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 .
DETAILED ACTION
This communication is a non-final action in response to application filed on 05/23/2025. Claims 1-20 are pending.
Information Disclosure Statement
The IDS filed on 06/30/2025 is considered.
Claim Objection
Claims 1-9 are objected because claim 1 includes the limitation “… on a plurality of client device”. The word “device” appears to be a typographical error of “devices”. See claim 10 and 19 where plural is used in a substantially the same limitation.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12346840 (‘840) Although the claims at issue are not identical, they are not patentably distinct from each other.
Using claim 1 of present application and claim 2 of ‘840 (reference claim) as representative example, the difference between the two claims are listed below:
Claim 1 uses an application installed on the client device to process information
Claim 1’s first receiving step further indicates request is associated with parameters
Claim 1’s identifying step involves prior usage of the application on a plurality of client device[s] as opposed to reference claim’s “prior user input”
Claim 1’s candidate itinerary would include “at least one of the candidate itineraries including at least one component from each of at least two non-contiguous segments”
As per difference a, client device as used in reference claim is meant to be a non-mechanical computer that typically includes processor and memory. One ordinary skilled in the art would understand that it is at least obvious (if not implied or suggested) that interactions using these devices involves programs, which falls into the claimed application.
As per difference b, while not explicitly stated in the reference claim, the request in reference claim involves with parameters being used to select candidate itinerary, which would mean association with these parameters.
As per difference c, the only difference between prior user input and prior usage on plurality of client devices is the number of devices. This is mere duplication of parts and would have been obvious at the time of the effective filing date to make the obvious variation.
As per difference d, the property of “including at least one component from each of at least two non-contiguous segments” doesn’t appear to have criticality and instead appears to be one of potential property the candidate can have. It is worth noting that reference claim also requires more than 100 nodes and edges between origin and destination. While being large, it is still a finite number of solutions and it would have been obvious to try so that one of the result ended up with the desired property. Therefore, it would have been obvious to try to arrive at the claimed. Examiner notes analysis would likely need to be performed differently if Applicant shows the property’s criticality.
Regarding claims 2-20, they also includes limitations that would have been obvious over the reference claim 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE CHEN whose telephone number is (571)270-5499. The examiner can normally be reached Monday-Friday, 8:30 AM -5:00 PM Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shannon Campbell can be reached at 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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GEORGE CHEN
Primary Examiner
Art Unit 3628
/GEORGE CHEN/Primary Examiner, Art Unit 3628
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