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 Office Action is in response to the application 19/238,684 filed on 06/16/2025.
Claims 1-20 have been examined and are pending in this application.
Priority
This application is a continuation of U.S. application No. 18/159,746, filed on January 26th, 2023 (Now U.S. patent No. 12,363,132).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,363,132 Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application’s claims are an obvious variant of the 12,363,132 patent.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 7, contain subject matter, “……compute a distribution of the code collector self-timing data” and “ determine, based on the distribution, a presence………”, which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Examiner searched the whole document and could not identify support for the terms: “compute a distribution of the code collector self-timing data.” In other words, there is NOT any compute a distribution described in the specification.
Regarding claims 8-13; claims 8-13 are dependent on claim 7, and are analyzed and rejected accordingly.
Allowable Subject Matter
Claims 1-6 and 14-20 would be allowable if the rejection(s) under the nonstatutory obviousness-type double patenting rejection(s), set forth in this Office action is resolved.
Claims 7-13 would be allowable if the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, set forth in this Office action and the rejection(s) under the nonstatutory obviousness-type double patenting rejection(s), set forth in this Office action is resolved.
The following is an examiner’s statement of reasons for allowance:
As to claims 1-20, the closest prior arts, Arif (US 2020/0244639), in view of Turgeman (2018/0034850), in view of Williams (US 2021/0084451), in view of Hou (US 2022/0245225) and further in view of Moustafa (US 2022/0335340), alone or in combination fails to anticipate or render obvious the claim invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANCHIT K SARKER whose telephone number is (571)270-7907. The examiner can normally be reached M-F 8:30 AM-5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FARID HOMAYOUNMEHR can be reached at 571-272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANCHIT K SARKER/Primary Examiner, Art Unit 2495
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