DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
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Claims 12-20 rejected on the ground of non-statutory double patenting as being unpatentable over claims 12-20 of U.S. Patent No. 12,263,398. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims present a case of obvious-type double patenting case wherein the instant application is an obvious variant of U.S. Patent No. 12,263,398. Examiner has given a claim by claim analysis below, comparing the instant application to ‘398.
Instant Application
U.S. Patent No. 12,263,398
12. A non-transitory, machine-readable storage medium, comprising executable instructions that, when executed by a processor, facilitate performance of operations, the operations comprising:
determining an accessory type of an accessory based on a determination that the accessory is provided by a vendor that is unknown to an application that is executed by the processor;
receiving instructions that describe a plurality of functions of the accessory based on the determining of the accessory type; and
associating, based on the receiving of the instructions, the plurality of functions with an identity of the accessory to facilitate a use of the accessory.
12. A non-transitory, machine-readable storage medium, comprising executable instructions that, when executed by a processor, facilitate performance of operations, comprising:
determining an accessory type of an accessory based on a determination that the accessory is provided by a vendor that is unknown to the processor;receiving instructions that describe a plurality of input functions of the accessory based on the determining of the accessory type; and
associating, based on the receiving of the instructions, the plurality of input functions with an identity of the accessory to facilitate a use of the accessory.
Explanation: The differences between the two claim sets are that, the instant application states that the vender is unknown to an application that is executed by the processor, wherein the parent case states that the vendor is unknown to the processor. However, it is obvious to one of ordinary skill in the art to execute the instructions as an application including the “determining an accessory type of an accessory” step, as instructions performed within an application is a conventional implementation for computer instructions.
19. An apparatus, comprising:
a controller; and
a memory that stores executable instructions that, when executed by the controller, facilitate performance of operations, the operations comprising:
determining an accessory type of an accessory based on a determination that the accessory is provided by a vendor that is unknown to an application;
receiving instructions that describe a plurality of input functions of the accessory based on the determining of the accessory type; and
associating, based on the receiving of the instructions, the plurality of input functions with an identity of the accessory.
19. An apparatus, comprising:
a controller; and
a memory that stores executable instructions that, when executed by the controller, facilitate performance of operations comprising:
determining an accessory type of an accessory based on a determination that the accessory is provided by a vendor that is unknown to the apparatus;
receiving instructions that describe a plurality of input functions of the accessory based on the determining of the accessory type; and
associating, based on the receiving of the instructions, the plurality of input functions with an identity of the accessory.
Explanation: The differences between the two claim sets are that, the instant application states that the vender is unknown to an application that is executed by the processor, wherein the parent case states that the vendor is unknown to the apparatus. However, it is obvious to one of ordinary skill in the art to execute the instructions as an application including the “determining an accessory type of an accessory” step, as instructions performed within an application is a conventional implementation for computer instructions.
Claims 12-18, and 20 of the instant application are therefore obvious type double patenting over claims 12-18, and 20 as the two claims contain and encompass the same claim language.
Allowable Subject Matter
Claims 1-11 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REGINALD A RENWICK whose telephone number is (571)270-1913. The examiner can normally be reached Monday-Friday 11am-7pm.
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REGINALD A. RENWICK
Primary Examiner
Art Unit 3714
/REGINALD A RENWICK/Primary Examiner, Art Unit 3715
