DETAILED ACTION
This Office Action is in response to the application 19/171,803 filed on 04/07/2025.
Claims 2-13 have been examined and are pending in this application.
This is a Continuation of U.S. Patent Application No. 18/609,846, filed March 19, 2024,
which is a Continuation of U.S. Patent Application No. 17/381,397, filed July 21, 2021
(and now U.S. Pat. No. 11,966,458, issued April 23, 2024), which is a Continuation of
International Patent Application No. PCT/JP2020/031591, filed August 21, 2020, which
claims priority of Japanese Patent Application No. 2019-158644, filed August 30, 2019.
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 .
Election/Restrictions
For the record, the Examiner acknowledges that NO restrictions are warranted at applicant’s initial time of filing for patent.
Priority
This application is related to and claimed the benefits of Foreign Application Priority Data JP 2019-158644 filed 08/30/2019.
Information Disclosure Statement
The information disclosure statement (IDS), submitted on 04/14/2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Oath/Declaration
For the record, the Examiner acknowledges that the Oath/Declaration submitted on 04/07/2025 has been accepted.
Drawings
For the record, the Examiner acknowledges that the drawings filed on 04/07/2025 have been accepted.
Specification
For the record, the Examiner acknowledges that the Applicant's specification filed on 04/07/2025 has been accepted.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2-13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent 12,292,954 in view of claims 1-14 of U.S. Patent 11,966,458. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and the patented application are directed to an authentication method, an authentication system, and an authentication device used in an automated driving system.
Allowable Subject Matter
Claims 2-13 would be allowed if applicants overcome the above non statutory double patenting rejection by filing terminal disclaimer, and the TD is approved by the Office.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONAS A BAYOU whose telephone number is (571)272-7610. The examiner can normally be reached Monday-Friday 7AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Chea can be reached on 571-272-3951. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YONAS A BAYOU/Primary Examiner, Art Unit 2499 09/16/2026
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