DETAILED ACTION
This office action is a response to an application filed 09/25/2024, wherein claims 1-20 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. 18/063,721, filed 12/09/2022, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. 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 09/26/2024 was filed before the mailing date of the non-final action on 03/24/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-6, 8-13 and 15-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12132689. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical as can be seen from the table below.
Instant application # 18/896,288
US Patent # US12132689B2
Claims 1, 8 and 15, a testing tool, a non-transitory computer readable medium and a method comprising:
a processor;
memory communicatively coupled to the processor, the memory including instructions that are executable by the processor to cause the processor to perform operations comprising:
accessing information about multiple electronic transactions, the information being in a first format that is not processable by the electronic messaging system;
converting the information from the first format to a second format that is processable by the electronic messaging system;
generating a plurality of multi-variable electronic messages, each multi-variable electronic message corresponding to an electronic transaction of the multiple electronic transactions and including a portion of the information in the second format;
transmitting at least some of the plurality of multi-variable electronic messages to the electronic messaging system;
instructing the electronic messaging system to initiate an attempted processing of the multi-variable electronic messages received from the testing tool; and
evaluating a result of the attempted processing operation to detect processing errors.
Claims 6, 13 and 19, the testing tool of claim 1, the non-transitory computer readable medium of claim 8, and the method of claim 15, wherein the transmitting at least some of the plurality of multi-variable electronic messages to the electronic messaging system comprises creating a bulk message file from the at least some of the plurality of multi-variable electronic messages and transmitting the bulk message file to the electronic messaging system.
Claims 1, 7 and 13, a testing tool, a non-transitory computer readable medium and a method comprising:
a processor communicatively coupled to a database;
memory communicatively coupled to the processor, the memory including instructions that are executable by the processor to cause the processor to:
communicate, over a network, with an electronic messaging system that is separate from the testing tool;
receive from the database, a file including information about multiple electronic transactions, the information being in a non-standardized format relative to the electronic messaging system and not processable by the electronic messaging system;
convert, at the testing tool, the non-standardized format electronic transaction information into standardized format electronic transaction information that is processable by the electronic messaging system;
create, at the testing tool, from the standardized format electronic transaction information, a bulk message file containing a multitude of standardized multi-variable electronic messages, where each standardized multi-variable electronic message corresponds to an electronic transaction represented in the file received from the database;
transmit the bulk message file to the electronic messaging system; and
cause the electronic messaging system to initiate and attempted processing of the standardized multi-variable electronic messages in the bulk message file.
evaluating results of the attempted processing, by the electronic messaging system, of the standardized multi-variable electronic messages in the bulk message file, to identify processing errors or failures.
Claims 2, 9 and 16
Claims 6, 12 and 18
Claims 3 and 10
Claims 3, 9 and 15
Claims 4, 11 and 17
Claims 4-5, 10-11 and 16-17
Claims 5, 12 and 18
Claims 2, 8 and 14
Claims 6, 13 and 19
Claims 1, 7 and 13
Allowable Subject Matter
Claims 1-20 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.
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