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 .
EXAMINER’S NOTE
Examiner attempted to contact the applicant’s representative for discussion regarding allowability of the application because the claims of the application appear to be allowable if the applicant files a terminal disclaimer disclaiming the patent term that would have extended beyond the expiration date of U.S. Patent No. 12050592. However, the examiner could not reach the applicant.
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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 12050592. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-25 of U.S. Patent No. 12050592 anticipate the claims 1-25 of the instant application.
Allowable Subject Matter
Claims 1-25 would be allowable if the applicant files a terminal disclaimer disclaiming the patent term that would have extended beyond the expiration date of U.S. Patent No. 12050592.
Reasons for Indicating Allowance Subject Matter
The following is an examiner’s statement of reasons for indicating allowable Subject Matter: The prior art of record fails to reasonably disclose, suggest, or render obvious the independent Claims as recited, claimed and arranged by the applicant.
As for a related prior art of record, Oweis et al. (US PAT 9336020), hereinafter “Oweis”, discloses a method/system for receiving a user request, e.g. descriptive or declarative information, for initiating a computing operation with respect to data [i.e. digital object comprising a first file or data] stored in distributed database environment; executing an operation, e.g. updating the data, based on the user request; and mapping transitioning of states with respect to the operation (Column 2 Line # 18 – 33, Column 3 Line # 51 – 62 and Column 4 Line # 6 – 20). However, Oweis fails to teach the steps for “determining context data associated with the data object, wherein the context data comprising: first profile data associated with the digital data object, trajectory data associated with one or more computing operations previously executed on the digital data object, or metadata associated with the digital data object” as described by the claimed invention of the instant application. In addition, although Oweis describes recording the operations requested by the user as workflow definition based on the information indicative of a sequence of user actions and storing the workflow definition [i.e. generating digital record comprising summary data associated with the computing operations] for later use (Column 8 Line # 12 – 39), Oweis fails to disclose the steps for “generating the digital record comprising state data associated with the transitioning the digital data object from the first data state to the second data state; and updating, using the one or more computing device processors, based on at least one of the first summary data associated with the first computing operation or the first state data associated with the transitioning the digital data object from the first data state to the second data state, the first context data, thereby generating updated first context data.” Therefore, Oweis fails to suggest or teach the inventive steps of the claimed invention of the instant application, and thus fundamentally different from the claimed invention of the instant application.
As for another related prior art of record, Nakamura (US PAT 6779028), hereinafter “Nakamura” discloses a method/system for recording and storing data regarding the transitioning of the states of the application and data being executed (Fig. 5, Column 5 Line # 39 – 47, Column 7 Line # 4 – 19 and Column 7 Line # 52 - 65). However, Nakamura fails to disclose the claim features “determining, using the one or more computing device processors, first context data associated with the digital data object based on at least the first input, the first context data at least one of: first profile data associated with the digital data object, trajectory data associated with one or more computing operations previously executed on the digital data object, or metadata associated with the digital data object; executing, using the one or more computing device processors, based on at least one of the first context data or the first input: a first computing operation, the first computing operation comprising transitioning the digital data object from a first data state to a second data state, and a second computing operation, the second computing operation not comprising transitioning the digital data object from the first data state to the second data state; generating, using the one or more computing device processors, a first digital record comprising or indicating: first summary data associated with the first computing operation, and first state data associated with the transitioning the digital data object from the first data state to the second data state; updating, using the one or more computing device processors, based on at least one of the first summary data associated with the first computing operation or the first state data associated with the transitioning the digital data object from the first data state to the second data state, the first context data, thereby generating updated first context data”. Therefore, Nakamura also fails to suggest or teach the inventive steps of the claimed invention of the instant application, and thus fundamentally different from the claimed invention of the instant application.
Therefore, considered alone or in combination, Owes and Nakamura fails reasonably disclose/suggest and/or render obvious the independent Claims as recited, claimed and arranged by the applicant.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOE MIN HLAING whose telephone number is (303)297-4282. The examiner can normally be reached Monday-Friday 9AM - 5PM.
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, Christopher Parry can be reached on 571-272-8328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Soe Hlaing/Primary Examiner, Art Unit 2451
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