DETAILED ACTION
Application filed 11/12/2024 has been examined.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending.
This is a continuation application of 18/106474 USPN 12,174,696 which is a continuation of 17/207600 USPN 11,593,197.
Obvious-type double patenting rejections are presented herein. A terminal disclaimer would obviate the rejection.
Specification and drawings are accepted.
IDSs have been considered. PTO-1449s are attached.
Application is pending.
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. 12,174,696.
Although the claims at issue are not identical, they are not patentably distinct from each other. For example, claim 1 of the present application teaches a storage device, comprising: storage media for a data; a controller to manage access to the data in the storage media; a data structure to associate a first property with a first quality metric and to associate a second property with a second quality metric; and a transmitter to return the data structure. Whereas claim 1 of U.S. patent ‘696 teaches a storage device, comprising: storage for a data; a controller to manage writing the data to the storage and reading the data from the storage; a data structure to associate a first property based at least in part on a first read request with a first quality metric and to associate a second property based at least in part on a second read request with a second quality metric; and a transmitter to return the data structure. The slight difference is the read request which is obvious since in order to gain access to the storage media there would inherently need to be a read request. Therefore the claims are obvious variations of each other and not patentably distinct. A terminal disclaimer would obviate the rejection.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,593,197.
Although the claims at issue are not identical, they are not patentably distinct from each other. For example, claim 1 of the present application teaches a storage device, comprising: storage media for a data; a controller to manage access to the data in the storage media; a data structure to associate a first property with a first quality metric and to associate a second property with a second quality metric; and a transmitter to return the data structure. Whereas claim 1 of U.S. patent ‘197 teaches a storage device, comprising: storage for data; a controller to manage writing the data to the storage and reading the data from the storage; a data quality metric table to map a first number of errors to a first data quality metric and map a second number of errors to a second data quality metric; and a transmitter to return the data quality metric table to a host, wherein the storage device uses the data quality metric table to determine a data quality metric for a read request based at least in part on a number of errors based at least in part the read request. Again the main concept in both claims is similar wherein there is a data structure maps property with quality metrics. Therefore the claims are obvious variations of each other and not patentably distinct. A terminal disclaimer would obviate the rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUJTABA M CHAUDRY whose telephone number is (571)272-3817. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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MUJTABA M. CHAUDRY
Primary Examiner
Art Unit 2112
/MUJTABA M CHAUDRY/Primary Examiner, Art Unit 2112