DETAILED ACTION
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 Arguments
Applicant's arguments filed 01/02/26 have been fully considered but they are not persuasive. In regards to applicant’s argument that the statutory double patenting rejection is invalid, the examiner respectfully disagrees. The first part of the argument is based on the words communicable and connectable. The instant application mentions that the information processing device is “communicable” with the printer. This requires the printer to be connected with the information processing device to be able to communicate, and therefore is communicable. The patent 12,197,799 states that the information processing device is “connectable” to the printer. This means that the printer is connected to the information processing device. The claim language of the patent further describes communication occurring between the printer and the information processing device. Therefore, one can infer, that being connectable would also mean that the devices can communicate, and therefore are communicable. Although communicable and connectable are different words, the end result is that the devices are connected together to communicate.
The second part of the argument is based on the notification data being displayed, as claimed by the instant application, vs being provided to a user, as claimed in the patent. In order for something to be provided to a user, it has to be either displayed, printed, or notified in some fashion. The claim of the patent further states that the notification is displayed. This would mean that providing the notification to the user would require displaying the notification and therefore are the same. This would mean that the claim from the instant application is directed to the same invention as that of the patent and therefore, the statutory double patenting rejection stands.
It is noted that the non-statutory double patenting rejection is withdrawn in view of the terminal disclaimer.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-6 and 8 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-7 of prior U.S. Patent No. 12,197,799. This is a statutory double patenting rejection. Although the claims may differ slightly in wording, there is no difference in what is being claimed. The wording is more additional adjectives that are already described within the same claim.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 NICHOLAS PACHOL whose telephone number is (571)270-3433. The examiner can normally be reached M-Th: 8-4.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, George Eng can be reached at 571-272-7495. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS PACHOL/Primary Examiner, Art Unit 2699