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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,147,816 in view of Knichel et al., US Patent Appl. Pub. No. 2014/00751712.
Claim 1 of U.S. Patent No. 12,147,816 discloses all claim elements of claim 1 in the current Application except omitting a reconfiguration of the device, if the first UID matches the second UID, and depending on a required speed for applying a pre-calculated configuration set, obtain the pre-calculated configuration set from a HW device of the device, from a storage of the device, or from a cloud device connectable to the device.
Knichel teaches obtaining the hardware/software configuration from computer-readable media (FIG. 1, 110) which can be implemented as internal memory within the computing device (FIG. 1, 110, FIG. 5. 512, paragraph 0016, lines 1-6, paragraph 0068), as a portable USB flash drive (FIG(s) 1 and 5, 118, paragraph 0017, lines 1-9, paragraph 0075), or installed on remote cloud storage device (FIG. 1, 120, FIG. 5, 520-522, paragraph 0017, lines 12-15, paragraph 0078, lines 4-8, paragraph 0082, lines 4-7, paragraphs 0082-0084). Accordingly, Knichel discloses obtaining the hardware/software configuration from three different locations, each having different speed (by definition internal RAM or ROM is faster than a removable USB flash drive, which itself is faster than the cloud storage device, being the slowest). Knichel further teaches in case the derived hardware device identifier (first UID) matches an already existing/stored identifier (second UID), there is no loading of default settings and no further optimization for new hardware configuration (i.e. no reconfiguration – FIG. 3, 306-Yes, 308-310, paragraph 0033). In Knichel, this allows for booting a portable OS installation across different machines that may have different hardware configurations (paragraph 0001, lines 11-15, paragraph 0010). Thus, optimizing the boot speed (paragraph 0033, lines 1-12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above-describe functionality for obtaining the hardware/software configuration from three different storage locations (each having different speed), as suggested by Knichel with claim 1 of U.S. Patent No. 12,147,816 in order to implement omitting a reconfiguration of the device, if the first UID matches the second UID, and depending on a required speed for applying a pre-calculated configuration set, obtain the pre-calculated configuration set from a HW device of the device, from a storage of the device, or from a cloud device connectable to the device.
Claim Rejections - 35 USC § 102 / 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Knichel et al., US Patent Appl. Pub. No. 2014/00751712.
Regarding claim 1, Knichel discloses a radio frequency, RF, measurement device for enhancing processing speed and reducing computational effort, wherein the device is configured to:
store at least one pre-calculated configuration set with an associated first unique identifier, UID (storing hardware identifiers for different computing devices to associated hardware configuration state data – paragraphs 0011, lines 2-9, FIG. 1, paragraph 0018, lines 7-14, paragraph 0019, lines 1-5);
obtain a second UID locally and/or via a communication network (upon boot, the current identifier for a particular computing device [second UID] is derived – FIG. 2, 204, paragraph 0025, FIG. 3, 304, paragraph 0031, lines 1-7);
configure the device according to the pre-calculated configuration set and omit a reconfiguration of the device (in case the derived hardware device identifier matches an already existing/stored identifier, there is no loading of default settings and no further optimization for new hardware configuration [i.e. no reconfiguration] – FIG. 3, 306-Yes, 308-310 paragraph 0033), if the first UID matches the second UID (comparing the derived identifier with identifier(s) stored during previous boot(s) – FIG. 2, 206-208, paragraph 0028, paragraph 0031, lines 14-17, FIG. 3, 306-Yes, 308-310, paragraph 0031, lines 17-23, paragraph 0032, lines 1-9, paragraph 0033, lines 1-7, paragraph 0043, lines 1-3 and 5-8); wherein the pre-calculated configuration set comprises at least one of: a software configuration setting, a hardware configuration setting (paragraph 0020).
Although Knichel does not explicitly state depending on a required speed for applying a pre-calculated configuration set, obtain the pre-calculated configuration set from a HW device of the device, from a storage of the device, or from a cloud device connectable to the device, Knichel clearly discloses obtaining the hardware/software configuration from computer-readable media (FIG. 1, 110) which can be implemented as internal memory within the computing device (FIG. 1, 110, FIG. 5. 512, paragraph 0016, lines 1-6, paragraph 0068), as a portable USB flash drive (FIG(s) 1 and 5, 118, paragraph 0017, lines 1-9, paragraph 0075), or installed on remote cloud storage device (FIG. 1, 120, FIG. 5, 520-522, paragraph 0017, lines 12-15, paragraph 0078, lines 4-8, paragraph 0082, lines 4-7, paragraphs 0082-0084). Accordingly, Knichel inherently discloses obtaining the hardware/software configuration from three different locations, each having different speed (by definition internal RAM or ROM is faster than a removable USB flash drive, which itself is faster than the cloud storage device, being the slowest). In Knichel, this allows for booting a portable OS installation across different machines that may have different hardware configurations (paragraph 0001, lines 11-15, paragraph 0010). Thus, optimizing the boot speed (paragraph 0033, lines 1-12). In view of these teachings, it would have been obvious, if not inherent to one of ordinary skill in the art to implement the functionality of depending on a required speed for applying a pre-calculated configuration set, obtain the pre-calculated configuration set from a HW device of the device, from a storage of the device, or from a cloud device connectable to the device. One of ordinary skill in the art would be motivated to do so in order to optimize the boot speed.
Response to Arguments
Applicant's arguments filed 05/26/2026 have been fully considered but they are not persuasive.
The applicant argued in essence that the Knichel reference is silent with respect to the feature that a reconfiguration of the device is omitted if the first UID matches the second UID.
The examiner disagrees. In Knichel, upon determining that the derived hardware device identifier (first UID) matches an already existing/stored identifier (second UID), there is no loading of default settings and no further optimization for new hardware configuration (i.e. no device reconfiguration is needed and the existing, pre-stored hardware configuration is loaded – FIG. 2, 206-208, paragraph 0028, FIG. 3, 306-Yes, 308-310, paragraph 0033). This functionality is advantageous such that pre-loading of excessive and unnecessary default boot start drivers (the drivers are part of the hardware configuration – paragraph 0020) may be avoided (no device reconfiguration), which optimizes the boot time (paragraph 0033, lines 10-12).
Thus, Knichel meets the argued claim language.
In addition, amended claim 1 remains rejected for double patenting, as indicated above.
Therefore, the rejection(s) of claim 1 are maintained, as indicated in this Office action.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEFAN STOYNOV whose telephone number is (571)272-4236. The examiner can normally be reached 8AM - 4:30PM.
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/STEFAN STOYNOV/ Primary Examiner, Art Unit 2175
Prosecution Insights