DETAILED ACTION
This office action is a response to an application filed 09/09/2024, wherein claims 1-32 are pending and ready for an examination.
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
This application discloses and claims only subject matter disclosed in prior application no 15/155,565 and 17/841,104, filed 05/16/2016 and 06/15/2022, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or division. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/09/2024 was filed before the mailing date of the Non final action on 03/11/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered dependent claims 1, been renumbered 2. Applicant is required to renumber the claims and correct the claims appear in proper numerical order.
Claims 1, 3, 5, 7, 13, 17, 19, 21, 23, 29 are objected to because of the following informalities: claims 1 (i.e. dependent), 3, 5, 7, 13, 17, 19, 21, 23, 29 recites “the computer implemented method of claim 1”, “the computer implemented method of claim 3”, “the computer implemented method of claim 5”, “the computer implemented method of claim 7”, “the computer implemented method of claim 13”, “the computer system of claim 17”, “the computer system of claim 19”, “the computer system of claim 21”, “the computer system of claim 2”, “the computer system of claim 29”. These claims are objected to because it improperly depends from itself. A dependent claim must refer to a preceding claim and further limit the subject matter of that claim. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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 limitation(s) is/are: means for storing, means for detecting and means for generating in claim 32.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 12113762. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are substantially identical as can be seen from the table below.
Instant Application # 18828031
US Patent # 12113762
1, 16 and 32, a computer implemented method, a computer system, and a computer system comprising:
1, 19 and 24, a computer implemented method, a computer system and a computer system comprising:
receiving, by a processor, an electronic data transaction request message for processing in a data transaction processing system;
storing, by a processor, in a memory, a first data object including data of a first type and a second data object including data of a second type, wherein the first data object includes data about a plurality of unique orders;
modifying, by the processor, based on the electronic data transaction request message, at least one of a first data object including data of a first type and a second data object including data of a second type, wherein the first data object and the second data object are stored in a memory based on the electronic data transaction request message, wherein the first data object includes data about a plurality of unique orders; and
detecting, by the processor, that data has been generated indicating modifications to a unique order of the first data object and to the second data object in response to an event; and
upon determining, by the processor, that a unique order of the first data object and the second data object have been modified, generating data indicating the modification to the unique order of the first data object, generating data indicating the modification to the second data object,
generating, by the processor, a first message including the data indicating the modifications to the unique order of the first data object and the second data object.
and generating a consolidated message including the data indicating the modifications to the unique order of the first data object and the second data object.
Claims 1 and 17
Claim 2
Claims 2 and 18
Claims 4, 20 and 25
Claims 3 and 19
Claim 5
Claims 4 and 20
Claim 6
Claims 5 and 21
Claim 7
Claims 6 and 22
Claims 8 and 9, 21 -22 and 26
Claims 7 and 23
Claim 10
Claims 8 and 24
Claim 11
Claims 9 and 25
Claims 12, 23 and 27
Claims 10 and 26
Claim 13
Claims 11 and 27
Claim 14
Claims 12 and 28
Claims 3 and 15
Claims 13 and 29
Claim 16
Claims 14 and 30
Claim 17
Claims 15 and 31
Claim 18
Allowable Subject Matter
Claims 1-32 are objected to as being dependent upon a rejected base claim, but would be allowable if applicant filed a terminal disclaimer to overcome the double patenting rejection and renumber the claims and correct the claims appear in proper numerical order to overcome the claim objection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GOLAM MAHMUD whose telephone number is (571)270-0385. The examiner can normally be reached Mon-Fri 8.00-5.00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Umar Cheema can be reached on 5712703037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GOLAM MAHMUD/Examiner, Art Unit 2458