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
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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,257,052. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and patent are directed to a system for obtaining information relating to sleep of a user, determining when the user wakes up, and controlling a game utilizing the inputs provided by the user.
While the claims are not identical, the claims of the application and patent overlap in scope such that the patent could construct the same invention as the application. For instance, the application recites the language, “detecting a user to be in bed after awakening from sleep,” whilst the patent recites, “calculating information relating to sleep of a user.” The Examiner considers a user being in bed after awakening to be relating to sleep, and one of ordinary skill in the art would understand that being in bed after waking up is related to sleep, since a user who wakes up in bed must have also been sleeping in that bed.
The patent claims, “calculating a second parameter based on information obtained from the user during an awake period of the user,” which is considered equivalent to the language of the application which states, “based on detecting the user to be in bed after awakening.” Furthermore, the patent claims controlling game progress of the game application based on a value calculated using the first and second parameter, which is analogous to the limitations of the application detecting an input provided by the user (sleep input obtained for a user is considered to be provided by the user as it is directly based on their actions) and generating a first image for display in accordance with the provided input by the user.
While the patent does not explicitly disclose detecting the user getting out of bed and out-of-bed detection, since the application claims calculating a second parameter based on information obtained from the user during an awake period of the user, this is considered to be directed to the same invention. Getting out of bed takes place during an awake period of the user, and therefore the patent would be wholly capable of reproducing the more specifically claimed embodiments of the patent. Additionally, the patent also contains dependent claims explicitly disclosing determining that the user has gotten out of bed (see claim 7). Claim 18 of the patent further discloses these additional elements of the claims of the application, including time spent in bed after awakening.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Y Kim whose telephone number is (571)270-3215. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN Y KIM/Primary Examiner, Art Unit 3715
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