Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Notice for all Patent Application as subject to AIA
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 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.
DETAILED ACTION
Claims 1-20 are presented for examination.
NON-STATUTORY DOUBLE PATENTING
The non-statutory 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 time wise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentable 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); and 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 a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
OBVIOUSNESS-TYPE DOUBLE PATENTING (ANTICIPATION EXISTS)
Claims 1-20 are rejected on the ground of non-statutory double patenting as being un-patentable over claims 1-20 of US Patent No. 12,278,728 B1. Although the claims at issue are not identical, they are not patentable distinct from each other because claims 1-20 of US Patent No. 12,278,728 B1 contain every limitation of claims 1-20 of the instant application and thus anticipate the claims of the instant application. This is a non-statutory double patenting rejection because the patentable indistinct claims have been patented.
“A later patent claim is not patentable distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claims 1-20 are generic to the species of invention covered by claims 1-20 of US Patent No. 12,278,728 B1. Thus, the generic invention is "anticipated" by the species of the patented invention. Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim). This court's predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of the generic application. Inre Van Ornum, 686 F.2d 937, 944, 214 USPQ 761,767 (CCPA 1982).
Accordingly, absent a terminal disclaimer, claims 1-20 ware properly rejected under the doctrine of obviousness-type double patenting.” (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
The subject matter claimed in the instant application claims 1-20 is fully disclosed and covered in the claims 1-20 of US Patent No. 12,278,728 B1, since the US Patent No. 12,278,728 B1, and the instant application are claiming common subject matter, as follows:
The claimed invention in the instant application (claims 1-9) is same as the claimed invention in the US Patent No. 12,278,728 B1 (claims 1-9) by rearranging the claimed limitations such as changing the limitations “at each of a plurality of servers” to –at least one of a plurality of servers--, “a Level 5 layer” to –a session layer--, and “a status…” to –a status message report--, which are functionally equivalent and not changing the scope of the invention; deleting limitation “a monitor server” and “an event in an event log,” which are not changing the scope of the invention; and creating new broader independent claim 1 and dependent claims 2-9. No new invention or new improvement is being claimed in the instant application claims 1-9.
The claimed invention in the instant application (claims 10-17) is same as the claimed invention in the US Patent No. 12,278,728 B1 (claims 12-19). As to claims 10-17, they are also rejected for the same reasons set forth to rejecting claims 1-9 above, since claims 10-17 are merely a program product for the method of operations defined in the claims 1-9, and claims 10-17 do not teach or define any new limitations than above rejected claims 1-9.
The claimed invention in the instant application (claims 18-20) is same as the claimed invention in the US Patent No. 12,278,728 B1 (claims 20, 1, and 10-11). As to claims 18-20, they are also rejected for the same reasons set forth to rejecting claims 1-9 above, since claims 18-20 are merely an apparatus for the method of operations defined in the claims 1 and 10-11, and claims 18-20 do not teach or define any new limitations than above rejected claims 1-11.
Basically, applicant changes the claimed limitations of the claims 1-20 of US Patent No. 12,278,728 B1, and creating the new claims 1-20. No new invention or new improvement is being claimed in the instant application. Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application, which matured into the US Patent No. 12,278,728 B1.
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 1-20 are 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 pre-AIA the applicant regards as the invention.
Claim 9 recites the limitation "the event in the event log" in line 1, and claim 12 recites the limitation "the event” in line 4. There is insufficient antecedent basis for these limitations in the claims.
Claims 1, 10, and 18 recited the limitations “determining to monitor…, transmitting a status inquiry…, receiving a status…, reporting the status…,” which are unclear about the source of these steps and dependent claims also fail to disclose the source of the steps; and also recited the limitation “reporting the status…,” which is unclear about the destination of this step and dependent claims also fail to disclose the destination of the step destination of the generated control message; therefore, the claims 1, 10, and 18 are being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Other dependent claims, which are not specifically cited above are also rejected because of the deficiencies of their respective parent claims.
Additional References
The examiner as of general interest cites the following references.
a. Miller, U.S. Patent No. 8,626,234 B2.
b. Chaar et al, U.S. Patent No. 6,857,020 B1.
c. Lee et al, U.S. Patent Application Publication No. 2006/0224775 A1.
Content Information
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/BHARAT BAROT/Primary Examiner, Art Unit 2453June 08, 2026
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