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 .
DETAILED ACTION
Claims 1-20 are pending in this office action.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 15/381,498, filed on December 16, 2016.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 18, 2024, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: the CROSS REFERENCE TO RELATED APPLICATIONS section needs updated to reflect applications that have matured into patents. Appropriate correction is required.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,135,783. Although the claims at issue are not identical, they are not patentably distinct from each other because both application and patent claim a method used in an on-board network system provided with a plurality of electronic controllers that exchange messages by communication over one or more networks, and a fraud detecting electronic controller connected to the one or more networks, the method comprising: determining, in the fraud detecting electronic controller, whether or not a message transmitted on the one or more networks connected to the fraud detecting electronic controller conforms to the rules based on fraud detection rules; receiving, from the external device external to the on-board network system, the delivery data including updated fraud detection rules and network type information indicating one of a plurality of network types to which the updated fraud detection rules are to be applied; determining whether or not the vehicle is running; when the vehicle is determined to be running, additionally determining whether or not the network type information indicates a drive network that is connected to an electronic controller related to travel of the vehicle; (i) when the network type information indicates the drive network, not conducting an update process with the updated fraud detection rules; and (ii) when the network type information does not indicate the drive network, updating the fraud detection rules to the updated fraud detection rules.
The patent further claims receiving an inquiry for a vehicle status indicating whether or not a vehicle in which the fraud detecting electronic controller is installed is running from an external device, and transmitting the vehicle status to the external device, whereas the instant application further claims the fraud detection rules being software for determining conformity to the rules. It would have been obvious to detect a vehicle status since the vehicle status is required to know if it is running and the fraud detection rules being software is one obvious way to deliver the rules to be processed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON HOFFMAN whose telephone number is (571)272-3863. The examiner can normally be reached Monday-Friday 8:30AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Pwu can be reached at (571)272-6798. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRANDON HOFFMAN/Primary Examiner, Art Unit 2433