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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,369,509. Although the claims at issue are not identical, they are not patentably distinct from each other as the instant application merely broadens the patented language the limitations would have been obvious to a person of ordinary skill in the art at the time of filing.
Allowable Subject Matter
Claims 1-20 would be allowable if a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) is received or if the claims are rewritten or amended to overcome the rejection(s) under Double Patenting set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Holgersson et. al. (US Patent Publication 2018/0253096) is considered to be the closest prior art. Holgersson discloses an electronic [external] device to allow a user to control a robotic tool (27) and wherein "the virtual map may be further enhanced based on input from external sources such as external device." (46) The prior art fails to disclose or render obvious absent impermissible hindsight reasoning “an external device for use with a robotic garden tool, the external device comprising: a display; a device network interface configured to allow the external device to wirelessly communicate with the robotic tool; and an electronic processor coupled to the display, the device network interface, and a memory, and configured to communicate with the robotic garden tool via the device network interface, the electronic processor configured to display a start point screen on the display, the start point screen including an initiate setup button and an add start point button, wherein when the initiate setup button is selected by a first user input, the processor is configured to send a signal to the robotic garden tool to travel from a dock and along a perimeter of an operating area, and wherein when the add start point button is selected by a second user input, the processor is configured to retrieve a first position of the robotic garden tool, the first position being indicative of a first start point remote of the dock.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN D HUTCHINSON whose telephone number is (571)272-8413. The examiner can normally be reached 7-5 Mon-Thur.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Navid Mehdizadeh can be reached at (571) 272-7691. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALAN D HUTCHINSON/Primary Examiner, Art Unit 3669
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