DETAILED ACTION
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 .
Claims Status
Claims 1-12 are currently pending in the application.
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 timewise 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 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 non-statutory 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 non-statutory 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 1-12 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-10 and 12 of US Application 18/577996 issued a NOA on 03/24/2026. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims 1-12 and Patent Claims 1-10 and 12 are directed to the same invention with a different in scope (broader in scope than the patent claim) and are therefore an obvious variant thereof. (See the mapping of pending claims and patent claims).
Claims 1, 11 and 12 in the pending application independent claims is anticipated by conflicting patent independent claims 1 and 12.
Claim 2 in the pending application is anticipated by conflicting patent claim 2.
Claim 3 in the pending application is anticipated by conflicting patent claim 3.
Claim 4 in the pending application is anticipated by conflicting patent claim 4.
Claim 5 in the pending application is anticipated by conflicting patent claim 5.
Claim 6 in the pending application is anticipated by conflicting patent claim 6.
Claim 7 in the pending application is anticipated by conflicting patent claim 7.
Claim 8 in the pending application is anticipated by conflicting patent claim 8.
Claim 9 in the pending application is anticipated by conflicting patent claim 9.
Claim 10 in the pending application is anticipated by conflicting patent claim 10.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.
The specification of the application does not clearly define or covers “computer readable medium” only non-transitory tangible media. Therefore, the broadest reasonable interpretation to a computer readable medium covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of a computer readable medium. A signal or carrier wave is a form of energy, in the absence of any physical structure of tangible material and is thus non-statuary under current office policy.
Because the full scope of the claims as properly read in light of the disclosure encompasses non-statutory subject matter, the claim as a whole is non-statutory. The examiner suggests amending the claims to adding the limitation “non-transitory” or replace media by “device” or “memory” to the claim, while at the same time excluding the intangible media such as signals, carrier waves, etc. Any amendment to the claim should be commensurate with its corresponding disclosure.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention.
Claims 1, 11 and 12 recites the limitation “the application” in line 13 of claim 1 and in line 14 of claims 11 and 12. The “an application” in line 5 of claim 1 and in line 6 of claims 11 and 12, which is executing on a virtual client device, whereas the “the application” in line 13 of claim 1 and in line 14 of claims 11 and 12 which is executing in the server. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-10 are rejected as being dependent on the after mentioned independent claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-20200218554-A1 to Toksoz et al.
US-20150074232-A1 to Phillips et al.
US-20190007715-A1 to Navali et al.
US-20170332113-A1 to Haritaoglu et al.
US-9509742-B2 to Gordon et al.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MULUGETA MENGESHA whose telephone number is (469)295-9212. The examiner can normally be reached Monday-Friday 9:00AM-5:30PM ET.
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, Jefferey Harold can be reached on 571-2723011. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MULUGETA MENGESHA
Primary Examiner
Art Unit 2424
/Mulugeta Mengesha/Primary Examiner, Art Unit 2424
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