DETAILED ACTION
This non-final Office action is responsive to the application filed January 6th, 2025. Claims 1-5 are presented for examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/6/25 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: "plurality of robot accessory units" in claims 1 & 5.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
When looking to the specification, the hardware structure associated with the “robot accessory units” is being interpreted as “a transport unit” being “a wagon or cart with wheels” please see at least Figs. 1 item 31 and [0011-0012] of the instant specification. The corresponding algorithm of the “robot accessory units” can be found in at least Fig. 1 items 31-33 and [0011-0012]. This is to be the structure and algorithm required for the claim, or equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “plurality of robot accessory units” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure to perform the claimed function. In particular, the specification merely states the claimed function of “enable the autonomous mobile robot to execute a plurality of different services” by “mounting the cleaning unit” (per paragraph [0011] of the as-filed Specification). Further, while the as-filed Specification states that the transport unit that may be an accessory unit with a wagon or cart, it is unclear how the wagon and/or cart as well as the subsequent cleaning unit, security unit, and guide unit are executed by the robot to “execute a plurality of different services”. The use the term “enable the autonomous mobile robot to execute” is not adequate structure for performing the execution of a plurality of different services because it does not describe a particular structure for performing the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As described above, the disclosure does not provide adequate structure to perform the claimed function of “enable the autonomous mobile robot to execute a plurality of different services”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
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.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter;
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.
Step 1: Independent claims 1 (system), 5 (method), and dependent claims 2-4, respectively, fall within at least one of the four statutory categories of 35 U.S.C. 101: (i) process; (ii) machine; (iii) manufacture; or (iv) composition of matter. Claim 1 is directed to a system (i.e. machine) and claim 5 is directed to a method (i.e. process).
Step 2A Prong 1: The independent claims recite provides information about an autonomous mobile robot, the information providing system being configured to input input information including information regarding a plurality of robot accessory units that enable the autonomous mobile robot to execute a plurality of different services by being used in combination with the autonomous mobile robot, information regarding a time period in which the autonomous mobile robot operates, and information regarding a type of a required service, perform calculation processing of calculating resource information that is information regarding an amount of resources for the autonomous mobile robot and the plurality of robot accessory units required for a service based on the input information, and output a result of calculation in the calculation processing (Certain Method of Organizing Human Activity & Mental Process), which are considered to be abstract ideas (See PEG 2019 and MPEP 2106.05). [Examiner notes the underlined limitations above recite the abstract idea].
The steps/functions disclosed above and in the independent claims recite the abstract idea of Certain Methods of Organizing Human Activity because the claimed limitations are enabling the autonomous mobile robot to execute a plurality of different services by calculating resource information regarding the amount of resources for the autonomous mobile robot, which is managing personal behavior & interactions. The Applicant’s claimed limitations are calculating resource information regarding the amount of resources for the autonomous mobile robot, which recite the abstract idea of Organizing Human Activity.
The steps/functions disclosed above and in the independent claims recite the abstract idea of Mental Process because the claimed limitations are calculating resource information regarding the amount of resources for the autonomous mobile robot, which is an observation, judgment, and evaluation of the human mind. The Applicant’s claimed limitations are calculating resource information regarding the amount of resources for the autonomous mobile robot, which recite the abstract idea of Mental Process.
In addition, dependent claims 2-4 further narrow the abstract idea and recite further defining the input information enabling autonomous mobile robots to execute different services and the calculation processing regarding the amount of required human resources. These processes are similar to the abstract idea noted in the independent claims because they further the limitations of the independent claims which recite a certain method of organizing human activity which include managing personal behavior as well as mental processes. Accordingly, these claim elements do not serve to confer subject matter eligibility to the claims since they recite abstract ideas.
Step 2A Prong 2: In this application, the above “input input information including information regarding a plurality of robot accessory units that enable the autonomous mobile robot to execute a plurality of different services by being used in combination with the autonomous mobile robot, information regarding a time period in which the autonomous mobile robot operates, and information regarding a type of a required service; output a result of calculation in the calculation processing” steps/functions of the independent claims would not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because receiving/storing data and displaying data merely add insignificant extra-solution activity and merely adds the words to apply it with the judicial exception. Also, the claimed “An information providing system that provides information about an autonomous mobile robot; robot accessory units; a computer” would not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because the claimed structure merely adds the words to apply it with the judicial exception and mere instructions to implement an abstract idea on a computer (See PEG 2019 and MPEP 2106.05).
In addition, dependent claims 2-4 further narrow the abstract idea and dependent claim 2 additionally recite “in which the time period is stored for each type of the required service” which do not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because receiving/storing data and displaying data merely add insignificant extra-solution activity and the claimed “information providing system” which do not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because the claimed structure merely adds the words to apply it with the judicial exception and mere instructions to implement an abstract idea on a computer (See PEG 2019 and MPEP 2106.05).
