DETAILED ACTION
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 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11,924,137. 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,528,114. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 in the above patent anticipates claim 1 of the present application as shown in the table below.
Present Application
USPN 11,528,114
Claim 1. A method performed by a first device in an Orthogonal Frequency Division Multiple Access (OFDMA) system that uses a communication channel that includes contiguous time-frequency resources, wherein the first device is capable of transmitting data to a network device within a time-frequency resource unit, wherein the time- frequency resource unit is within a resource zone comprising at least some non- contiguous time-frequency resources of the communication channel, the time-frequency resource unit being of a sequential set of time-frequency resource units, each time-frequency resource unit of the sequential set of time-frequency resource units comprising specific contiguous time-frequency resources for transmitting signals, the method comprising: receiving an indication that determines time-frequency resources that are included in the resource zone, wherein the time-frequency resources of the resource zone are mapped to the sequential set of time-frequency resource units using the indication, and wherein a size in time-frequency resources of each time-frequency resource unit is determined by the indication; receiving a number of information elements, wherein the number of information elements is specified by an indicator that precedes the number of information elements, wherein each information element includes a single value offset that indicates, in time- frequency resource units, a starting position of a corresponding allocation of one or more time-frequency resource units in the resource zone and a service identifier for the corresponding allocation; and transmitting at least one of the signals including the data using at least one of the allocations based on the service identifier.
Claim 1. A first device in an Orthogonal Frequency Division Multiple Access (OFDMA) system that uses a communication channel that includes contiguous time-frequency resources, wherein the first device is capable of transmitting data to a network device within a time-frequency resource unit, wherein the time-frequency resource unit is within a resource zone comprising at least some non-contiguous time-frequency resources of the communication channel, the time-frequency resource unit being of a sequential set of time-frequency resource units, each time-frequency resource unit of the sequential set of time-frequency resource units comprising specific contiguous time-frequency resources for transmitting signals, the first device comprising: a receiver configured to: receive an indication that determines time-frequency resources that are included in the resource zone, wherein the time-frequency resources of the resource zone are mapped to the sequential set of time-frequency resource units using the indication, and wherein a size in time-frequency resources of each time-frequency resource unit is determined by the indication; and receive a number of information elements, wherein the number of information elements is specified by a header, wherein each information element includes a single value offset that indicates, in time-frequency resource units, a starting position of a corresponding allocation of one or more time-frequency resource units in the resource zone and a service identifier for the corresponding allocation; and a transmitter configured to transmit at least one of the signals including the data using at least one of the allocations based on the service identifier.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vook et al. (US-PGPUB 2006/0035643) teaches determining an uplink sounding zone within a frame and instructing a subscriber station to transmit a specific sounding signal at multiple specific symbol intervals within the sounding zone.
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/Chandrahas B Patel/ Primary Examiner, Art Unit 2464