Hessian matrices, among others. The disclosure continues on to disclose how to address or avoid these problems by an unscented Kalman filter approach, without any teaching as to how one of ordinary skill in the art could address them while utilizing an extended Kalman filter or any other. For example, there is no disclosure as to how calculations of the Jacobian and Hessian matrices, described in [0004] as being “extremely difficult” may be accomplished. As the disclosure neither suggests nor provides any teaching as to how an extended Kalman filter approach may be accomplished (and instead discourages it), one skilled in the art would not have been able to make and use such embodiments which are included within the claimed scope without undue experimentation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Blate et al. discloses the use of Kalman filtering in tracking hypersonic missiles.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew M Barker whose telephone number is (571)272-3103. The examiner can normally be reached on a part time schedule, typically M-Fri 8:00 AM-4:30 PM Eastern Time, but having off alternating Monday-Tuesdays and Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Keith can be reached at 571-273-6878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW M BARKER/Primary Examiner, Art Unit 3646
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