DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 05/29/2026 has been entered. Claim(s) 1, 4-5, 7-10, 16, and 19-20 have been amended; Claim(s) 2-3 and 11 have been canceled; No Claim(s) have been added. Claim(s) 1, 4-10, and 12-20 are subject to examination.
Acknowledgement is made to the applicant’s amendment to claims 7 and 10 to obviate the previous claim objection to claims 7 and 10. The previous objection to claims 7 and 10 is/are hereby withdrawn.
Response to Arguments
Applicant’s arguments, see Remarks, filed 05/29/2026, with respect to the amended limitations in view of the 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 rejections have been fully considered and are persuasive. The 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 rejections of claims 1, 4-10, and 12-20 has been overcome.
Applicant's arguments, see Remarks, filed 05/29/2026, with respect to Double Patenting Rejection have been fully considered but they are not persuasive.
Applicant’s Arguments:
The applicant argues in substance that it would not have been obvious to modify the co-pending application with SONG because SONG discloses preventing the external terminal from transmitting data rather than: stopping the operation of the communication apparatus itself in the AP mode. SONG teaches that the communication apparatus continues operating in the AP mode.
Examiner’s Response:
The examiner respectfully disagrees. The limitations define AP mode as simply a second mode in which the communication apparatus operates as a parent station according to a predetermined wireless communication standard. In SONG para 6 and para 11, the communication apparatus stops operating as a parent mode when it stops communicating with a child. Specifically, the communication apparatus as a parent station sends a stop message (the control message) to notify that the second mode was no longer operational (absent mode) thereby causing the mode (second mode) in which the communication device would be expected to send or receive transmissions from a child station (external device) to end. In other words, the communication apparatus indicates its entering absent mode which is a mode in which the communication apparatus stops transmitting or receiving signals from the child station (external device) which it had previously done in the second mode. For the sake of prosecution, the rejection has been reformatted below.
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 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18320113 in view of SONG et al. (US 20210289578 A1), hereby referred to as SONG.
Claim 2, depending on claim 1, of the copending application discloses claim 1 and 19-20 except language underlined and bolded. See Table below.
Instant Applicant #18320021
Copending application #18320113
Claim 1:
A communication apparatus configured to perform an operation in a first mode and a second mode, wherein the communication apparatus operates as a child station according to a predetermined wireless communication standard in the first mode, and the communication apparatus operates as a parent station according to the predetermined wireless communication standard in the second mode, the communication apparatus comprising: at least one memory storing a program; and at least one processor that, upon execution of the stored program is configured to operate as:
a control unit configured to perform control in such a manner that (i) a state in which a predetermined wireless connection between the communication apparatus operating in the first mode and an access point is performed and (ii) a state in which the communication apparatus is operating in the second mode, are concurrently maintained;
and a stop unit configured to stop the communication apparatus from operating in the second mode based on a change of a channel used by the access point when (i) the state in which the predetermined wireless connection is performed and (ii) the state in which the communication apparatus is operating in the second mode, are concurrently maintained, and
a restart unit configured to restart, after the operation in the second mode being performed by the communication apparatus is stopped, an operation in the second mode to be performed by the communication apparatus by using a second channel different from a first channel used in the predetermined wireless connection after the channel used by the access point is changed,
wherein the communication apparatus turns into a state which does not transmit or receive signals in the second mode by stopping the operation in the second mode.
Claim 1:
A communication apparatus configured to perform an operation in a first mode in which the communication apparatus operates as a child station in a predetermined wireless communication standard, and an operation in a second mode in which the communication apparatus operates as a parent station in the predetermined wireless communication standard, the communication apparatus in comprising:
Claim 1:
and a control unit configured to, in a case where the specific processing is performed while the communication apparatus is operating in the second mode, perform control in such a manner that a state in which the communication apparatus is operating in the first mode and a state in which the communication apparatus is operating in the second mode that uses the specified channel are concurrently maintained.
Claim 1:
in a case where specific processing for operating the communication apparatus in the first mode is performed while the communication apparatus is operating in the second mode, specify a channel different from the channel used by the communication apparatus in the second mode when the specific processing is performed
Claim 2:
a stop unit configured to, in a case where the specific processing is performed while the communication apparatus is operating in the second mode, stop an operation in the second mode being performed by the communication apparatus;
Claim 2:
and a restart unit configured to restart an operation in the second mode to be performed by the communication apparatus, after the operation in the second mode being performed by the communication apparatus is stopped, wherein a channel different from the channel used by the communication apparatus in the second mode during the specific processing is specified as a channel to be used by the communication apparatus in the restarted second mode.
Claim 19:
A control method for a communication apparatus configured to perform an operation in a first mode and a second mode, wherein the communication apparatus operates as a child station according to a predetermined wireless communication standard in the first mode, and the communication apparatus operates as a parent station according to the predetermined wireless communication standard in the second mode,
the control method comprising: performing control in such a manner that (i) a state in which a predetermined wireless connection between the communication apparatus operating in the first mode and an access point is performed and (ii) a state in which the communication apparatus is operating in the second mode, are concurrently maintained;
and stopping the communication apparatus from operating in the second mode based on a channel used by the access point being changed when (i) the state in which the predetermined wireless connection is performed and (ii) the state in which the communication apparatus is operating are concurrently, maintained.
restarting, after the operation in the second mode being performed by the communication apparatus is stopped, an operation in the second mode to be performed by the communication apparatus by using a channel different from a channel used in the predetermined wireless connection after the channel used by the access point is changed,
wherein the communication apparatus turns into a state which does not transmit or receive signals in the second mode by stopping the operation in the second mode.
