DETAILED ACTION
This action is in response to communication filed on 10/31/2024.
Claims 1-12 are pending.
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 on11/6/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being 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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,149,499. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘499 patent anticipate the broader instant claims, as the narrower patented claims describe a species that falls within the genus of the instant claims, with differences amounting to omission of limiting features or inclusions of obvious alternatives supported by the common specification.
Regarding claim 1, the subject matter is anticipated by claim 1 of the ‘499 patent because all elements of instance claim 1 are disclosed by claim 1 of ‘499 patent. The instant claim’s alternative “or sending DNS Query message to a local DNS server based on the second information” introduces an operational path not required in all embodiments, but the patented path (to central DNS) anticipates the claim under the broadest reasonable interpretation, as the alternative does not patentably distinguish the invention.
Regarding claim 2, the subject matter is anticipated by claim 2 of the ‘499 patent, which adds determining the first application platform and corresponding DNAI based on the first information, terminal location, and location information of at least one application platform meeting the instant limitation.
Regarding claim 3, the subject matter is anticipated by claim 3 of the ‘499 patent, which specifies the second information as an Extension Mechanism for DNS Client Subnet option or an IP address of a local DNS server, meeting the instant limitation.
Regarding claim 4, the subject matter is anticipated by claim 1 of the ‘499 patent, since the instant claims adds that the network element is for handling the DNS query message, as the network element (address resolution function) processes DNS queries as claimed.
Regarding claims 5-8, these apparatus claims parallel the method of claims 1-4 and are rejected on the same grounds over claims 1-3 and 4-6 of the ‘499 patent.
Regarding claims 9-12, these parallel claims 1-4 (claim 9 recites a similar method to claim 1, with dependents adding similar feature) and are rejected on the same grounds over claims 1-6 of the ‘499 patent, as the variations are not patentably distinct for the reasons above.
Conclusion
For the reason above, claims 1-12 have been rejected and remain pending.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIMMY H TRAN whose telephone number is (571)270-5638. The examiner can normally be reached Monday-Friday 9am-5pm PST.
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JIMMY H TRAN
Primary Examiner
Art Unit 2451
/JIMMY H TRAN/Primary Examiner, Art Unit 2451