DETAILED ACTION
This Office Action is in response to Applicant Remarks filed on February 25, 2025. Claims 1-13 are pending and presented for 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/21/25 and 8/28/25 has been considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: the status of the Cross-Reference to Related Applications in paragraph 0001.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 1, 7, 12 and 13 recites “send a request message, to a receiver, that indicates a resource discovery operation and also indicates a RESTful operation, wherein the request message includes filter criteria for use by the receiver when performing the resource discovery operation and the indicated resource discovery operation”. It is unclear how the receiver performs the resource discovery operation and the indicated resource discovery operation when both operations are the same. The request indicates a resource discovery operation and also indicates a RESTful operation and the receiver should be performing the indicate resource discovery operation and the indicated RESTful operation. The Examiner request further clarification from the Applicant.
Claim 1 recites the limitation "the discovery operation" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the discovery operation" in lines 9-10. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the discovery operation" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the discovery operation" in lines 7-8. There is insufficient antecedent basis for this limitation in the claim.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,019,155. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in U.S. Pat. No. 11,019,155 and would be covered by any patent granted since the U.S. Pat. No. 11,019,155 and the instant application are claiming common subject matter.
Allowable Subject Matter
Claims 1-13 would be allowable if the double patenting rejection, claim rejections and specification objection are overcome
The following is a statement of reasons for the indication of allowable subject matter:
The prior art made of record and not relied upon is considered pertinent to applicants disclose.
Dong et al (U.S. Pub. No. 2015/0055557) discloses a method and apparatus for supporting machine-to-machine caching a service capability layer of an M2M entity provides functions that are shared by the M2M applications and expose functionalities to the M2M applications through a set of open interfaces.
Di Girolamo et al (U.S. Pub. No. 2018/0234908) discloses receiving a discovery request message from an originator including filter criteria and checking whether any resources match the filter criteria in the discovery request message.
However, none of the prior art, alone or in combination anticipates or renders obvious the combination of limitations set forth in the independent claims sending a request message, to a receiver, that indicates a resource discovery operation an also indicates a RESTful operation and wherein the request includes filter criteria for use by the receiver when performing resource discovery operation, the filtering result being related to a matched resource set which fulfills the filter criteria, the filtering results being a result of the discovery operation performed at the receiver based on the filter criteria and comprising a set of discovered resources and a matched resource in the matched resource set is a resource for which the filter criteria is true and wherein the request message indicates that the RESTful operation is to be performed on a target resource set comprising one or more resources, which are related to the filtering result.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LASHONDA T JACOBS-BURTON whose telephone number is (571)272-4004. The examiner can normally be reached M-F 8:30 am - 5:00 pm.
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/LASHONDA JACOBS-BURTON/Primary Examiner, Art Unit 2457
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February 6, 2026