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, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 20 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 20 and 1, respectively, of U.S. Patent No. 12,252,874. Although the claims at issue are not identical, they are not patentably distinct from each other.
The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Examiner’s Comment
It is noted that claims 18 and 20 are being interpreted in view of the applicant’s specification. Paragraph 0067 of the specification discloses that the computer storage media does not comprise signals. Therefore, claims 18 and 20 are deemed statutory under 35 U.S.C. 101. This is the same interpretation used in parent application 17/661,980 (see Search Notes dated 11/7/2024).
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 6 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 6 recites the limitation "the time component" in line 2. There is insufficient antecedent basis for this limitation in the claim. Additionally, it is unclear what element “the time component” refers to in claim 1. The examiner suggests amending claim 6 to include proper antecedent basis and clarify which element of claim 1 “the time component” refers to.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1, 3, 7, 8, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin (US 4,898,495).
Regarding claim 1, Lin discloses a computer-implemented method for managing fluid stormwater in a drainage system (Figures 3, 6 and 7A-7C), the method comprising: receiving sensor data and tidal sensor data, wherein the sensor data is indicative of a depth of a fluid detected at one or more monitoring points within the drainage system, and wherein the tidal sensor data is indicative of a tidal effect from a tidally affected body of water directly or indirectly influencing the drainage system (Figure, 3, Element 31, Figure 6, Element 31, Figures 7A-7C, Figure 8, Element A and Column 1, lines 8-35, Column 6, line 60-Column 7, line 48 where the water surface elevation sensor detects both water level at a drainage system and tidal elevation) and generating a model based on the sensor data and the tidal sensor data, wherein the model models one or more statistical relationships between conveyed fluid in the drainage system and tidal conditions (Figures 7A-7C, Figure 8, Element A and Column 1, lines 8-35, Column 6, line 60-Column 7, line 48 where the beach/inlet stabilization system models a statistical relationship between the water level and a contribution from the tidal water of an adjacent body of water. The drainage system is operable in response to the determined relationship and water levels).
Regarding claim 3, Lin discloses detecting at least one flow event of the drainage system based on a time-series of the depth of the fluid, wherein at least one flow event is associated with the fluid in the drainage system (Figures 7A-7C, Figure 8, Element A and Column 1, lines 8-35, Column 6, line 60-Column 7, line 48 where the beach/inlet stabilization system models a statistical relationship between the water level and the contribution from the tidal water. The drainage system is operable in response to the determined relationship and water levels. The drainage system operates when water levels are too high).
Regarding claim 7, Lin discloses determining the one or more statistical relationships between a time-series of the depth of fluid and a tidal effect of the body of water based on one or more algorithms; and generating the model based on the determined one or more statistical relationships between the time-series of the depth of fluid and the tidal effect of the body (Figures 7A-7C, Figure 8, Element A and Column 1, lines 8-35, Column 6, line 60-Column 7, line 48 where the beach/inlet stabilization system models a statistical relationship between the water level and the contribution from the tidal water of an adjacent body of water. The drainage system is operable in response to the determined relationship and water levels).
Regarding claim 8, Lin discloses where the model is a linear model (Figures 7A-7C, Figure 8, Element A and Column 1, lines 8-35, Column 6, line 60-Column 7, line 48 where the beach/inlet stabilization system models a statistical relationship between the water level and the contribution from the tidal water of an adjacent body of water. The water level and contribution from the tidal water of an adjacent body of water are modeled in a linear manner. The drainage system is operable in response to the determined relationship and water levels).
Regarding claim 9, Lin discloses generating a report that includes at least an indication of predicted flow event of the drainage system, wherein a prediction of the predicted flow event is based on the model; and providing the report to a user (Figures 7A-7C, Figure 8, Element A and Column 1, lines 8-35, Column 6, line 60-Column 7, line 48 where the beach/inlet stabilization system models a statistical relationship between the water level and the contribution from the tidal water of an adjacent body of water. The drainage system is operable in response to the determined relationship, water levels and flow/current. The model is accessible by an end user).
Regarding claim 10, Lin discloses wherein the one or more statistical relationships between the time-series of the depth of fluid and the tidal effect of the body of water include a temporal offset between the time-series of the depth of fluid and the tidal effect of the body of water and the tidal effect of the body of water includes a rising of a tide of the body of water and a lowering of the tide of the body of water (Figures 7A-7C, Figure 8, Element A and Column 1, lines 8-35, Column 6, line 60-Column 7, line 48 where the beach/inlet stabilization system models a statistical relationship between the water level and the contribution from the tidal water of an adjacent body of water. The water level sensor detects an offset between the water level and the contribution from the tidal water. The drainage system is operable in response to the determined relationship, water levels and flow/current).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS D ALUNKAL whose telephone number is (571)270-1127. The examiner can normally be reached M-F 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN ZIMMERMAN can be reached at 571-272-3059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS D ALUNKAL/Primary Examiner, Art Unit 2686
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