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 1-7 and 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 11-13 of U.S. Patent No. 12248991. The claims contain all of the limitations of the patented claims, albeit in a different configuration regarding the dependent claims including claim 1 which is entirely taught by patented claim 1.
19049601
12248991
A home event detection and processing system comprising: at least one sensing device in communication with and monitoring one or more aspects of a home device of a user
A home event detection and processing system comprising: at least one sensing device in communication with and monitoring one or more aspects
of a home device of a user
at least one video monitoring device to capture and transmit image data related to the home device of the user, the at least one video monitoring device being in communication with the at least one sensing device
at least one video monitoring device to capture and transmit image data related to the home device of the user, the at least one video monitoring device being in communication with the at least one sensing device
a processing unit comprising a processor; and a non-transient memory unit storing computer-executable instructions configured to
a processing unit comprising a processor; and a non-transient memory unit storing computer-executable instructions configured to
determine an occurrence of a home event based on first information including one or more signals from the at least one sensing device
determine an occurrence of a home event based on first information including one or more signals from the at least one sensing device
determine, based at least in part on the one or more signals from the at least one sensing device and video data received from the at least one video monitoring device, a cost of repair of damage corresponding to the home event
determine, based at least in part on the one or more signals from the at least one sensing device and video data received from the at least one video monitoring device, a cost of repair of damage corresponding to the home event
retrieve second information associated with an insurance policy covering the home device
retrieve second information different from the first information, the second information being associated with an insurance policy covering the home device
based on the second information, determine an insurable event deductible and determine that default user instructions include an identified and selected instruction to automatically initiate an insurance claim
based on the second information, determine an insurable event deductible and determine that default user instructions identified and selected by the user to designate processes to be performed include an identified and selected instruction to automatically initiate an insurance claim
initiate the insurance claim to cover the cost of repair of damage caused by the
home event, in response to the default user instructions including an instruction to automatically initiate the insurance claim
initiate the insurance claim to cover the cost of repair of damage caused by the
home event, in response to the default user instructions including an instruction to automatically initiate the insurance claim
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 8, 9, 10, 11 and 15 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 8, 9, 10, and 14, respectively, of prior U.S. Patent No. 12248991. This is a statutory double patenting rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 16 contains limitations that are entirely claimed in claim 9, which fails to further limit the independent claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Prior Art
The closest prior art of record is Maroney US 8106769, Jacob US 2014/0201315, and Collins WO 2009/129496. The references fail to teach or disclose, individually or in combination, at least "determine that default user instructions include an identified and selected instruction to automatically initiate an insurance claim; initiate the insurance claim to cover the cost of repair of damage caused by the home event, in response to the default user instructions including an instruction to automatically initiate the insurance claim."
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P SHARVIN whose telephone number is (571)272-9863. The examiner can normally be reached M-F 9 am - 5 pm EST.
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/DAVID P SHARVIN/Primary Examiner, Art Unit 3692