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 .
Status of Claims
Claims 1-18 are currently pending.
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.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,314,988 in view of Official Notice. Although the claims at issue are not identical, they are not patentably distinct from each other because all the elements of the application claims are to be found in the reference patents, albeit slight differences in wording ("at a first time," "at a second time"). See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results). Additionally, although the claims recite a "utility provider computer system," rather than a "utility meter" as in the reference patent, Official Notice is taken that a utility provider computer system is a well-known source of utility usage data, and one of ordinary skill would have recognized that it would have been obvious to substitute these elements performing the same function and yield only predictable results.
Additionally, as application claims 1-18 are obvious variants of reference patent 12,314,988 claims 1-20, they are also obvious variants of claims 1-12 of U.S. Patent No. 12,008,611 and over claims 1-13 of U.S. Patent No. 11,430,026 for the same reasons provided in the parent application 18/655,749 (which issued as 12,314,988). Besides the differences and rationale above (which also apply to these additional reference patents), although the claims at issue are not identical, they are not patentably distinct from each other because all the elements of the application claims are to be found in the reference patents, albeit slight differences in wording. Since application claims 1-18 are unpatentable in view of claims 1-12 and 1-13 of these reference patents and the rationale above, they are also not patentably distinct.
Conclusion
The claims are directed to novel, nonobvious, and patent-eligible subject matter for the same reasons as in the parent applications.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Gökalp, et al., Impact of pervasive computing on service design in hospitality, Journal of Advanced Management Science, Vol 1., No. 2, 2013 (Reference U of the attached PTO-892) relates to realizing utility costs savings at a hotel.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shannon Campbell can be reached on 571-272-5587. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628
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