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 .
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 07/15/2024, 09/26/2024, and 12/03/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 36 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
Claim 36 recites “a first network element and a second network element”, in line 2. However, claim 6 (from which claim 36 depends) already establishes a first network element and a second network element. A such, it is unclear if the first network element and second network element recited in claim 36 are the same as, or different from, the first network element and second network element recited in claim 6.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 7 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. US 11902723 B2. This is a statutory double patenting rejection.
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 6, 8-9, and 21-28 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. US 11902723 B2. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding Claim 6:
Reference (US 11902723 B2) Claim 1
Instant Application (18/405449) Claim 6
An apparatus comprising a control system configured to synchronize two or more network elements, the control system comprising:
An apparatus comprising a control system configured to synchronize two or more network elements, the control system comprising:
a first port configured to receive a first local time information from a first network element;
a first port configured to receive a first local time information from a first network element;
a second port configured to receive a second local time information from a second network element;
a second port configured to receive a second local time information from a second network element;
a processor configured to compute, from the first local time information and the second local time information, one or more global time values;
a processor configured to compute, from the first and second local time information, one or more global time values;
and a third port configured to transmit the one or more global time values to the first network element or to a third network element different from the first and second network elements;
And a third port configured to transmit the one or more global time values to the first network element or to a third network element different from the first and second network elements.
wherein the first local time information and the second local time information each comprise two respective local time values, said local time values being associated with a same time stamp extracted by each of the first and second network elements from respective sequences of optical frame templates and loaded optical frames received thereat.
As can be seen above, claim 6 of the instant application is anticipated by claim 1 of U.S. Patent No. US 11902723 B2.
Regarding Claims 8-9, claims 8-9 of the instant application are anticipated by claims 2-3 of U.S. Patent No. US 11902723 B2.
Regarding Claims 21-24, claims 21-24 are drawn to the method of using an apparatus the same as claimed in claims 6-9. As such, claims 21-24 are anticipated by claims 1-3 of U.S. Patent No. US 11902723 B2.
Regarding Claims 25-28, claims 25-28 are drawn to a method reciting a broader subset of features corresponding to using an apparatus the same as claimed in claims 6-9. As such, claims 25-28 are anticipated by claims 1-3 of U.S. Patent No. US 11902723 B2.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 6, 8-9, 21, 23-25, 27-28, and 30-31 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Volpe et al. US 10164759 B1 (hereinafter Volpe).
Regarding Claim 6, Volpe teaches an apparatus comprising a control system configured to synchronize two or more network elements (Fig. 4A, network device for reliable precision time; Col. 18, line 17 – Col. 23, line 40), the control system comprising: a first port configured to receive a first local time information from a first network element (Fig. 4A, Port 0 receives time stamped time info from Provider 0; Col. 18, line 17 – Col. 23, line 40); a second port configured to receive a second local time information from a second network element (Fig. 4A, Port 7 receives time stamped info from Provider 1; Col. 18, line 17 – Col. 23, line 40); a processor configured to compute, from the first and second local time information, one or more global time values (Fig. 4A local processor (450) calculates clock offsets and delay, is synchronized to both trees (412 and 414) to generate a network time for the recipients; Col. 18, line 17 – Col. 23, line 40); and a third port configured to transmit the one or more global time values to the first network element or to a third network element different from the first and second network elements (Fig. 4A, port 2 for providing network time to Recipient 0; Col. 18, line 17 – Col. 23, line 40).
Regarding Claim 8, Volpe teaches the apparatus of claim 6 wherein the control system is configured to compute a sum of the received first local time information and the received second local time information (Col. 32, lines 36-45).
Regarding Claim 9, Volpe teaches the apparatus of claim 6 wherein the control system is configured to compute a difference of the received first local time information and the received second local time information (Col. 17; lines 39-55).
Regarding Claims 21 and 23-24, claims 21 and 23-24 are drawn to the method of using an apparatus the same as claimed in claims 6 and 8-9. As such, the limitations of claims 21 and 23-24 correspond to limitations of claims 6 and 8-9, and are therefore rejected for the same reason(s) of anticipation as stated above.
Regarding Claims 25 and 27-28, claims 25 and 27-28 are drawn to a method reciting a broader subset of features corresponding to using an apparatus the same as claimed in claims 6 and 8-9. As such, the limitations of claims 25 and 27-28 correspond to limitations of claims 6 and 8-9, and are therefore rejected for the same reason(s) of anticipation as stated above.
Regarding Claim 30, Volpe teaches the apparatus of claim 6 wherein the processor is physically integrated into one or more of the two or more network elements (Col. 19, lines 22-35).
Regarding Claim 31, Volpe teaches the apparatus of claim 6 wherein the processor is configured to compute a communication delay between the first network element and the second network element (Col. 16, line 4 – Col. 18, line 16; Fig. 3); and wherein the control system is configured to transmit the communication delay to the first network element and the second network element (Col. 16, line 4 – Col. 18, line 16; Fig. 3).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Volpe.
Regarding Claim 29, Volpe teaches the apparatus of claim 6 wherein the processor comprises a distributed processor having parts located at a computer (Col. 19, lines 8-21; Col. 44, lines 1-13).
Volpe does not explicitly teach parts located at different computers. However, it is held that a mere separation of parts, such as dividing a single component into two or more, is considered a matter of routine engineering (MPEP 2144.04). As such, before the effective filing date of the claimed invention, separating the parts of the processor of Volpe into two or more separate computers would have been a matter of obvious engineering choice.
Allowable Subject Matter
Claims 32-35 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.
Claim 36 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID W LAMBERT whose telephone number is (571)272-7692. The examiner can normally be reached Monday to Friday, 10-6.
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, Kenneth Vanderpuye can be reached at (571)272-3078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID W LAMBERT/Examiner, Art Unit 2634