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 .
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 1-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4 , 8, 9, 11, 12, 15, 17 and 18 of U.S. Patent No. 12, 170, 939. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed limitations recited in the present application are found in the U.S. Patent No. 12, 170, 939 with obvious wording variations. Take an example of comparing claims 1 in pending application and claim 1 of the U.S. Patent No. 12, 170, 939:
Pending Application No. 18/903,995
U.S. Patent No. 12, 170, 939
Claim 1, A device comprising: a processor; and memory storing computer-executable instructions that, when executed by the processor, cause the device to: send, to a first node of a first network, a first request to register for one or more services of a telecommunication service provider; start a first timer in response to sending the first request, the first timer being configured to expire after a first period of time and to stop in response to the device receiving the response indicating the successful registration prior to expiration of the first timer; receive user input to establish a communication session prior to receiving a response indicating a result of the first request to register for the one or more services; start a second timer in response to receiving the user input, the second timer being configured to expire after a second period of time and to stop in response to the device receiving a response indicating a successful registration prior to expiration of the second timer, wherein the first period of time that is longer than the second period of time; prior to expiration of the second timer, receive the response indicating the successful registration; stop the second timer in response to receiving the response indicating the successful registration; stop the first timer in response to the receiving of the response indicating the successful registration; and establish the communication session via the first node of the first network.
Claim 2 is similar to claim 3 in U.S. Patent No. 12, 170, 939.
Claim 3 is similar to claim 4 in U.S. Patent No. 12, 170, 939.
Claim 4 is similar to claim 8 in U.S. Patent No. 12, 170, 939.
Claim 5 is comparable to claim 3 in U.S. Patent No. 12, 170, 939.when claim states sip request which is initiated by a user equipment, see Fig 1
Claim 6 is similar to claim 15 in U.S. Patent No. 12, 170, 939.
Claim 7 is similar to claim 17 in U.S. Patent No. 12, 170, 939.
Claim 8 is similar to claim 18 in U.S. Patent No. 12, 170, 939.
Claim 9 is similar to claim 8 in U.S. Patent No. 12, 170, 939, however it’s apparatus claim instead of non transitory computer medium claim.
Claim 10 is comparable to claim 17 in U.S. Patent No. 12, 170, 939.when claim states sip request which is initiated by a user equipment, see Fig 1.
Claim 11 is similar to claim 9 in U.S. Patent No. 12, 170, 939.
Claim 12 is similar to claim 11 in U.S. Patent No. 12, 170, 939.
Claim 13 is similar to claim 12 in U.S. Patent No. 12, 170, 939.
Claim 14 is similar to claim 8 in U.S. Patent No. 12, 170, 939, however it’s an apparatus claim instead of a method claim.
Claim 15 is comparable to claim 11 in U.S. Patent No. 12, 170, 939.when claim states sip request which is initiated by a user equipment, see Fig 1.
Claim 1, A device comprising: a processor; and memory storing computer-executable instructions that, when executed by the processor, cause the device to: send, to a first node of a first network, a first request to register for one or more services of a telecommunication service provider; start a first timer in response to sending the first request, the first timer being configured to expire after a first period of time and to stop in response to the device receiving a response indicating a successful registration prior to expiration of the first timer; receive user input to establish a communication session prior to receiving the response indicating the result of the first request to register for the one or more services; start a second timer in response to receiving the user input, the second timer being configured to expire after a second period of time that is shorter than the first period of time and to stop in response to the device receiving the response indicating the successful registration prior to expiration of the second timer; determine that the second timer has expired without the device having received the response indicating the successful registration; cause a premature expiration of the first timer in response to determining that the second timer has expired without the device having received the response indicating the successful registration; and in response to determining that the second timer has expired without the device having received the response indicating the successful registration, send a second request to register for the one or more services to at least one of: a second node of the first network; or a node of a second network.
Further, the instant claims obviously encompass the claimed invention of U.S.
Patent No. 12, 170, 939 and differ only in terminology. To the extent that the instant
claims are broadened and therefore generic to the claimed invention of U.S. Patent No.
U.S. Patent No. 12, 170, 939, in re Goodman 29 USPQ 2d 2010 CAFC 1993, states
that a generic claim cannot be issued without a terminal disclaimer, if a species claim
has been previously been claimed in a co-pending application.
Allowable Subject Matter
Claim1-15 would be allowable if an approved terminal disclaimer is sent to USPTO, as set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH E DEAN, JR whose telephone number is (571)270-7116. The examiner can normally be reached Mon-Fri 7:30-3:30.
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/JOSEPH E DEAN, JR/Primary Examiner, Art Unit 2647
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