DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,153,590. This is a statutory double patenting rejection.
Present application (18/959,100) Claims 1-3:
A method for deleting a tag, comprising:
receiving a message on a tag from a control authority, wherein the message includes an identifier of the tag and a signature of the control authority;
determining that the message includes a control authority delete tag protocol identifier; determining that the message includes the identifier of the tag; determining that the message includes the signature of the control authority; and
removing a tag identifier of a second tag that is included in the message from a tag identifier map of the tag.
Conflicting Patent (12,153,590) Claim 1:
A method for deleting a tag, comprising:
receiving a message on a tag from a control authority, wherein the message includes an identifier of the tag and a signature of the control authority; determining that the message includes a control authority delete tag protocol identifier; determining that the message includes the identifier of the tag; determining that the message includes the signature of the control authority; and
removing a tag identifier of a second tag that is included in the message from a tag identifier map of the tag.
Comments
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14, 17 and 18 of U.S. Patent No. 8,558,668. Although the claims at issue are not identical, they are not patentably distinct from each other because
Present application (18/959,100) Claim 1:
A method for deleting a tag, comprising:
receiving a message on a tag from a control authority, wherein the message includes an identifier of the tag and a signature of the control authority;
determining that the message includes a control authority delete tag protocol identifier; determining that the message includes the identifier of the tag; determining that the message includes the signature of the control authority; and
removing a tag identifier of a second tag that is included in the message from a tag identifier map of the tag.
Conflicting Patent (8,558,668) Claims 1, 14, 17 and 18:
A method for checking the proximity of one or more tags comprising: receiving a first message on a tag that is of a first type, that is broadcast at a regular time interval from a partner tag using a partner timer interrupt on the partner tag, and that includes a partner identifier of the partner tag that is used to distinguish the partner tag from other tags; reading the partner identifier of the partner tag from said first message on the tag; incrementing a number of tag encounters on the tag for said read partner identifier; sounding an alarm on the tag if said read partner identifier is in a list of sensitive tags on the tag; and broadcasting from the tag a second message that includes an identifier of the tag at the same regular time interval using a timer interrupt on the tag that the partner tag receives, uses to increment a number of partner tag encounters on the partner tag, and uses to sound an alarm on the partner tag if the identifier is in a partner list of sensitive tags on the partner tag, wherein the identifier is used to distinguish the tag from other tags;
receiving a message of a third type; reading a tag identifier from said message of said third type; and removing said tag identifier from said list of sensitive tags;
wherein said removing step is performed only if a signature in said message of said third type verifies.
Comments
Even though the patented claims do not include the limitation “the message includes an identifier of the tag…” it would have been obvious to one having ordinary skill in the art at the time the invention was made to include identifier of a target device in a message in order to address a particular device among plurality of devices.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NABIL H SYED whose telephone number is (571)270-3028. The examiner can normally be reached 8:00-5:00 M-F.
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/NABIL H SYED/Primary Examiner, Art Unit 2686