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 .
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, 3, 5, 6, 7, 8, 9, 10, 12, 14, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 1, 6, 6, 6, 6, 17, 25, 17, 1 and 12, respectively, of U.S. Patent No. 11,077,863. Although the claims at issue are not identical, they are not patentably distinct from each other.
The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”). The patent claims disclose all of the claimed limitations of the noted instant application claims, as well as additional limitations.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dolgov et al. (hereafter Dolgov)(US PgPub 2014/0303827).
Regarding claim 1, Dolgov discloses a method (see Title and Figure 4A) comprising: receiving, by one or more processors of a vehicle operating in an autonomous driving mode, a user input (Figures 4A-4B, Element 402 and Paragraphs 0093-0099 where the vehicle senses user inputs that indicate transition from an autonomous mode to a manual driving mode); in response to the received user input, changing, by the one or more processors, the autonomous driving mode to a semi-autonomous driving mode or a manual driving mode and providing an initial disengage alert (Figure 4A, Element 412 and Paragraphs 0112-0113 where the vehicle is transitioned from an autonomous mode to a manual driving mode and the user is provided disengage instructions); determining, by the one or more processors, a time when a secondary disengage alert should be provided after the autonomous driving mode is changed; and providing, by the one or more processors, the secondary disengage alert at the determined time (Figures 4A, 4B, Elements 403, 404 and Paragraphs 0088 and 0094-0101 where the vehicle detects if user inputs are above a predetermined threshold and provides a timed alert for rejection of subsequent requests for transition of control if the inputs are below the predetermined threshold. The alert for rejection occurs after an initial driving mode change).
Regarding claim 2, Dolgov discloses wherein the time is determined based on the vehicle's proximity to one or more other vehicles (Figure 4C and Paragraphs 0029, 0035 and 0110 where vehicle environment, such as distances to objects, is determined and alerts are provided to the user).
Regarding claim 3, Dolgov discloses wherein the time is determined based on a current speed of the vehicle (Paragraphs 0100, 0105 and 0110 where alerts are provided to the user based on vehicle speed).
Regarding claim 4, Dolgov discloses wherein the time is determined based on a distance between the vehicle and one or more objects defined by map information (Figure 4C and Paragraphs 0029, 0035 and 0110 where vehicle environment, such as distances to objects, is determined and alerts are provided to the user based on known map information).
Regarding claim 5, Dolgov discloses determining, by the one or more processors, whether the user input was unintentional (Figures 4B-4C and 0093-0110 where inputs below the threshold are deemed to be unintentional).
Regarding claim 6, Dolgov discloses wherein the user input is generated by a user of the vehicle applying a force to one of a plurality of input devices (Figure 4B and Paragraphs 0084 and 0094-0101).
Regarding claim 7, Dolgov discloses wherein the one of the plurality of input devices is a brake pedal (Figure 4B, Element 403c and Paragraph 0096).
Regarding claim 8, Dolgov discloses wherein the one of the plurality of input devices is an accelerator pedal (Figure 4B, Element 403b and Paragraph 0095).
Regarding claim 9, Dolgov discloses wherein the one of the plurality of input devices is a steering wheel (Figure 4B, Element 403a and Paragraph 0094).
Apparatus claims 10-18 are drawn to the apparatus corresponding to the method of using same as claimed in claims 1-9. Therefore apparatus claims 10-18 correspond to method claims 1-9 and are rejected for the same reasons of anticipation as used above.
Regarding claims 19-20, see rejections for claims 1-9 which disclose all of the claimed limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS D ALUNKAL whose telephone number is (571)270-1127. The examiner can normally be reached M-F 9AM-5PM.
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/THOMAS D ALUNKAL/Primary Examiner, Art Unit 2686