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 obviousness-type 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); 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 nonstatutory double patenting ground provided the conflicting 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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Initially it should be noted that this application is a continuation of Application Number 18/230,521, filed August 4, 2023, now US Patent 12,292,789, having the same Assignee and inventor.
Claims 1-11 and 20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, and xxx of U.S. Patent No. 12,292,789. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following:
For claim 1, U.S. 12,292,789 claims 1 anticipates claims 1 of instant application, respectively, as demonstrated by the following tables:
Instant Application
U.S. 12,292,789
comments
1. A computer-implemented method for intelligent collection and selective sharing of information technology asset inventory over a managed services platform, comprising:
1. A computer-implemented method for intelligent collection and selective sharing of information technology asset inventory over a managed services platform, comprising:
same
receiving, from a customer, a selection of one or more information technology services of an information technology service provider;
network traffic receiving, via a network tunnel between a machine avatar in a computing environment and a base management node,
network traffic receiving, via a network tunnel between a machine avatar in a computing environment and a base management node,
same
of the customer
addressed to an
information technology service;
addressed to the one or more information technology services;
similar
storing, by one or more processors, a portion of the network traffic;
generating, by one or more processors, a service notification for a customer based on a portion of the network traffic; and transmitting, by the one or more processors, the service notification to the machine avatar through the network tunnel.
generating, by the one or more processors, a service notification for the customer based on the portion of the network traffic; and transmitting, by the one or more processors, the service notification to the machine avatar through the network tunnel.
same
For claim 20, U.S. 12,292,789 claims 20 anticipates claims 20 of instant application, respectively, as demonstrated by the following tables:
Instant Application
U.S. 12,292,789
comments
20. A non-transitory computer readable medium containing program instructions that when executed, cause a computer to:
20. A non-transitory computer readable medium containing program instructions that when executed, cause a computer to:
same
receive, from a customer, a selection of one or more information technology services of an information technology service provider;
receive, via a network tunnel between a machine avatar in a computing environment and a base management node,
receive, via a network tunnel between a machine avatar in a computing environment and a base management node,
same
network traffic addressed to an information technology service; generate a service notification based on a portion of the network traffic;
network traffic of the customer addressed to the one or more information technology services; store a portion of the network traffic;
same
generate a service notification for the customer based on the portion of the network traffic;
and transmit the service notification to the machine avatar through the network tunnel.
and transmit the service notification to the machine avatar through the network tunnel.
sam
For claims 2-11, the claims recite essentially similar limitations as claims 2-11 of the patent respectively.
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 13-19 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 12 and 14-19 of prior U.S. Patent No. 12,292,789., respectively. This is a statutory double patenting rejection.
Allowable Subject Matter
Claims 2-1, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and all Double Patenting rejections are overcome.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 12-13, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bosch (US 2020/0252374 A1).
For claim 1, Bosch teaches a computer-implemented method for intelligent collection and selective sharing of information technology asset inventory over a managed services platform, comprising: receiving, via a network tunnel between a machine avatar in a computing environment and a base management node, network traffic addressed to an information technology service (see abstract, paragraph [0003]: VPN uses network tunneling; view VPN client as said customer; see [0019]: BMC is managed platform between bases managed nodes; a network in general, always means selective information between IT computers/nodes and traffic in between addressed computer/network nodes; information is always stored in storage devices/assets; see [0064]: an icon is also an avatar); generating, by one or more processors, a service notification for a customer based on a portion of the network traffic; and transmitting, by the one or more processors, the service notification to the machine avatar through the network tunnel (see [0043], [0047], and other locations: policy service informs using messages transmitted over the network to node with the icon/avatar).
For claim 12, Bosch teaches the limitations of claim 1 for the reasons above and further teaches receiving, from the customer, a selection of the information technology service; and storing, by one or more processors, the portion of the network traffic, wherein the portion is associated with the customer (see locations pointed to above: the message over VPN is always part of the traffic; and once its parsed it is always stored by the receiver, in some form, at least temporarily)
For claims 13 and 20, the claims recite essentially similar limitations from claim 1; claim 13 is a system and claim 20 is a medium
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAIR LEIBOVICH whose telephone number is (571)270-3796. The examiner can normally be reached 8:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashish Thomas can be reached at 571-272-0631. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAIR LEIBOVICH/Primary Examiner, Art Unit 2114
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