DETAILED ACTION
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).
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Claims 1-20 of the instant application are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of Austin et al, U.S. Patent 12,155,629 B2 (hereinafter Patent ‘629). Although the conflicting claims are not identical, they are not patentably distinct from each other.
The subject matter claimed in the instant application is technically disclosed in the patent since the patent and the instant application are claiming common and/or overlapping subject matter. Independent claims 1, 8 and 15 of the instant application and independent claims 1, 8 and 14 of the Patent both generally recite and/or describe the same invention, such as:
A method, comprising:
receiving, by a network device, a first access request from a first mobile device to access a specified uniform resource locator (URL);
identifying, by the network device, that the first access request from the first mobile device corresponds to a first content filtering list, wherein the first content filtering list is provided by the first mobile device to the network device and is associated with a content filtering application vendor that advertises content filtering lists with an operator of the network device for user selection;
responsive to a determination that the specified URL is in the first content filtering list, restricting, by the network device, the first mobile device from accessing the specified URL, wherein the restricting is effected via a redirect function;
receiving, by the network device, a second access request from a second mobile device to access the specified URL;
identifying, by the network device, that the second access request from the second mobile device corresponds to a second content filtering list, wherein the second content filtering list is provided by the second mobile device to the network device and is associated with the content filtering application vendor, and wherein the second content filtering list includes a whitelist entry of the specified URL; and
responsive to a determination that the specified URL is in the second content filtering list but is included in the whitelist entry of the specified URL, permitting, by the network device, the second mobile device to access the specified URL.
Claims 1-20 of the instant application, and independent claims 1, 8 and 15 in particular, are drawn to the same invention and recite similar features / limitations as the independent claims of Patent ‘629, with the exception of the additional feature(s) or limitation(s) of “identifying, by the network device, that the first access request from the first mobile device corresponds to a first content filtering list, wherein the first content filtering list is provided by the first mobile device to the network device and is associated with a content filtering application vendor that advertises content filtering lists with an operator of the network device for user selection and download; the feature / limitation of determining, by the network device, that the specified URL is in the first content filtering list; as well as the feature / limitation of determining, by the network device, that the specified URL is in the second content filtering list, but is included in the whitelist entry of the second filtering list…” – recited by Patent ‘629.
The claimed invention in the instant application implements the methodology described by the patent, but is lacking the above aforementioned additional claim features. Accordingly, Claims 1-20 of Patent ‘629 anticipates all of the limitations of the instant application.
In removing this/these limitation(s), the scope of the claim(s) is merely broadened by eliminating elements and their functions. It has been held that omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 365 (Bd. App. 1969) (omission of a reference element whose function is not needed would be obvious to one skilled in the art).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GLENFORD J MADAMBA whose telephone number is (571)272-7989. The examiner can normally be reached on Mondays to Fridays, from 9am to 5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Parry, can be reached at telephone number 571-272-7989. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GLENFORD J MADAMBA/Primary Examiner, Art Unit 2451