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 .
Double Patenting
1. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims in Patent application 19/192,627 are objected to under 37 CFR 1.75 as being a substantial duplicate of claim Patent Application 17/109,643 which is now Patent 11,477,316. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).
SN 17/109,643 Patent 11,477,316
SN 19/192,627
1. An information processing system, comprising: a video apparatus configured to display a video; and a wireless terminal configured to perform communication with the video apparatus and perform communication with another apparatus via a network, wherein the wireless terminal is further configured to: i) receive information of a video to be displayed by the video apparatus from the other apparatus via the network; and ii) transmit the information of the video to be displayed by the video apparatus to the video apparatus, wherein, after reception of information of the video to be displayed from the wireless terminal is detected, the video apparatus is further configured to: i) transmit information of a video captured by a camera of the video apparatus to the wireless terminal; ii) receive information of a sound from the wireless terminal; and iii) output the received information of the sound by a speaker of the video apparatus, wherein the wireless terminal is further configured to: i) receive information of a video to be displayed by the video apparatus from the other apparatus; and ii) transmit the information of the video to be displayed by the video apparatus to the video apparatus, wherein the wireless terminal is further configured to: i) receive the information of the video captured by the camera of the video apparatus from the video apparatus; and ii) transmit the received information of the video to the other apparatus via the network, and wherein the other apparatus transmits the information of the video to be displayed by the video apparatus and the information of the sound to be output by the speaker of the video apparatus via the network to the video apparatus.
1. An information processing system, comprising: a video apparatus configured to display a video; and a wireless terminal configured to perform communication with the video apparatus and performs communication with another apparatus via a network, wherein the wireless terminal is further configured to: i) receive information of a video to be displayed by the video apparatus from the other apparatus via the network; and ii) transmit the information of the video to be displayed by the video apparatus to the video apparatus, wherein, after reception of information of the video to be displayed from the wireless terminal is detected, the video apparatus is further configured to: i) transmit information of a video captured by a camera of the video apparatus to the wireless terminal; ii) receive information of a sound from the wireless terminal; and
iii) output the received information of the sound by a speaker of the video apparatus, wherein the wireless terminal is further configured to: i) receive information of a video to be displayed by the video apparatus from the other apparatus; and ii) transmit the information of the video to be displayed by the video apparatus to the video apparatus, wherein the wireless terminal is further configured to: i) receive the information of the video captured by the camera of the video apparatus from the video apparatus; and ii) transmit the received information of the video to the other apparatus via the network, and wherein the other apparatus transmits the information of the video to be displayed by the video apparatus and the information of the sound to be output by the speaker of the video apparatus via the network to the video apparatus.
Examiner’s Analysis
2. Examiner’s Analysis
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
As interpreted and understood by Examiner, one requirement of 35 U.S.C. 101 is that whoever invents or discovers an eligible invention may obtain only ONE patent therefor. This requirement forms the basis for statutory double patenting rejections when two applications claim the same invention, i.e. claim identical subject matter. See MPEP § 804 for a full discussion of the prohibition against double patenting.
Examiner finds that the claims of application number 19/192,627 are drawn to the "same invention" as the claims of Patent application SN 17/109,643 which is U.S. Patent No. 11,477,316 . Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784 F.2d 351, 228 USPQ 837 (Fed. Cir. 1986). As mentioned earlier, "Same invention" means identical subject matter. See, e.g., Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
Examiner finds that the same invention is being claimed twice, thus 35 U.S.C. 101 precludes the grant of the second patent regardless of the presence or absence of a terminal disclaimer.
Allowable Subject Matter
3. Claim(s) 1 would be allowable if applicant is able to overcome statutory double patenting rejection set forth in this office action.
Conclusion
4. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASSAD MOHAMMED whose telephone number is (571)270-7253. The examiner can normally be reached 9:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duc Nguyen can be reached at 571-272-7503. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASSAD MOHAMMED/Examiner, Art Unit 2691
/DUC NGUYEN/Supervisory Patent Examiner, Art Unit 2691
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