The claimed “An information providing system that provides information about an autonomous mobile robot; robot accessory units; a computer” are recited so generically (no details whatsoever are provided other than that they are general purpose computing components and regular office supplies) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. Even when viewed in combination, the additional elements in the claims do no more than use the computer components as a tool. There is no change to the computers and other technology that is recited in the claim, and thus the claims do not improve computer functionality or other technology (See PEG 2019).
Step 2B: When analyzing the additional element(s) and/or combination of elements in the claim(s) other than the abstract idea per se the claim limitations amount(s) to no more than: a general link of the use of an abstract idea to a particular technological environment and merely amounts to the application or instructions to apply the abstract idea on a computer (See MPEP 2106.05 and PEG 2019). Further, method claim 5; and System claims 1-4 recite “An information providing system that provides information about an autonomous mobile robot; robot accessory units; a computer”; however, these elements merely facilitate the claimed functions at a high level of generality and they perform conventional functions and are considered to be general purpose computer components which is supported by Applicant’s specification in Paragraphs 0015 and 0019 and Figures 1-2. The Applicant’s claimed additional elements are mere instructions to implement the abstract idea on a general purpose computer and generally link of the use of an abstract idea to a particular technological environment. Also, the above “input input information including information regarding a plurality of robot accessory units that enable the autonomous mobile robot to execute a plurality of different services by being used in combination with the autonomous mobile robot, information regarding a time period in which the autonomous mobile robot operates, and information regarding a type of a required service; output a result of calculation in the calculation processing” steps/functions of the independent claims would not account for significantly more than the abstract idea because receiving data and displaying/presenting data (See MPEP 2106.05) have been identified as well-known, routine, and conventional steps/functions to one of ordinary skill in the art. When viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
In addition, claims 2-4 further narrow the abstract idea identified in the independent claims. The Examiner notes that the dependent claims merely further define the data being analyzed and how the data is being analyzed. Similarly, claim 2 additionally recite “in which the time period is stored for each type of the required service” which do not account for additional elements that amount to significantly more than the abstract idea because receiving data and displaying/presenting data (See MPEP 2106.05) have been identified as well-known, routine, and conventional steps/functions to one of ordinary skill in the art and the claimed “information providing system” which do not account for additional elements that amount to significantly more than the abstract idea because the claimed structure merely amounts to the application or instructions to apply the abstract idea on a computer and does not move beyond a general link of the use of an abstract idea to a particular technological environment (See MPEP 2106.05). The additional limitations of the independent and dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea. The examiner has considered the dependent claims in a full analysis including the additional limitations individually and in combination as analyzed in the independent claim(s). Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dambman (U.S 2022/0266445 A1).
Claims 1 and 5
Regarding Claim 1, Dambman discloses the following:
An information providing system that provides information about an autonomous mobile robot, the information providing system being configured to [see at least Paragraph 0022 for reference to system diagram of a framework for performing an automated self-assembly of workcells of integrated equipment, and executing the automated self-assembly of workcells to perform workflows, for example using a platform configured with one or more mobile robots, where the integrated equipment includes one or more robotic devices or equipment mounted on such a platform; Figure 1 and related text regarding a system for a framework for performing a self-assembly of workcells including item 106 ‘mobile robots’]
input input information including information regarding a plurality of robot accessory units that enable the autonomous mobile robot to execute a plurality of different services by being used in combination with the autonomous mobile robot, information regarding a time period in which the autonomous mobile robot operates, and information regarding a type of a required service [see at least Paragraph 0024 for reference to the present invention is not to be limited to any particular type of workflow performed, and that framework of the present invention may be applied to any field and any process where automated control of tasks performed by robots, robotic devices or equipment, and any other computer-controlled device is desired; Paragraph 0025 for reference to the framework receiving, ingesting, requesting, or otherwise obtaining input data including workflow constraints including equipment involved in workcells; Paragraph 0027 for reference to workflow constraints also include workflow order and scheduling information defining a workflow order for at least one workflow; Paragraph 0028 for reference to workflow constraints including workcell characteristics, such as for example timing requirements, mobility, location, battery characteristics, and historical reliability of each workcell whose utility is being modeled in framework; Paragraph 0058 for reference to information representing such instructions to create an order may be embodied in input data, for example in the order and scheduling information, where an order is identified, and parameters relevant to the order details such as sequences and timeslots, and scheduling data relative to one or more aspects of a workflow, are provided; Figure 1 and related text regarding item 106 ‘mobile robots’, 108 ‘robotic device equipment’, and 110 ‘input data’ ]
perform calculation processing of calculating resource information that is information regarding an amount of resources for the autonomous mobile robot and the plurality of robot accessory units required for a service based on the input information [see at least Paragraph 0034 for reference to data collection and initialization element may also initialize input data and framework, by configuring characteristics of workcells, workflow, and mobile robots following processing of input data in framework; Paragraph 0036 for reference to deployment and transportation model is embodied in a plurality of algorithms that perform various mathematical calculations and execute various instructions in computer code that programmatically execute such algorithms to develop and apply a rules engine to the initialized input data, to define both configuration schemes for the equipment to be assembled as a workcell, and the one or more pathway topologies that define and guide mobility of self-assembled workcells for the performance of a workflow]
output a result of calculation in the calculation processing [see at least Paragraph 0041 for reference to instructions may also be provided as output data of framework, and may be parsed and communicated to one or more mobile robots, robotic devices or equipment, and any other relevant equipment to arrange as a workcell; Paragraph 0042 for reference to output data may be instructions to arrange a mobile robot (and/or, arrange multiple robotic devices or equipment and other equipment on a mobile platform) in order to self-assemble a workcell; Figure 1 and related text regarding item 180 ‘output data’]
Regarding claim 5, the claim recites limitations already addressed by the rejection of claim 1. Regarding claim 5, Dambman teaches an information providing method by which a computer provides information about an autonomous mobile robot [Paragraph 0086 & Figure 1 item 130]. Therefore, claim 5 is rejected as being unpatentable in view of Dambman.
