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 .
Receipt is acknowledged of IDS filed on 03/20/2025.
Claim 1 is presented for examination.
This application is a CON of 18/425,925 filed on 01/29/2024 now PAT 12,282,825 which is a CON of 18/158,856 filed on 01/24/2023 now PAT 11,900,209 which has PRO 63/302,438 filed on 01/24/2022.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,282,825 (hereinafter referred as '825). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claims are expressly found in the claimed application. For instance, claim 1 of the present application recites the following limitations:
A method of capturing real-time data of one or more critical data points relating to a production tool associated with a designated user, the method comprising: providing at least one production tool having an asset code; providing a device capable of scanning the asset code associated with the production tool, wherein the device comprises a data management software; inputting a user code into the device, the user code associated with a designated user for issuance of the production tool; and scanning the asset code of the production tool with the device in relation to an issuance event of the production tool to the designated user; wherein the asset code of the production tool corresponds to an asset number, the user code associated with the designated user corresponds to a designated user number, and scanning the asset code with the device associates the asset number with the designated user number as an issuance critical data point in the data management software in real-time by at least date and time.
Whereas claim 1 of '281 application, the applicant claims:
A method of capturing real-time data of one or more critical data points relating to each sharp edge production tool associated with a designated user, the method comprising: providing one or more sharp edge production tools, each sharp edge production tool having an asset code, wherein each sharp edge production tool is chosen from a knife, scissors, scalpel, shears and hook; providing a device capable of inputting the asset code associated with each sharp edge production tool, wherein the device comprises a data management software; inputting a user code into the data management software via the device, the user code associated with a designated user for issuance of the one or more sharp edge production tools; and inputting the asset code of each sharp edge production tool into the data management software via the device in relation to an issuance event of each sharp edge production tool to the designated user; wherein the asset code of the each sharp edge production tool corresponds to an asset number, the user code associated with the designated user corresponds to a designated user number, and the asset code of the each sharp edge production tool input into the data management software via the device associates each asset number with the designated user number as an issuance critical data point in the data management software in real-time by at least date and time.
Thus, in respect to above discussions, it would have been obvious to ana artisan of ordinary skilled in the art at the time the time invention was made to use in the present invention “a sharp edge of the production tool, and wherein each sharp edge production tool is chosen from a knife, scissors, scalpel, shears and hook” so as to provide a tool capable of cutting therethrough. The instant claims obviously encompass the claimed invention of '825 patent and differ only by terminology. For instance, claim 1 of the present invention recites “scanning the asset code…” whereas '825 patent discloses “inputting the asset code …” . To the extent that the present claims are broader and therefore generic to the claimed invention of '825 patent, In re Goodman 29 USPQ 2d 2010 CAFC 1993.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the application term by prohibiting claims in a second application not patentably distinct from claims of a first application. In re Vogel, 164 USPQ 619 (CCPA 1970).
Allowable Subject Matter
Claim 1 would be allowable upon filing a proper Terminal Disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to specifically teach inputting the asset code of each sharp edge production tool into the data management software via the device in relation to an issuance event al each sham edge production tool to the designated user wherein the asset code of the each sharp edge production tool corresponds to an asset number, the user code associated with the designated user corresponds to a designated user number, and the asset code al the each sharp edge production tool input into the data management software via the device associates each asset number with the designated user number as an issuance critical data point in the data management software in real-time by at least date and time. These limitations in conjunction with other limitations in the claimed invention were not shown by the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
O’Brian (US 2013/0228617) teaches system of using machine readable labels affixed to tools for managing information related to those tools.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWYN LABAZE whose telephone number is (571)272-2395. The examiner can normally be reached 8:30AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. STEVE PAIK can be reached at 571-272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EDWYN LABAZE/Primary Examiner, Art Unit 2876