DETAILED ACTION
Claims 1-20 are 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 10/31/24 and 3/9/26 have been considered by the examiner.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,177,224. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the parent patent anticipate those of the instant application. For illustration, consider the respective claim 1 from each disclosure:
Claim 1 of the instant application
Claim 1 of the ‘224 patent
A system for automated information security authorization that facilitates an approval or a denial of a user's request for access to a module via an authorization request tool comprising:
components for receiving the user request for access to the module from the authorization request tool over a computer network;
a computer machine comprising a processor; and
computer-executable instructions stored on a computer-readable medium configured to cause the processor to perform steps comprising:
receiving, by the computer machine from the authorization request tool, a user request for access to the module;
storing, by the processor into a first sector of the computer-readable medium, the user request;
generating, by the processor, a peer group dataset;
storing, by the processor into a second sector of the computer-readable medium, the peer group data set for the user request;
generating, by the processor, a user dataset for the user request;
loading, from the computer-readable medium by the processor into a third sector of the computer-readable medium, the user dataset for the user request;
calculating, by the processor, a critical score for the user request;
loading, from the computer-readable medium by the processor into a fourth sector of the computer-readable medium, the critical score for the user request;
determining, by the processor, if the critical score for the user request is less than an enterprise threshold;
generating, by the processor, an approval of the user request for access to the module if the critical score for the user request is less than an enterprise threshold; or
generating, by the processor, a denial of the user request if the critical score for the user request is more than an enterprise threshold;
transmitting, by the processor, the approval or the denial of the user request; and
storing, by the computer machine from the authorization request tool, the approval or the denial of the user request for access to the module.
An information-security automated process for authorizing requests by a user to a module from an authorization request tool, the process implemented on a computer machine with a processor that executes computer-executable instructions stored on a computer-readable medium, the module, the authorization request tool, and the computer machine coupled together over a computer network, the process comprising the steps of:
receiving, by the computer machine from the authorization request tool, a user request for access to the module;
storing, by the processor into a first sector of the computer-readable medium, the user request;
generating, by the processor, a peer group dataset;
storing, by the processor into a second sector of the computer-readable medium, the peer group data set for the user request;
generating, by the processor, a user dataset for the user request;
loading, from the computer-readable medium by the processor into a third sector of the computer-readable medium, the user dataset for the user request;
calculating, by the processor, a critical score for the user request;
loading, from the computer-readable medium by the processor into a fourth sector of the computer-readable medium, the critical score for the user request;
determining, by the processor, if the critical score for the user request is less than an enterprise threshold;
generating, by the processor, an approval of the user request for access to the module if the critical score for the user request is less than an enterprise threshold; or
generating, by the processor, a denial of the user request if the critical score for the user request is more than an enterprise threshold;
transmitting, by the processor, the approval or the denial of the user request; and
storing, by the computer machine from the authorization request tool, the approval or the denial of the user request for access to the module.
As can be seen, the claims differ only in the instant claims are technically in a different statutory category of invention (system claims in the instant application, vs. process claims of the parent ‘224 patent). However, every limitation of the parent ‘224 claim is found in the instant claim, such that any invention that would infringe the instant application would also unavoidably infringe the ‘224 patent as well, resulting in two patents on the same invention.
Independent claims 10 & 19 of the instant application are likewise substantial duplicates of corresponding claims 10 & 19 of the ‘224 patent and are rejected for substantially similar reasons as discussed supra. Dependent claims 2-9, 11-18 & 20 of the instant application are likewise substantial duplicates of corresponding claims 2-9, 11-18 & 20 of the ‘224 patent and are rejected for substantially similar reasons as discussed supra.
Allowable Subject Matter
Claims 1-20 are allowable over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Gyorfi whose telephone number is (571)272-3849. The examiner can normally be reached 10:00am - 6:30pm.
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THOMAS A. GYORFI
Examiner
Art Unit 2435
/THOMAS A GYORFI/Examiner, Art Unit 2435 8/8/26
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