Detailed Action
Claims 1-21 have been presented for examination.
Claims 1-21 have been rejected.
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
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 Langi, 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 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).
Claims 1-21 are rejected on the ground of non-statutory obviousness-type double
patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,714,744 hereinafter 744 and 1-8 U.S. Patent No. 12,282,416 hereinafter 416
Claims 1-21 of the instant application contain identical or nearly identical limitations as claimed in claims 1-21 of 744 and 1-8 of 416.
Independent claims of the present application recite
A computer-implemented method of diagnosing a computing device, the method comprising: causing the computing device, by a diagnostic application installed in the computing device, to operate according to a safe mode; selectively executing one or more tests on the computing device; recording a result of executing a test; and performing an action based on the result.
Claims of the 744/416 recite:
A computer-implemented method of diagnosing a computing device, the method comprising: causing the computing device to boot and operate in a normal mode, wherein the normal mode is an operational mode other than a safe mode; while operating in the normal mode, launching a diagnostic application installed in the computing device to execute one or more tests; executing the one or more tests; detecting a test failure by the computing device; after detecting the test failure by the diagnostic application installed in the computing device; recording state information of the computing device prior to restarting the computing device; modifying an operating system of the computing device to cause the computing device to enter the safe mode upon restarting the computing device; and restarting the computing device according to the safe mode after recording the state information and modifying the operating system; validating that the computer device is operating in safe mode; verifying, by the diagnostic application, that, other than the diagnostic application, the only code executed on the computing device is code of the operating system; repeating execution of the one or more tests on the computing device while operating in the safe mode; recording a result of executing the one or more tests; and performing an action based on the result.
As such claims of patent 744/416 anticipate the claims of the present application.
"A later patent claim is not patentably distinct from an earlier patent claim if the later
claim is obvious over, or anticipated by, the earlier claim. In re Langi, 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
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 1-21 are rejected under 35 U.S.C. 102(a)1 as being anticipated by Gross United States Patent 11,714,744 hereinafter 744.
In regard to claims 1 10 11 12 13
744 Discloses
1. A computer-implemented method of diagnosing a computing device, the method comprising: causing the computing device (Col. 4 Lines 5-25 and Figs 1-3 Controller 105 executing diagnostic application 150), by a diagnostic application installed in the computing device, to operate according to a safe mode (Col. 4, Lines 30-45 Col. 5 Lines 1-20 Fig. Items 235-240 Fig3 Fig4. Items 410-435); selectively executing one or more tests on the computing device (Col. 5 Lines 25-55 Diagnostic application 150 selectively runs tests); recording a result of executing a test; (Col.5, Lines 30-40 & Fig. 2 Items 220-225) and performing an action based on the result (Col. 4, Lines 50-65; Col. 5, Lines 60-70; Figure. 2 Items 280 285 & Figure 3 “Once the issue is detected the action is performed”).
In regard to claims 2 14
744 Discloses
2. The method of claim 1, wherein the safe mode includes executing only a portion of an operating system and the diagnostic application. (Col.4 Lines 5-15 Col.7 Lines 20-30 Col.9 Lines 40-55 Col.10 Lines 1-20)
In regard to claims 3 15
744 Discloses
3. The method of claim 1, comprising verifying, by the diagnostic application, that, other than the diagnostic application, the only code executed on the computing device is code of an operating system. (Col. 7 Lines 20-30 Col.9 Lines 40-60 Col.10 Lines 1-25)
In regard to claims 4 16
744 Discloses
4. The method of claim 1, comprising recording results of tests executed under normal mode and selecting to execute tests under safe mode based on the recorded results. (Col. 7 Lines 1-15 & 45-55)
In regard to claims 5 17
744 Discloses
5. The method of claim 1, comprising selectively executing an application and identifying a problem caused by the application. (Col. 4 Lines 15-30 Col. 8 Lines 30-50 Col. 11 Fig 7 Items 710 745)
In regard to claims 6 18
744 Discloses
6. The method of claim 1, wherein a test includes executing an application and selectively validating performance of one or more resources while the application is executing and after the application has terminated. (Col. 4 Lines 15-30 Col. 6 Lines 50-65 Col.9 Lines 15-30)
In regard to claims 7 19
744 Discloses
7. The method of claim 1, wherein the diagnostic application is stored in a memory of the computing device by one of: a manufacturer of the computing device and downloading by an operator. (Col. 6 Lines 40-50 Col.8 Lines 55-65 Col. 9 Lines 1-15)
In regard to claims 8 20
744 discloses
8. The method of claim 1, wherein a test includes executing an application selected based on a rule related to a category of applications. (Col. 4 Lines 15- 28 Fig. 7 Items 710-720)
In regard to claims 9 21
744 discloses
9. The method of claim 1, wherein a test includes executing an application selected based on a set of applications for which execution failed under normal mode.
(Col. 7 Lines 45-55 Col. 8 Lines 30-50 Col.11 Fig. 7 blocks 710-745)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure See PTO 892.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINE RIAD whose telephone number is (571)272-8185.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bonzo Bryce can be reached 571-272-3655. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.R./
/Amine Riad/
Primary Examiner
Prosecution Insights