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
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.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12319317 B2 and 1-24 of U.S. Patent No. 11845469 B2.
Regarding Claim 1, Applicant provides similar limitations as in claims 1 and 1 of the issued U.S. Patents, wherein both of the respective claims include similar limitations provided in bold.
A method comprising:
receiving, by one or more processors of a vehicle having an autonomous driving mode, a current state of a traffic light, the current state of the traffic light indicating a color and a type of a currently lit light of the traffic light;
determining, by the one or more processors, a yellow light duration for the traffic light corresponding to the current state of the traffic light; and
controlling, by the one or more processors, the vehicle in the autonomous driving mode to respond to the traffic light based on the yellow light duration and the current state of the traffic light.
Regarding Claim 12, Applicant provides similar limitations as in claims 12 and 12 of the issued U.S. Patents, wherein both of the respective claims include similar limitations provided in bold.
A system comprising:
one or more processors of a vehicle having an autonomous driving mode, the one or more processors configured to:
receive a current state of a traffic light, the current state of the traffic light indicating a color and a type of a currently lit light of the traffic light;
access a table of a plurality of yellow light durations for different types of states of the traffic light;
select a yellow light duration for the traffic light from the table corresponding to the current state of the traffic light; and
control the vehicle in the autonomous driving mode to respond to the traffic light based on the selected yellow light duration and the current state of the traffic light.
Regarding Claim 18, Applicant provides similar limitations as in claims 12 and 12 of the issued U.S. Patent, wherein both of the respective claims include similar limitations provided in bold.
A non-transitory computer-readable medium storing instructions which, when executed, cause a computing device of a vehicle having an autonomous driving mode to perform a method comprising:
receiving a current state of a traffic light, the current state of the traffic light indicating a color and a type of a currently lit light of the traffic light;
determining a yellow light duration for the traffic light corresponding to the current state of the traffic light; and
controlling the vehicle in the autonomous driving mode to respond to the traffic light based on the yellow light duration and the current state of the traffic light.
The prior patent claim does not directly cite a non-transitory computer readable medium storing instructions, but given that a processor of the previous claims carries out the process, it must inherently utilize a non-transitory computer-readable medium storing instructions.
Regarding Claims 1-20: Applicant provided similar limitations as provided in at least claims 1-24 of the issued U.S. Patents. Although conflicting claims are not identical, they are not patently distinct from each other because removing inherent and/or unnecessary limitations/steps or adding an element and its function would be within the level of one of ordinary skill in the art. It is well settled that the adding or deleting of an element and its functions(s) as in the claims of the present application are an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note, Ex Parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a referenced element or step whose function is not needed would be obvious to one of ordinary skill in the art. Examiner further notes wherein although the claims are not identical (slightly broader, with the exception of the sensor), there are commensurate in scope to the claim limitations provided in the issued U.S. Patent and likewise would anticipate the currently provided claim limitations.
Examiner notes wherein the nonstatutory double patenting rejections provided herein would be overcome with a timely filed terminal disclaimer in compliance with 37 CFR 1.321© or 1.321 (d) may be used to overcome an actual or provision 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 provision 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 1.32(b).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gutmann et al (US Pub 2016/0035223 A1), relates to a system for an autonomous vehicle responding to traffic signals.
Clark et al (US Pub 2021/0304608 A1), relates to visualizing vehicle behavior and predicting yellow light durations.
Hutchison et al (US Pub 2008/0150757 A1) relates to adjusting yellow light duration speed based on expected speed of vehicles at the intersection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRISTAN J GREINER whose telephone number is (571)272-1382. The examiner can normally be reached Mon - Fri 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khoi Tran can be reached on Monday-Thursday. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.J.G./Examiner, Art Unit 3664
/KHOI H TRAN/Supervisory Patent Examiner, Art Unit 3656
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