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 .
Amended claims 16-30 as submitted on 5/9/25 were examined. Claims 1-15 were cancelled.
Information Disclosure Statement
Regarding the IDS filed on 2/14/25, most of the references were considered. The foreign reference listed was crossed out as not considered because it does not comply with 37 CFR 1.98, which requires that either a copy of the foreign reference also be provided or if it was provided in an earlier filed related application, that the earlier filed application in which the foreign reference was submitted be identified.
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.
Claim 19 is 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 19 is indefinite because it depends on cancelled claim 1. Did applicant mean for it to depend on claim 16 instead?
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 20 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 20 is dependent on claim 16 and further recites “wherein executing the one or more functional integrity checks comprises executing the one or more functional integrity checks in response to a first initialization of the application on the system.” It appears that this limitation is already established by the “detecting” and “executing” steps of claim 16 which has the executing step be done “at least in part in response to the detection of the initial execution” and that the thing that is executed is “the one or more functional integrity checks of the application…” The initial execution in the execution step is established in the detecting step as the “initial execution of an application on the system”. Thus it appears claim 20 does not further limit the subject matter of parent claim 16.
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.
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 16-19 and 21-30 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 3-15 respectively of prior U.S. Patent No. 12,254,085. This is a statutory double patenting rejection.
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 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,254,085. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of the present application is the same as claim 1 of the ‘085 patent. Claim 20 of the present application does not further limit parent claim 16 of the present application, thus despite what is further recited in claim 16 of the present application, it is still obvious over claim 1 of the ‘085 patent, which anticipates all the limitations recited in claim 16 of the present application.
Claims 16, 20, 17-19, and 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 3-5, and 7-16 respectively of U.S. Patent No. 11,829,469.
Although the claims at issue are not identical, they are not patentably distinct from each other because the aforementioned claims of the ‘469 patent are obvious over the aforementioned claims of the present application. The claims of the present application are drawn to non-transitory medium storing instructions that when executed by at least one processor of a system, carries out the method of the ‘469 patent where the biggest difference between the two set of claims (other than the statutory categories) is that where the claims of the present application recite “expected input and output behavior”, the claims of the ‘469 patent recites “expected resource call behavior”.
However, official notice is taken that before the effective filing date of applicant’s claimed invention, input and output behaviors were known types of resource call behaviors. Thus any input/output behaviors are by definition resource call behaviors. It would have been obvious to one of ordinary skill in the art to modify the aforementioned claims of the ‘469 patent to arrive at the respective aforementioned claims of present application. The rationale for why it would be obvious is that doing so is nothing more than simple substitution of one known element (i.e. generic resource call behavior) for another (i.e. specific type of resource call behavior, where the specific type is input/output resource call behavior) to obtain predictable results, see KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Claims 16-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-16 respectively of U.S. Patent No. 10,469,814.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘814 patent anticipate the respective claims of the present application. The only difference between the two set of claims are the statutory categories involved. The claims of the present application are drawn towards non-statutory computer-readable medium storing instructions that, when executed by at least one processor of a system, cause the system to perform the method of the ‘814 patrent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PONNOREAY PICH whose telephone number is (571)272-7962. The examiner can normally be reached M-F 9am-5pm EST, 10am-6pm during Daylight Savings Time.
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/PONNOREAY PICH/Primary Examiner, Art Unit 2495
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