DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prior Art
Examiner has conducted an updated prior art search in view of the new claims and will not provide an art rejection at this time.
Examiner would like to cite but not rely upon the following references which generally describe the state of the art at the time of filing.
US 12591823 B2 Ryali; Venkata Karthik et al.
US 20230419302 A1 NAVARRO M et al.
US 20230388132 A1 Thacker; Cameron et al.
US 10922728 B2 McGregor; David S. et al.
US 10832298 B2 Bousis; George et al.
US 10679267 B2 Metnick; Josh K.
US 10546277 B2 Metnick; Josh K. et al.
US 20200020004 A1 METNICK J K
US 10423993 B2 Metnick; Josh K.
US 20180204259 A1 FILTER T et al.
US 20180040041 A1 METNICK J K
US 20170372308 A1 BARSKI C H et al.
US 20170186057 A1 METNICK J K
US 20170083959 A1 BOUSIS G et al.
US 20170046689 A1 Lohe; Timothy et al.
US 8655720 B2 Woodward; Gregory Charles et al.
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 1-12 of U.S. Patent No. 12,639,713. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other. The only differences between the two claim sets are the “obtaining” and “causing” limitations. The “causing” limitation in the patent merely further describes the inclusion of the next block as a “contingent asset solution”. The removal of this phrase in the current case does not change the scope of the limitation and thus these two limitations are obvious variants of each other. The “obtaining” limitation in the present case further defines the contingent asset secure exchange as listing representations of smart contracts and associated contingent assets. The difference between the two claim sets is merely what the distributed ledger is associated with, which is an obvious variation.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,491,989. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other. The main differences between the two claim sets are what the underlying asset is called “contingent asset” vs. “hypothetical contingent asset” and how the assets are described in the claims. The current claim set also contains an “issuing… a digital record…” step which is an obvious variant in the art of blockchains/digital ledgers.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 19/393,876 (reference application) (note-child application of U.S. Patent No. 12,491,989). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other. The main differences between the two claim sets are what the underlying asset is called “contingent asset” vs. “hypothetical contingent asset” and how the assets are described in the claims. The current claim set also contains an “issuing… a digital record…” step which is an obvious variant in the art of blockchains/digital ledgers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J WARDEN whose telephone number is (571)272-9602. The examiner can normally be reached M-F; 9-6 CDT.
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, Bennett M Sigmond can be reached at 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J. WARDEN/
Examiner
Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
Prosecution Insights