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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 20 is drawn to a computer readable medium storing instruction, where the computer readable medium can be transitory, i.e., is not explicitly limited as disclosed as only being non-transitory computer readable media; therefore, fail(s) to fall within a statutory category of invention. A non-transient CRM can be transitory where the disclosure does not explicitly limit the non-transient CRM as only being non-transitory computer readable media. A signal can be transient or not transient if referring to the decay characteristic, hence non-transient is NOT synonymous with non-transitory.
Applicant should note that adding "non-transitory" to the claim to limit a claimed computer readable medium to being statutory would be acceptable.
A claim directed to a computer readable medium having stored thereon a computer program is non-statutory, where the computer readable medium can be a signal, a carrier wave, or a data structure, per se, which are non-statutory as noted, infra.
A claim directed to a signal, a carrier wave, or a data structure, per se, is non-statutory because it is not:
A process, or
A machine, or
A manufacture, or
A composition of matter.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,205,467. Although the claims at issue are not identical, they are not patentably distinct from each other because both claims encompass similar scope.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,205,467.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Closest prior art Matsumoto et al. (US 2019/0289950) teaches “an information processing method in which an electronic device embedded in footwear or attached to the footwear. The footwear having a communicator configured to communicate with one or more external terminals executes an authentication step of authenticating, whether or not a user wearing the footwear is an authorized user, an acquisition step of acquiring at least a payment request of a reward for the user wearing the footwear from the one or more external terminals via the communicator when the authentication has succeeded, an acceptance step of accepting the acquired payment request in accordance with a prescribed action performed by the user, and a transmission step of transmitting an acceptance result to the one or more external terminals via the communicator.” Additionally, Moran et al. (US 2018/0078207) teaches “A wearable article, system, and methods may include a structure configured to enclose a human body part. A first antenna, positioned with respect to the structure, is tuned to communicate, while the wearable article is being worn, according to a first wireless communication modality with a first external antenna. A second antenna, positioned with respect to the structure, is tuned to communicate according to a second wireless communication modality with a second external antenna different than the first external N antenna, the second communication modality being different than the first communication modality. A transceiver, coupled to at least one of the first antenna and the second antenna, is configured to communicate via one of the first and second antennas based, at least in part, on the one of the first and second antennas coining into wireless communication contact with a corresponding one of the first and second external antennas.” Finally, Montanya et al. (US 2007/0028486) teaches “Footwear with at least one light source that is located on said footwear to be visible exteriorly thereof. The components for the light source include a power source for energizing the light source, a circuit for selectively electrically connecting said power source with the light source to illuminate the source, a pressure switch, which while depressed is "closed" and when not depressed is "open", where the circuit is adapted to disconnect the power source from the light source a predetermined time after said pressure switch is "open". The circuit is adapted to connect the power source to the light source when the switch is "closed". Preferably, the light source is an electroluminescent lamp, which is combined with a graphic layer producing an animated EL panel.” However, the cited prior arts do not teach an intelligent electronic shoes system with functionalities as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to An T Nguyen whose telephone number is (571)270-5167. The examiner can normally be reached Monday - Friday 9-5 ET.
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/AN T NGUYEN/Primary Examiner, Art Unit 2686
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