Claim 1:
A communication apparatus configured to perform an operation in a first mode in which the communication apparatus operates as a child station in a predetermined wireless communication standard, and an operation in a second mode in which the communication apparatus operates as a parent station in the predetermined wireless communication standard,
Claim 1:
and a control unit configured to, in a case where the specific processing is performed while the communication apparatus is operating in the second mode, perform control in such a manner that a state in which the communication apparatus is operating in the first mode and a state in which the communication apparatus is operating in the second mode that uses the specified channel are concurrently maintained.
Claim 1:
in a case where specific processing for operating the communication apparatus in the first mode is performed while the communication apparatus is operating in the second mode, specify a channel different from the channel used by the communication apparatus in the second mode when the specific processing is performed
Claim 2:
a stop unit configured to, in a case where the specific processing is performed while the communication apparatus is operating in the second mode, stop an operation in the second mode being performed by the communication apparatus;
Claim 2:
and a restart unit configured to restart an operation in the second mode to be performed by the communication apparatus, after the operation in the second mode being performed by the communication apparatus is stopped, wherein a channel different from the channel used by the communication apparatus in the second mode during the specific processing is specified as a channel to be used by the communication apparatus in the restarted second mode.
Claim 20:
A non-transitory computer readable storage medium storing a program for causing a computer to perform a control method for a communication apparatus configured to perform an operation in a first mode and a second mode, wherein the communication apparatus operates as a child station according to a predetermined wireless communication standard in the first mode, and an operation in a second mode in which the communication apparatus operates as a parent station according to the predetermined wireless communication standard in the second mode,
the control method comprising: performing control in such a manner that (i) a state in which a predetermined wireless connection between the communication apparatus operating in the first mode and an access point is performed and (ii) a state in which the communication apparatus is operating in the second mode, are concurrently maintained;
and stopping the communication apparatus from operating in the second mode based on a channel used by the access point being changed when (i) the state in which the predetermined wireless connection is performed and (ii) the state in which the communication apparatus is operating, are concurrently maintained.
restarting, after the operation in the second mode being performed by the communication apparatus is stopped, an operation in the second mode to be performed by the communication apparatus by using a channel different from a channel used in the predetermined wireless connection after the channel used by the access point is changed,
wherein the communication apparatus turns into a state which does not transmit or receive signals in the second mode by stopping the operation in the second mode.
Claim 1:
A communication apparatus configured to perform an operation in a first mode in which the communication apparatus operates as a child station in a predetermined wireless communication standard, and an operation in a second mode in which the communication apparatus operates as a parent station in the predetermined wireless communication standard,
Claim 1:
and a control unit configured to, in a case where the specific processing is performed while the communication apparatus is operating in the second mode, perform control in such a manner that a state in which the communication apparatus is operating in the first mode and a state in which the communication apparatus is operating in the second mode that uses the specified channel are concurrently maintained.
Claim 1:
in a case where specific processing for operating the communication apparatus in the first mode is performed while the communication apparatus is operating in the second mode, specify a channel different from the channel used by the communication apparatus in the second mode when the specific processing is performed
Claim 2:
a stop unit configured to, in a case where the specific processing is performed while the communication apparatus is operating in the second mode, stop an operation in the second mode being performed by the communication apparatus;
Claim 2:
and a restart unit configured to restart an operation in the second mode to be performed by the communication apparatus, after the operation in the second mode being performed by the communication apparatus is stopped, wherein a channel different from the channel used by the communication apparatus in the second mode during the specific processing is specified as a channel to be used by the communication apparatus in the restarted second mode.
SONG, in the same field of endeavor, teaches at least one memory storing a program; and at least one processor that, upon execution of the stored program is configured to operate (SONG: FIG. 5 item 13 the processor and para 66 (“The storing medium may include various media for storing programming codes…”)); and wherein the communication apparatus turns into a state which does not transmit or receive signals in the second mode by stopping the operation in the second mode (SONG: para 11 (“The Wi-FI chip…is in an absent status…such that the external device does not need to transmit data to the Wi-Fi chip…”) communication apparatus indicates its entering absent mode which is a mode in which the communication apparatus stops transmitting or receiving signals from the child station (external device) which it had previously done in the second mode).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to have modified the copending application with SONG for the benefit of preventing connection loss due to an untimely switching between channels (SONG: para 4).
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 4-10 and 12-18 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
HIRAMATSU (US 20150334759 A1) teaches stopping a concurrent mode based on change in channel used by the access point in a first mode, and restarting operation in a second mode in a different channel. However, HIRAMATSU does not explicitly teach restarting operation in a second mode in a second channel different from a first channel used in in the predetermined wireless connection with the access point after the channel used by the access point is changed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELIE T NGO whose telephone number is (571)272-0180. The examiner can normally be reached Mon - Thur: 8am - 5pm; 2nd Fri: 8am - 3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Noel Beharry can be reached at (571) 270-5630. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.T.N./Examiner, Art Unit 2416
/NOEL R BEHARRY/Supervisory Patent Examiner, Art Unit 2416
