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 .
Double Patenting
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 1-10, and 14-35 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-10, and 11-30 of prior U.S. Patent No. 12597199. This is a statutory double patenting rejection.
Regarding the claims above, it can be seen that the limitations of claims 1-10 correspond exactly to the limitations of claims 1-10 of the conflicting Patent. Thus claims 1-10 claim the same invention as claims 11-12 of the conflicting Patent.
Furthermore, the limitations of claims 14-23 correspond exactly to the limitations of claims 11-20 of the conflicting Patent. Thus claims 14-23 claim the same invention as claims 11-20 of the conflicting Patent.
Claims 24-25 recite “An information processing apparatus comprising one or more processors that execute information processing comprising…” which is functionally identical to claims 11-12 of the conflicting Patent which recite “An information processing system comprising: one or more processors that are configured to execute information processing comprising…” such that the only difference is the term “apparatus comprising one or more processors that execute information processing comprising” versus “system comprising: one or more processors that are configured to execute information processing comprising” but as the apparatus functions as a system and has one or more processors that execute the same exact information processing as the conflicting claims, then the apparatus with such processors executing the processing is identical to a system comprised of such processors that are configured to execute the processing. Such terms as explained appear to mean the same but in the event Applicant convincingly argues otherwise, the additional and alternative obviousness-type double patenting rejection explained below will apply regardless. Thus claims 24-25 claim the same invention as claims 11-12 of the conflicting Patent.
Finally, the limitations of claims 26-35 correspond exactly to the limitations of claims 21-30. Thus claims 26-35 claim the same invention as claims 21-30 of the conflicting Patent.
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 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 1-3, and 1,2 and 10 of U.S. Patent No. 12597199. Although the claims at issue are not identical, they are not patentably distinct from each other as will be explained below.
Regarding claim 11, the instant claim depends from claim 2 and further recites “wherein the first number is 2, and the second number is 2”. However, claim 2 of the conflicting patent already recites along with claim 1, “the first number is greater than 1” and “wherein the material of the display mesh is determined by setting at most a second number of material IDs to each of a plurality of polygons included in the display mesh, the second number is greater than 1” such that here as 2 is a number greater than 1, than such limitations are already taught by the claims of the conflicting patent, as this is within the range already claimed.
Similarly, claim 12 is dependent upon claim 3 and further recites “wherein the first number is 2, the second number is 2, and the third number is 2”. However, claim 1 of the conflicting patent already recites “the first number is greater than 1” such that as 2 is already a number greater than 1 this is within the range already claimed. Likewise as above claim 2, which claim 3 is dependent upon already recites “wherein the material of the display mesh is determined by setting at most a second number of material IDs to each of a plurality of polygons included in the display mesh, the second number is greater than 1” such that here as 2 is a number greater than 1, than such limitations are already taught by the claims of the conflicting patent, as this is within the range already claimed. Finally, claim 3 of the conflicting patent already recites, “at most a third number of material IDs having higher priorities” such that here a plural number of material “IDs” is selected such that this must be at least 2, meaning that such limitations are already taught by the claims of the conflicting patent, as this is within the range already claimed.
Regarding claim 13, the instant claim depends from claim 10, which depends from claim 2 and 1, and further recites “wherein the first number is 2, the second number is 2, and the fourth number is 1 or 2”. As explained above, claim 2 of the conflicting patent already recites along with claim 1, “the first number is greater than 1” and “wherein the material of the display mesh is determined by setting at most a second number of material IDs to each of a plurality of polygons included in the display mesh, the second number is greater than 1” such that here as 2 is a number greater than 1, than such limitations are already taught by the claims of the conflicting patent, as this is within the range already claimed. Furthermore, claim 10 already recites “selecting, based on the priority parameters, at most a fourth number of material IDs having higher priorities” such that here a number of “material IDs” would comprise a plural number of ID’s which would be at least 2 such that this is already claimed and rendered obvious by the previous claim language. Furthermore, as “a fourth number of material ID’s” would include 1 if 2 are selected, then again this is anticipated as well.
Claims 24-25, additionally and alternatively, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-12 of U.S. Patent No. 12597199. Although the claims at issue are not identical, they are not patentably distinct from each other as will be explained below.
As explained above, claims 24-25 recite “An information processing apparatus comprising one or more processors that execute information processing comprising…” which is functionally identical to claims 11-12 of the conflicting Patent which recite “An information processing system comprising: one or more processors that are configured to execute information processing comprising…” such that the only difference is the term “apparatus comprising one or more processors that execute information processing comprising” versus “system comprising: one or more processors that are configured to execute information processing comprising” but as the apparatus functions as a system and has one or more processors that execute the same exact information processing as the conflicting claims, then the apparatus with such processors executing the processing is identical to a system comprised of such processors that are configured to execute the processing. Regardless, if there were such a distinction between the terms, the claims are rendered obvious as claims 11-12 of the conflicting patent recited as a ”system” is made up of multiple apparatus components such as the one or more processors such that when the system functions to perform the configured operations this is an apparatus perform such operations. As noted above, such terms as explained appear to mean the same but in the event Applicant convincingly argues otherwise, this obviousness-type double patenting rejection will apply regardless.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT E SONNERS whose telephone number is (571)270-7504. The examiner can normally be reached Mon-Friday 9-5.
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/SCOTT E SONNERS/Examiner, Art Unit 2613
/XIAO M WU/Supervisory Patent Examiner, Art Unit 2613
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