DETAILED ACTION
This office action is responsive to the Amendments/Request for reconsideration filed on 11/11/2025 after Non-Final filed 08/11/2025. The application contains claims 1-20, all examined and rejected.
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 .
Response to Amendment
It is acknowledged that claims 1, 3, 13, 14, 16, 19 were amended.
Response to Arguments
Applicant’s arguments, see Pg. 17, filed 11/11/2025, with respect to the amended portion of claims 1, 13, 16 have been fully considered and are persuasive. The rejection of claims 1-20 under 35 U.S.C. 102(a)(1) as being anticipated by Palmer et al. (US 20020073001) has been withdrawn.
Allowable Subject Matter
Claims 1-20 would be allowable if the Double Patenting rejection below is resolved.
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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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 10121177. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations recited in U.S. Patent No. 10121177 fully anticipates Claim 1, 13 and 16, as shown in the table below. Dependent claims 2-12, 14, 15, 17-20 are rejected based on being dependent on rejected independent claims 1, 13 and 16.
Instant Application 18/921553
U.S. Patent No. 10121177
Claim 1, 13 and 16 recites:
… displaying a user interface configured to receive a user input search request for the part numbers of the configurable product; receiving, via the user interface, the user input search request defining one or more configurable properties of the configurable product;
analyzing the user input search request to determine entities present in a database matching the one or more configurable properties of the user input search request, the database storing a plurality of virtual families, each virtual family of the plurality of virtual families including a plurality of independent groups, each independent group defining (1) at least one configurable property of the configurable product and (2) part number positions of the part number corresponding to the configurable properties in the independent group, each independent group of the plurality of independent groups including part number positions of the part number for one or more characters, one or more numbers and/or one or more symbols that do not depend on one or more characters, one or more numbers and/or one or more symbols at part number positions of other independent groups of the plurality of independent groups, and at least one configurable property of the configurable product is included in independent groups of at least two virtual families,
wherein each of the plurality of independent groups in the respective virtual families includes part numbers of the same length
determining virtual families stored in the database including the entities matching the one or more configurable properties of the user input search request, wherein at least two of the determined virtual families include independent groups with a common configurable property;
determining the part numbers of the configurable product matching the user input search request, wherein the part numbers are determined based on allowed one or more characters, one or more numbers and/or one or more symbols for the part number positions defined in the independent groups of the virtual families determined to include the entities matching the one or more configurable properties of the user input search request;
and displaying information about one or more configurable products corresponding to one or more part numbers determined to match the user input search request.
Claim 1 recites:
… displaying a user interface configured to receive a user input search request for the part numbers of the configurable product; receiving, via the user interface, the user input search request defining one or more configurable properties of the configurable product;
analyzing the user input search request to determine entities present in a database matching the one or more configurable properties of the user input search request, the database storing a plurality of virtual families, each virtual family of the plurality of virtual families including a plurality of independent groups, each independent group defining (1) at least one configurable property of the configurable product and (2) part number positions of the part number corresponding to the configurable properties in the independent group, each independent group of the plurality of independent groups including part number positions of the part number for characters, number and/or symbols that do not depend on characters, number and/or symbols at part number positions of other independent groups of the plurality of independent groups, and at least one configurable property of the configurable product is included in independent groups of at least two virtual families;
(Claim 3 recites:
… the independent groups of one virtual family have a same length
determining virtual families stored in the database including the entities matching the one or more configurable properties of the user input search request, wherein at least two of the determined virtual families include independent groups with a common configurable property;
determining the part numbers of the configurable product matching the user input search request, wherein the part numbers are determined based on allowed characters, number and/or symbols for the part number positions defined in the independent groups of the virtual families determined to include the entities matching the one or more configurable properties of the user input search request;
and displaying, in the user interface, a list of part numbers determined to match the user input search request.
Claims 2, 4, are also rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 of U.S. Patent No. 11087375, 11734741, and 12154155. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations recited in 1 of U.S. Patent No. 11087375 fully anticipates Claims 2, 4, as shown in the table below. The limitations recited in U.S. Patent No. 11734741 and 12154155 recite similar limitation(s) to U.S. Patent No. 11087375, as such follows the same mapping and anticipation below.
Instant Application 18/921553
U.S. Patent No. 11087375
Claim 2 and 4 recites:
receiving specification information for the configurable product, the specification information including a plurality of symbol groups for the configurable product and at least one constraint involving at least one symbol group,
wherein the symbol groups define a format of the part number of the configurable product and each symbol group includes one or more part number positions of the part number for the one or more characters, one or more numbers and/or one or more symbols corresponding to the configurable properties of the configurable product;
(From claim 4:
generating a plurality of independent groups, each generated independent group including part number positions for one or more characters, one or more numbers and/or one or more symbols that do not depend on one or more characters, one or more numbers and/or one or more symbols at part number positions of other independent groups in the database, wherein generating the plurality of independent groups includes: generating an independent group for each symbol group;)
merging independent groups having the same configurable properties to form a new independent group;
and merging independent groups that, based on the at least one constraint, dependent on each other, wherein the dependent independent groups are merged to form a new independent group.
Claim 1 recites:
receiving specification information for a configurable product, the specification information including a plurality of symbol groups for the configurable product, at least one constraint involving at least one symbol group,
wherein the symbol groups define a format of a part number of the configurable product and each symbol group includes one or more part number positions of the part number for characters, number and/or symbols corresponding to a plurality of configurable properties of the configurable product represented by the symbol group; based on the specification information,
generating a plurality of independent groups, each independent group including part number positions for characters, number and/or symbols that do not depend on characters, number and/or symbols at part number positions of other independent groups, wherein generating the plurality of independent groups includes:
generating an independent group for each symbol group of the plurality of symbol groups;
merging independent groups having the same configurable properties to form a new independent group including the different part number positions from both of the merged independent groups having the same configurable properties;
and merging independent groups that, based on the at least one constraint, dependent on each other, wherein the dependent independent groups are merged to form a new independent group
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DENNIS TRUONG whose telephone number is (571)270-3157. The examiner can normally be reached Monday - Friday 7:00 am - 3:30 pm PT.
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/DENNIS TRUONG/Primary Examiner, Art Unit 2152 01/30/2026