DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 10 is objected to because of the following informalities: On line 4, “actions form a device” should be --actions from a device--. Appropriate correction is required.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 1-17 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-4, 6-10 and 12-17 of U.S. Patent No. 12,095,726 in view of U.S. Patent Application Publication 2010/0191577 to Lu et al.
Claims 1 and 5 are disclosed by claim 1 of the ‘726 Patent.
Claim 11 is disclosed by claim 14 of the ‘726 Patent.
The ‘726 Patent does not disclose: a memory and a processor.
Lu et al. ‘577 teach a computer having a memory and a processor (Fig. 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the claimed invention of the ‘726 Patent with a computer having a memory and a processor, as taught by Lu et al. ‘577, in order to provide dedicated processing capacity.
Claim 2 is disclosed by claim 2 of the ‘726 Patent.
Claim 3 is disclosed by claim 3 of the ‘726 Patent.
Claim 4 is disclosed by claim 17 of the ‘726 Patent.
Claim 6 is disclosed by claim 11 of the ‘726 Patent.
Claim 7 is disclosed by claim 12 of the ‘726 Patent.
Claim 8 is disclosed by claim 13 of the ‘726 Patent.
Claim 9 is disclosed by claim 4 of the ‘726 Patent.
Claim 10 is disclosed by claim 5 of the ‘726 Patent.
Claim 12 is disclosed by claim 15 of the ‘726 Patent.
Claim 13 is disclosed by claim 16 of the ‘726 Patent.
Claim 14 is disclosed by claim 6 of the ‘726 Patent.
Claim 15 is disclosed by claim 7 of the ‘726 Patent.
Claim 16 is disclosed by claim 8 of the ‘726 Patent.
Claim 17 is disclosed by claim 9 of the ‘726 Patent.
Claims 1-7, 9-12, 14 and 15 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 2, 4, 5-9, 11, 13, 23 and 24 of U.S. Patent No. 8,996,727. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claims are anticipated by the reference claims.
Claim 1 is disclosed by claims 1, 13 (computer/ “processor”) and 5 of the ‘727 Patent.
Claim 2 is disclosed by claim 2 of the ‘727 Patent.
Claim 3 is disclosed by claim 4 of the ‘727 Patent.
Claim 4 is disclosed by claim 9 of the ‘727 Patent.
Claim 5 is disclosed by claim 13 (computer/ “processor”) of the ‘727 Patent.
Claim 6 is disclosed by claim 6 of the ‘727 Patent.
Claim 7 is disclosed by claim 7 of the ‘727 Patent.
Claim 9 is disclosed by claim 11 of the ‘727 Patent.
Claim 10 is disclosed by claim 24 of the ‘727 Patent.
Claim 11 is disclosed by claim 13 of the ‘727 Patent.
Claim 12 is disclosed by claim 8 of the ‘727 Patent.
Claim 14 is disclosed by claim 23 of the ‘727 Patent.
Claim 15 is disclosed by claim 24 of the ‘727 Patent.
Claims 1-7, 9-12, 14 and 15 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-8, 10-12 and 21 of U.S. Patent No. 9,331,921. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claims are anticipated by the reference claims.
Claim 1 is disclosed by claims 1, 12 (computer/ “processor” and memory) and 4 of the ‘921 Patent.
Claim 2 is disclosed by claim 2 of the ‘921 Patent.
Claim 3 is disclosed by claim 3 of the ‘921 Patent.
Claim 4 is disclosed by claim 8 of the ‘921 Patent.
Claim 5 is disclosed by claim 12 of the ‘921 Patent.
Claim 6 is disclosed by claim 5 of the ‘921 Patent.
Claim 7 is disclosed by claim 6 of the ‘921 Patent.
Claim 9 is disclosed by claim 21 of the ‘921 Patent.
Claim 10 is disclosed by claim 11 of the ‘921 Patent.
Claim 11 is disclosed by claim 12 of the ‘921 Patent.
Claim 12 is disclosed by claim 7 of the ‘921 Patent.
Claim 14 is disclosed by claim 10 of the ‘921 Patent.
Claim 15 is disclosed by claim 11 of the ‘921 Patent.
Claims 1-7, 10-13 and 15 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-6, 8, 15, 16 and 19 of U.S. Patent No. 10,764,240. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claims are anticipated by the reference claims.
Claim 1 is disclosed by claims 1 and 4 of the ‘240 Patent.
Claim 2 is disclosed by claim 2 of the’240 Patent.
Claim 3 is disclosed by claim 3 of the ‘240 Patent.
Claim 4 is disclosed by claim 8 of the ‘240 Patent.
Claim 5 is disclosed by claim 1 of the ‘240 Patent.
Claim 6 is disclosed by claim 5 of the ‘240 Patent.
Claim 7 is disclosed by claim 6 of the ‘240 Patent.
Claim 10 is disclosed by claim 16 of the ‘240 Patent.
Claim 11 is disclosed by claim 16 of the ‘240 Patent.
Claim 12 is disclosed by claim 19 of the ‘240 Patent.
Claim 13 is disclosed by claim 15 of the ‘240 Patent.
Claim 15 is disclosed by claim 16 of the ‘240 Patent.
Claims 1, 3, 5-7 and 11-13 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-6, 9 and 10 of U.S. Patent No. 11,310,195. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claims are anticipated by the reference claims.
Claim 1 is disclosed by claims 1 and 3 of the ‘195 Patent.
Claim 3 is disclosed by claim 2 of the ‘195 Patent.
Claim 5 is disclosed by claim 1 of the ‘195 Patent.
Claim 6 is disclosed by claim 4 of the ‘195 Patent.
Claim 7 is disclosed by claim 5 of the ‘195 Patent.
Claim 11 is disclosed by claim 6 of the ‘195 Patent.
Claim 12 is disclosed by claim 9 of the ‘195 Patent.
Claim 13 is disclosed by claim 10 of the ‘195 Patent.
Claims 1 and 3 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,463,403. Although the claims at issue are not identical, they are not patentably distinct from each other because the examined application claims are anticipated by the reference claims.
Claim 1 is disclosed by claims 1 and 3 of the ‘403 Patent.
Claim 3 is disclosed by claim 2 of the ‘403 Patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN B WALSH whose telephone number is (571) 272-7063. The examiner can normally be reached 7:30-3:30 pm.
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/JOHN B WALSH/Primary Examiner, Art Unit 2451