Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 & 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 10 of U.S. Patent No. 11,943,039. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are anticipated by the patent’s claims.
Claims 2 & 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 & 11 of U.S. Patent No. 11,943,039. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are anticipated by the patent’s claims.
Claims 3 & 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 & 12 of U.S. Patent No. 11,943,039. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are anticipated by the patent’s claims.
Claims 4 & 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 & 13 of U.S. Patent No. 11,943,039. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are anticipated by the patent’s claims.
Claims 5 & 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 & 14 of U.S. Patent No. 11,943,039. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are anticipated by the patent’s claims.
Claims 6 & 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 & 15 of U.S. Patent No. 11,943,039. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are anticipated by the patent’s claims.
Claims 7 & 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 & 16 of U.S. Patent No. 11,943,039. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are anticipated by the patent’s claims.
Claims 8 & 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,943,039. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are anticipated by the patent’s claims.
Claims 9 & 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 & 18 of U.S. Patent No. 11,943,039. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are anticipated by the patent’s claims.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim(s) 1-7 and 10-16 are rejected under pre-AIA 35 U.S.C. 102e as being anticipated by Abraham et al. US 2014/00071883 A1.
Claims 1 and 10:
Abraham discloses a method performed by a station (STA) (See figs. 5 and 6), the method comprising: associating with at least one non-AP STA (See para 105, association message. Also see para 83, “the STA 106 can associate with the relay”); and transmitting, to an access point (AP) in response to the STA associating with the at least one non-AP STA (See para 105, association message. Also see para 83, “the STA 106 can associate with the relay”), a message comprising an information element (See fig. 14A-B and para 130, “This reachable address update frame 1400 can include information about addresses that can be reached through a transmitting node, to enhance network routing…”. Also see fig. 13A and para 124, information element), wherein the information element comprises a current list of addresses of STAs with which the AP is capable of communicating through the STA (See fig. 14A-B and para 130, “This reachable address update frame 1400 can include information about addresses that can be reached through a transmitting node, to enhance network routing…”).
With regards to claims 10, a transceiver; and a processor (See fig. 3, processor and transmitter).
Claims 2 and 11:
Abraham discloses that the current list of addresses comprises a list of medium access control (MAC) addresses (See para 133, “the reachable addresses element 1420 shown in FIG. 14A specifies the addresses (such as MAC addresses) that can be reached through the transmitting relay node”).
Claims 3 and 12:
Abraham discloses that the message is a first message, further comprising:
receiving a second message from the AP, wherein the second message includes at least one address in the current list of addresses and is configured to be transmitted to the at least one non-AP STA (See para 88 and fig. 5, after associating STA with the AP, the relay can forward packets from AP to the STA. See para 105, the message will include the destination address for the STA); and
transmitting, in response to receipt of the second message, a third message to the at least one non-AP STA on behalf of the AP (See para 88 and fig. 5, after associating STA with the AP, the relay can forward packets from AP to the STA).
Claims 4 and 13:
Abraham discloses that the at least one non-AP STA comprises a first non-AP STA, the method further comprising: associating with a second non-AP STA (See para 105, association message); and transmitting, to the AP after performing the association with the second non-AP STA (See para 105, association message. Also see para 83, “the STA 106 can associate with the relay”), a fourth message comprising an information element (See fig. 14A-B and para 130, “This reachable address update frame 1400 can include information about addresses that can be reached through a transmitting node, to enhance network routing…”. Also see fig. 13A and para 124, information element)., wherein the information element of the fourth message comprises an updated current list of addresses of STAs with which the AP is capable of communicating through the STA (See fig. 14A-B and para 130, “This reachable address update frame 1400 can include information about addresses that can be reached through a transmitting node, to enhance network routing…”).
Claims 5 and 14:
Abraham discloses that receiving a fifth message from the AP, wherein the fifth message includes an address of the second non-AP STA and is configured to be transmitted to the second non-AP STA (See para 88 and fig. 5, after associating STA with the AP, the relay can forward packets from AP to the STA. See para 105, the message will include the destination address for the STA); and transmitting, in response to receipt of the fifth message, a sixth message to the at least one non-AP STA on behalf of the AP (See para 88 and fig. 5, after associating STA with the AP, the relay can forward packets from AP to the STA).
Claims 6 and 15:
Abraham discloses associating with the AP prior to transmitting the message comprising the current list of addresses of STAs with which the AP is capable of communicating through the STA (See para 105, association message).
Claims 7 and 16:
Abraham discloses that the information element further comprise a first field that indicates a number of addresses provided in the current list of addresses of STAs in the information element (See para 136 and fig. 14B, “The address count field 1435 can indicate the number of addresses (such as MAC addresses) contained in the reachable addresses field 1440”), and wherein the information element includes one or more second fields that each include at least one address in the current list of addresses (See figs. 14A-B, reachable addresses).
Response to Arguments
Applicant's arguments filed on 06/15/2026 have been fully considered but they are not persuasive. With regards to claim 1, on pages 1-2 of the applicant's remarks, the applicant argues "there is no indication in the Office Action nor in Abraham that the update frame is sent in response to the STA associating with a non-AP STA".
The examiner respectfully disagrees. Abrahams update message cannot be performed without associating with the network. Therefore, Abraham's message is in response to the association.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HASHIM S BHATTI whose telephone number is (571)270-7748. The examiner can normally be reached Mon-Fri 9:00am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Khaled Kassim can be reached at 571-270-3770. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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HASHIM S. BHATTI
Primary Examiner
Art Unit 2472
/HASHIM S BHATTI/Primary Examiner, Art Unit 2475
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