Claim 2
Regarding Claim 2, Dambman discloses the following:
wherein the information regarding the time period and the information regarding the type are schedule information in which the time period is stored for each type of the required service [see at least Paragraph 0027 for reference to workflow constraints also include workflow order and scheduling information defining a workflow order for at least one workflow wherein scheduling information includes a work order identifier, and also may include parameters of the at least one workflow that include one or more sequences for executing the performance of the at least one workflow during required timeslots; Paragraph 0058 for reference to information representing such instructions to create an order may be embodied in input data, for example in the order and scheduling information, where an order is identified, and parameters relevant to the order details such as sequences and timeslots, and scheduling data relative to one or more aspects of a workflow, are provided; Figure 1 and related text regarding item 114 ‘scheduling information’]
Claim 3
Regarding Claim 3, Dambman discloses the following:
wherein the information regarding the time period includes information regarding a time period in which the autonomous mobile robot is charged [see at least Paragraph 0028 for reference to available workcell resources including battery characteristics; Paragraph 0037 for reference to input data being evaluated for workcell capabilities including battery capacity of mobile robots or robotic device equipment being utilized in workcell; Paragraph 0060 for reference to each available resource being evaluated for battery capacity and charge; Figure 1 and related text regarding item 122 ‘battery capacity and charge’]
Claim 4
Regarding Claim 4, Dambman discloses the following:
wherein in the calculation processing, information including information regarding an amount of required human resources is calculated as a part of the resource information based on the input information [see at least Paragraph 0039 for reference to rules engine then assigns workcell and workflow constraints based on the parameters to workflow, and allocates an available workcell resource for each sequence and each timeslot; Paragraph 0043 for reference to output data may further be embodied as instructions to pool one or more mobile robots and/or robotic devices or equipment, for example to provide scalable throughput for a workflow, or to pool one or more mobile robots with human workers]
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.
Claim 1-5 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 of copending Application No. 19/010,403 (reference application #1) and 19/034,981 (reference application #2).
Regarding reference application #1, although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1 and 5 are a genus to the species of claims 1 and 5 of both reference applications. The claims are directed to the same statutory category of invention and are obvious variations of one another. It would have been obvious to one of ordinary skill in the art to modify the input information of copending claims 1 and 5 because the claimed process is performed by the same structures and is similar in scope such that it is not patentably distinct of instant claims 1 and 5. Therefore, instant claims 1-5 are rendered as being not patentably distinct from copending claims 1-5 of the reference application.
Regarding reference application #2, although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1 and 5 are a genus to the species of claims 1 and 4 of the reference application. The claims are directed to the same statutory category of invention and are obvious variations of one another. The entire scope of instant claims 1 and 5 falls within the scope of the copending claims 1 and 4. Therefore, instant claims 1-5 are rendered as being not patentably distinct from copending claims 1-4 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DOCUMENT ID
INVENTOR(S)
TITLE
US 12,479,095 B2
Higashi, Haruomi
CONTROL PLATFORM, CONTROL SYSTEM, SERVICE PROVIDING SYSTEM, SERVICE PROVIDING METHOD, AND CONTROL METHOD
US 2024/0028049 A1
Tojima et al.
Information output method and information output device
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ELIZABETH GAVIN whose telephone number is (571)270-7019. The examiner can normally be reached M-F 7:30-4:30 PM EST.
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/KRISTIN E GAVIN/Primary Examiner, Art Unit 3624