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 .
Status of Claims
Claims 1-20 are pending in this application.
Information Disclosure Statement
The Information Disclosure Statement(s) submitted by applicant on 1/07/2026 and 9/12/2024 has/have been considered. The submission is in compliance with the provisions of 37 CFR 1.97. Form PTO-1449 signed and attached hereto.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12,117,487. Although the claims at issue are not identical, they are not patentably distinct from each other (see table below).
Instant Application
U.S. Patent No. 12,117,487
Claim 1: A method for transitioning an integrated circuit from a closed state to an open state, the method comprising: verifying, by a finite state machine while the integrated circuit is in reset, that a password has been input via an interface, a first fuse word is not blown, and a third fuse word is not blown; incrementing a first counter corresponding to the third fuse word; reading a code stored in a protected area of a fuse-type non-volatile memory; comparing the password with the code; incrementing a second counter represented by a second fuse word in response to the password matching the code; transitioning the integrated circuit to the open state in response to the password matching the code; and maintaining the integrated circuit in the closed state in response to the password not matching the code.
Claim 1: A method, comprising: verifying, by a finite state machine, values of a first fuse word and values of a second fuse word in a fuse-type non-volatile memory of an integrated circuit, the first fuse word being representative of a number of transitions to a first state of the integrated circuit, the second fuse word being representative of a number of transitions to a second state of the integrated circuit; allowing read access to a first area of the fuse-type non-volatile memory by a processor in the first state based on the verifying the values of the first fuse word and the values of the second fuse word; and forbidding read access to the fuse-type non-volatile memory by the processor in a second state of the integrated circuit based on the verifying the values of the first fuse word and the values of the second fuse word.
Although the conflicting claims are not identical, they are not patentably distinct from each other because both are directed to verifying, by a finite state machine values of fuse word, fuse word in a fuse-type non-volatile memory of an integrated circuit and only differing in that the claims of '487 patent explicitly recite forbidding read access to the fuse-type non-volatile memory by the processor in a second state of the integrated circuit based on the verifying the values of the first fuse word and the values of the second fuse word. Thus, the claims of the ‘487 patent are rendered as obvious variants of the instant claims.
Allowable Subject Matter
Claims 1-20 would be allowable if a Terminal Disclaimer is submitted to overcome the Double Patenting rejection, set forth in this office action.
USPTO Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOSUK SONG whose telephone number is (571)272-3857. The examiner can normally be reached Mon-Fri: 7:30AM-5:00PM.
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/HOSUK SONG/Primary Examiner, Art Unit 2435