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 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 12,620,020. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1 and 10 of the reference patent includes every limitation of the present claims except for the following:
1/9. A system for automated application of utilization thresholds comprising: a network computing device, a terminal computing device, and a user computing device that comprises a smart card having an integrated processor and an integrated private encryption key, wherein the integrated processor utilizes the private key to encode data transmitted by the user computing device....
A user computing device according to the specification may be a personal computer, smartphone or a smart card that includes an integrated microprocessor, memory and software (0005). The Office interprets this passage as indicating that the options are interchangeable and obvious variations to one of ordinary skill. Para. 0006 of the specification discloses that the user device may transmit a certificate of authority encrypted using an encryption key. The encryption key is not specifically tied to the smart card but the generic user device as described in para. 0005. The user device of the patented claims is therefore an obvious variation as that of the present claims according to the specification. Additionally, the claims do not further limit the smart card, therefore the only difference between the claims is the type of user device being used, which are interchangeable per the specification.
Claim 2 and 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 5 of U.S. Patent No. 12,620,020. Although the claims at issue are not identical, they are not patentably distinct from each other because the only differences lie in the independent claims from which they depend.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,620,020. Although the claims at issue are not identical, they are not patentably distinct from each other because the only differences lie in the independent claims from which they depend.
Claim Objections
Claims 4, 10 and 12-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Allowable Subject Matter
Claims 5-8 and 14-20 are allowed.
The following is an examiner's statement of reasons for allowance: The prior art does not disclose, either alone or in combination, the elements of the independent claims. Para. 0003 of the applicant's specification discloses techniques for managing resource utilization, that allow users to establish, apply, and manage utilization demand metrics that are customizable to individual users. The systems further allow resource utilization to be managed effectively, efficiently, and in a secure fashion using encryption and individual computing device authentication techniques. Moreover, some embodiments permit users to establish and apply utilization metrics created using artificial intelligence techniques that enhance the accuracy and customization of such metrics and are reflected in the amended claims.
The closest prior art is:
Glassman - 20200065895 - INTELLIGENT RESOURCE DEPLOYMENT
COUNTEROFFER SYSTEM
BACKGROUND
[0002] Entities deploy additional resources based on specific qualification criteria. While the requirements to receive additional resources are fixed, the variables used in determining the qualification criteria may vary substantially. In situations where a user does not meet the qualification criteria, there is a need for an intelligent system to find alternate resources that can look across a multitude of variables efficiently, and in a short period of time to determine a counteroffer with a favorable alternate resource for the user.
Glassman fails to disclose many features of the independent claims including but not limited to executing utilization threshold analysis by resource monitor software.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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 WILLIAM E RANKINS whose telephone number is (571)270-3465. The examiner can normally be reached on 9-530 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E RANKINS/Primary Examiner, Art Unit 3694
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