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 .
Notice for all Patent Application as subject to AIA
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
DETAILED ACTION
Claims 1-20 are presented for examination.
NON-STATUTORY DOUBLE PATENTING
The non-statutory 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 time wise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentable 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); and 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 a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
OBVIOUSNESS-TYPE DOUBLE PATENTING (ANTICIPATION EXISTS)
Claims 1-20 are rejected on the ground of non-statutory double patenting as being un-patentable over claims 1-20 of US Patent No. 12,363,125 B2. Although the claims at issue are not identical, they are not patentable distinct from each other because claims 1-20 of US Patent No. 12,363,125 B2 contain every limitation of claims 1-20 of the instant application and thus anticipate the claims of the instant application. This is a non-statutory double patenting rejection because the patentable indistinct claims have been patented.
“A later patent claim is not patentable distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claims 1-20 are generic to the species of invention covered by claims 1-20 of US Patent No. 12,363,125 B2. Thus, the generic invention is "anticipated" by the species of the patented invention. Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim). This court's predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of generic application. Inre Van Ornum, 686 F.2d 937, 944, 214 USPQ 761,767 (CCPA 1982).
Accordingly, absent a terminal disclaimer, claims 1-20 ware properly rejected under the doctrine of obviousness-type double patenting.” (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
The subject matter claimed in the instant application is fully disclosed and covered in claims 1-20 of US Patent No. 12,363,125 B2, since US Patent No. 12,363,125 B2, and the instant application are claiming common subject matter, as follows:
The claimed invention in the instant application (claims 1-7) is same as the claimed invention in the US Patent No. 12,363,125 B2 (claims 1-7) by rearranging the claimed limitations such as changing the limitation “software application” to –software service--, which is functionally equivalent and not changing the scope of the invention; adding the limitations –a security-- associated with the first set (permitted access) and --a level of trust-- associated with the second set (denied access), and creating new detailed independent claim 1, which is also not changing the scope of the invention. No new invention or new improvement is being claimed in the instant application.
The claimed invention in the instant application (claims 8-14) is same as the claimed invention in US Patent No. 12,363,125 B2 (claims 8-14). As to claims 8-14, they are also rejected for the same reasons set forth to rejecting claims 1-7 above, since claims 8-14 are merely method of operations for the apparatus defined in the claims 1-7, and claims 8-14 do not teach or define any new limitations than above rejected claims 1-7. (For mapping see method claims 8-14 of the US Patent No. 12,363,125 B2).
The claimed invention in the instant application (claims 15-20) is same as the claimed invention in US Patent No. 12,363,125 B2 (claims 15-20). As to claims 15-20, they are also rejected for the same reasons set forth to rejecting claims 1-7 above, since claims 15-20 do not teach or define any new limitations than above rejected claims 1-7. (For mapping see program product claims 15-20 of the US Patent No. 12,363,125 B2).
Basically, applicants change the claimed limitations of the claims 1-20 of US Patent No. 12,363,125 B2 and creating the new detailed claims 1-20. No new invention or new improvement is being claimed in the instant application. Furthermore, there is no apparent reason why applicants were prevented from presenting claims corresponding to those of the instant application during prosecution of the application, which matured into the US Patent No. 112,363,125 B2.
Additional References
The examiner as of general interest cites the following references.
Badhwar et al, U.S. Patent No. 11,290,464 B2.
Brique et al, U.S. Patent No. 10,050,967 B2.
Zlatarev, U.S. Patent Application Publication No. 2014/0208382 A1.
Content Information
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/BHARAT BAROT/Primary Examiner, Art Unit 2453August 25, 2026
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