DETAILED ACTION
The following is a Non-Final, First Office Action on the Merits in response to communications filed November 27, 2024. Currently, claims 1–20 are pending.
Information Disclosure Statement
The information disclosure statement filed November 27, 2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the information disclosure statement does not provide copies of Non-Patent Literature Documents 1 and 7. More particularly, although the title page of Non-Patent Literature Documents 1 and 7 have been provided, the provided documents are incomplete. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Allowable Subject Matter
Claims 1–20 are allowable over the prior art of record for the same reasons as stated on pages 7–8 of the Notice of Allowance mailed in parent application 16/423,981 on December 3, 2021.
Double Patenting – Statutory
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 1–20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1–20 of prior U.S. Patent No. 11,531,949. This is a statutory double patenting rejection.
Double Patenting – Nonstatutory
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 1–10 and 12–20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–12 and 14–17 of U.S. Patent No. 11,295,261. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1–9, 11, 10, 10–12, 14–17, and 10 of U.S. Patent No. 11,295,261 respectively anticipate each element of pending claims 1–10 and 12–20.
Claims 1–20 are further rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–12 and 14–21 of U.S. Patent No. 11,790,298. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1–12 and 14–21 of U.S. Patent No. 11,790,298 respectively anticipate each element of pending claims 1–20.
Still further, claims 1–20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–12 and 15–22 of U.S. Patent No. 12,190,271. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1–12 and 15–22 of U.S. Patent No. 12,190,271 respectively anticipate each element of pending claims 1–20.
Finally, claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,295,261 in view of MILKMAN et al. (U.S. 2015/0356477).
As noted above, claim 1 of U.S. Patent No. 11,295,261 discloses every element of pending claim 1. Claim 1 of U.S. Patent No. 11,295,261 does not, however, disclose determining that the proposed change is not associated with the set of risk mitigations.
Milkman discloses determining that the proposed change is not associated with the set of risk mitigations (See paragraphs 91–92, in view of paragraph 23, wherein business application risk assessments (BARA) are created for new applications in response to project changes, and wherein creating a new BARA includes creating a new control design, such that the proposed change is not associated with existing risk mitigations).
Claim 1 of U.S. Patent No. 11,295,261 discloses a system directed to managing risks associated with software changes. Milkman discloses a system directed to assessing and managing technology risks. Each reference discloses a system directed to managing technology risks. The technique of determining change-mitigation associations is applicable to the system of claim 1 of U.S. Patent No. 11,295,261 as they both share characteristics and capabilities, namely, they are directed to managing technology risks.
One of ordinary skill in the art would have recognized that applying the known technique of Milkman would have yielded predictable results and resulted in an improved system. It would have been recognized that applying the technique of Milkman to the teachings of claim 1 of U.S. Patent No. 11,295,261 would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate technology risk management into similar systems. Further, applying change-mitigation associations to claim 1 of U.S. Patent No. 11,295,261 would have been recognized by those of ordinary skill in the art as resulting in an improved system that would allow more detailed analysis and more reliable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM S BROCKINGTON III whose telephone number is (571)270-3400. The examiner can normally be reached M-F, 8am-5pm, EST.
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/WILLIAM S BROCKINGTON III/ Primary Examiner, Art Unit 3623