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
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 30-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 9-12, and 24 of U.S. Patent No. 11,507,438 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims in this application are a variation and broader in scope, directed to a distributed system of components for handling transactional event data, as they are received and processed and translated into a common data scheme format that’s compliant with Banking Industry Architecture Network (BIAN) standard.
Claims 30-40 are further rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 8-12, 22 and 26 of U.S. Patent No. 11,983,581 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims in this application are a variation and broader in scope, directed to a distributed system of components for handling transactional event data, as they are received and processed and translated into a common data scheme format that’s compliant with Banking Industry Architecture Network (BIAN) standard.
Claims 30-40 are further rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-19 of U.S. Patent No. 11,789,788 B1 Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims in this application are a variation, directed to a distributed system of components for handling transactional event data, as they are received and processed and translated into a common data scheme format that’s compliant with Banking Industry Architecture Network (BIAN) standard, and further involving a schema registry that identifies and defines the topics for which the transactional events are being processed.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Independent claims 30 and 40 were examined and found allowable in view of and not limited to, features directed to identifying and processing and transforming/converting transactional events into a common or standardized format that is compliant with a recognized Banking standard (i.e., Banking Industry Architecture Network (BIAN)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiang Yu whose telephone number is (571)270-5695. The examiner can normally be reached M-F 9:30-3:00 (PST/PDT).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emmanuel Moise can be reached at (571)272-3865. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/X.Y./Examiner, Art Unit 2455
/EMMANUEL L MOISE/Supervisory Patent Examiner, Art Unit 2455
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