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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 5/22/26 is acknowledged. Since an Action has been issued on the elected claims, Applicant’s Election of Group I is considered FINAL.
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 1-8 and 31-52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No.11,812,472. Although the claims at issue are not identical, they are not patentably distinct from each other because:
For claim 1, 8, 39, and 46, ‘472 discloses the limitations in claims 1, 3, 15, and 19.
For claims 2, 32, 40, and 47, ‘472 discloses the limitations in claims 1, 3, 10, 11, 15, and 19.
For claims 3, 33, 41, and 48, ‘472 discloses the limitations in claims 1, 6, 15, and 19.
For claims 4, 34, 42, and 49, ‘472 discloses the limitations in claims 1, 4, 15, and 19.
For claims 5, 35, 43, and 50, ‘472 discloses the limitations in claims 1, 3, 15, and 19, except for “the criteria is associated with a transmit power of the first device”. However, Examiner takes Official Notice that the use of the criteria is associated with a transmit power of the first device was common and well known in the art prior to the effective filing date. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify ‘472 to use the criteria is associated with a transmit power of the first device. The technical reasoning to combine would be to allow for more efficient transmission.
For claims 6, 36, 44, and 51, ‘472 discloses the limitations in claims 1, 4, 6, 15, and 19.
For claims 7, 37, 45, and 52, ‘472 discloses the limitations in claims 1, 4, 6, 15, and 19.
For claims 31 and 38, ‘472 discloses the limitations in claims 1, 2, 15, 17, and 19.
Claims 1-8 and 31-52 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No.10798743. Although the claims at issue are not identical, they are not patentably distinct from each other because:
For claims 1, 8, 39, and 46, ‘743 discloses the limitations in claims 1, 3, 10, 16, and 25.
For claims 2, 32, 40, and 47, ‘743 discloses the limitations in claims 1, 3, 16, 18, 25, and 27.
For claims 3, 33, 41, and 48, ‘743 discloses the limitations in claims 1, 5, 10, 14, 16, and 25.
For claims 4, 34, 42, and 49, ‘743 discloses the limitations in claims 1, 10, 16, and 25.
For claims 5, 35, 43, and 50, ‘743 discloses the limitations in claims 1, 3, 10, 16, and 25, except for “the criteria is associated with a transmit power of the first device”. However, Examiner takes Official Notice that the use of the criteria is associated with a transmit power of the first device was common and well known in the art prior to the effective filing date. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to modify ‘472 to use the criteria is associated with a transmit power of the first device. The technical reasoning to combine would be to allow for more efficient transmission.
For claims 6, 36, 44, and 51, ‘743 discloses the limitations in claims 1, 3, 10, 16, and 25.
For claims 7, 37, 45, and 52, ‘743 discloses the limitations in claims 1, 3, 10, 16, and 25.
For claims 31 and 38, ‘743 discloses the limitations in claims 1, 4, 7, 10, 16, and 25.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: If Applicant were to filed a Terminal Disclaimer to overcome the Double Patenting rejections, then it would appear that the claims are in condition for allowance in view of the closest prior art of record, Viger (GB 2539693) [Cited on IDS].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Lee et al (US 2016/0359653) discloses a multi-user environment.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R CROMPTON whose telephone number is (571)270-3678. The examiner can normally be reached 10AM-4PM ET M-Th.
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, Asad Nawaz can be reached at (571)272-3988. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R CROMPTON/Primary Examiner, Art Unit 2463
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