DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
Claims 1-15 are presented for examination.
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 timewise 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 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 non-statutory 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 non-statutory 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 1-15 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,255,955. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter.
U.S. Patent No. 12,255,955
Instant Application: 19/080,636
A method, comprising:
A method, comprising:
providing a first device communicatively coupled to a second device that is remote from the first device, the first device hosting an agent provider configured to provide at least one agent provider service from the first device to the second device in a region of interest (ROI);
providing a first device communicatively coupled to a second device that is remote from the first device, the first device hosting an agent provider configured to provide at least one agent provider service from the first device to the second device in a region of interest (ROI);
selecting, by the agent provider according to stored instructions accessible by the agent provider, a next possible candidate host from more than one possible candidate hosts, wherein the selected next possible candidate host comprises a third device that is different from the second device;
selecting, by the agent provider according to stored instructions accessible by the agent provider, a next possible candidate host from more than one possible candidate hosts, wherein the selected next possible candidate host comprises a third device that is different from the second device;
migrating the agent provider to the third device, wherein the migrating is performed automatically in response to an event associated with the first device or the third device;
and providing the at least one agent provider service from the third device to the second device.
and providing the at least one agent provider service from the third device to the second device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alicia Baturay whose telephone number is (571) 272-3981. The examiner can normally be reached at 7am – 4pm, Mondays – Thursdays, Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kamal Divecha can be reached at (571) 272-5863. The fax number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Alicia Baturay/
Primary Examiner, Art Unit 2441
June 24, 2026
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