DETAILED ACTION
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 .
Response to Arguments
Applicant’s arguments, see pages 12-16, filed 2/2/26, with respect to the 35 USC 101 rejection of claims 1-20 have been fully considered and are persuasive. The 35 USC 101 rejection of claims 1-20 has been withdrawn.
Applicant’s arguments, see pages 17-19, filed 2/2/26, with respect to the 35 USC 103 rejection of claims 1, 12, and 20 have been fully considered and are persuasive. The 35 USC 103 rejection of claims 1, 12, and 20 has been withdrawn.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,500,955. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the present claims are taught by the claims of U.S. Patent No. 11,500,955 with only minor grammatical differences.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,790,023. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the present claims are taught by the claims of U.S. Patent No. 11,790,023 with only minor grammatical differences.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,216,725. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of the present claims are taught by the claims of U.S. Patent No. 12,216,725 with only minor grammatical differences.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lamping et al. U.S. Patent No. 6,370,538
A document management system A is employed to provide arbitrary properties to documents 40, such that the hierarchical constraints of previous file systems are avoided. An interface 10 is provided for visualizing document properties and a location of the documents within an organized arrangement. A repository C holds documents and the attached properties. A first containment structure 26 is designed to portray representations of documents in the repository having a first property type. A second containment structure 24 is provided to portray representations of documents in the repository having a second property type. Within the first containment structure 26 is a first document 40 having a first property type. A movement mechanism 43 is designed to move the representation of the first document 40, stored in the first containment structure 26 to a location in the second containment structure 24. A property analyzer 47 senses operation of the movement mechanism 43 and analyzes properties attached to the first document 40 when the representation of the first document is to be moved into the second containment structure. A property changer 49 alters at least one of the properties of the first document 40 based on information received from the property analyzer 47. By this arrangement, a user may generate a structure of document organization in a system which separates a document's content and the properties of a document.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRIS E MACKES whose telephone number is (571)270-3554. The examiner can normally be reached Monday-Friday 9:00-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kavita Stanley can be reached at 571-272-8352. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRIS E MACKES/Primary Examiner, Art Unit 2153