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 1-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-11, 13-20, 22-33, 36-41, 44, and 50-51 of U.S. Patent No. 12395368 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because
Claims 1, 39, and 41 recite substantially the same limitations as recited in claims 23, 23, and 25 of US 12395368 B2 respectively except for the recitation of the “plurality of mobile inmate computer devices” being “inside the correctional facility” and the “plurality of visitor computer devices being “remotely located from the correctional facility”, a limitation that one skilled in the art would have found to be an obvious variation of the patented subject matter in at least by way of the “inmate” and “visitor” limitations to which their incarceration status is plainly apparent.
Another apparent obvious variation is found in claim 20 which recites substantially the same limitations as recited in claim 12 of US 12395368 B2 except for the recitation of “in each spontaneous group electronic audio/video exchange” which one skilled in the art would have also found to have been an obvious variation of the patented subject matter given the mere repetition of the already required “spontaneous group electronic audio/video exchange” would be been expected and obvious.
The rest of the claimed limitations of claims 1, 39, and 41 are otherwise anticipated by the recitations of claims 23, 23, and 25 respectively of US 12395368 B2.
Furthermore, claims 2-38, 40 and 42 are also anticipated by the recitations of claims 23, 23, 2-7, 9-11, 26-32, 12, 23, 13-16 in combination, 17-20, 22, 36-41, 44, 24, 33, 50-51, 24, and 24 and 25 in combination respectively of US 12395368 B2.
Therefore, claims 1-42 are rejected under the judicially-created doctrine of obviousness-type double patenting.
Allowable Subject Matter
Claims 1-42 are allowed in view of Applicant’s arguments of record, the cited prior art of record and the prosecution history of the instant application including the reasons for allowance previously indicated in the parent case of the instant application. See also 37 CFR § 1.104(e) and MPEP § 1302.14.
This indication of allowable subject matter is contingent upon the anticipated resolution of the remaining issues detailed in this action.
In the event that any amendment made to the claims changes the scope of the indicated allowable subject matter, further reconsideration of whether the claims continue to distinguish from the prior art and/or are subject to further rejection under applicable statutes may be deemed necessary.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR § 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to G. C. Neurauter, Jr. whose telephone number is (571)272-3918. The examiner can normally be reached Monday-Friday 9am-5pm Eastern Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tonia Dollinger, can be reached at 571-272-4170. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/G. C. Neurauter, Jr./Primary Examiner, Art Unit 2459
Prosecution Insights