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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification does not originally support and/or inadequately describes, for the filing date sought, the corresponding boundary of the overlay changes with one or more of time changes and security level changes of the location and processor tracks wireless devices located within the defined, corresponding boundary, wherein the processor prompts the wireless devices to provide a location update to the INAC.
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 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)(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) 1-3, 5, 7 is/are rejected under 35 U.S.C. 102(a)(2) as being by United States Patent 5,999,813 (Lu, et al), referring to paragraph printout.
Lu, et al discloses an intelligent network access controller (INAC) (Figure 6B, #452), comprising a non-transitory, computer-readable storage medium comprising machine instructions (figure 8, #528) and a processor (#526) that executes the machine instructions to control radiofrequency (RF) equipment (#534, 538, 540) coupled to the processor (#526) to establish an overlay (WLAN) to a portion of an existing wireless communications network (#462). The overlay having a defined, corresponding boundary (#500, figure 6A, ¶63-70). generate a private network in the overlay (#464, figure 6A, ¶63-70). Provide access to the private network for a first class of wireless devices located in the defined, corresponding boundary, and prevent access to the private network for a second class of wireless devices located in the defined, corresponding boundary (¶17, 23-24).
Regarding claim 2, #452 shows the processor generates the private network in a sub-area of the overlay.
Regarding claim 3, #452 shows the processor generates the private network in an entire area of the overlay.
Regarding claim 5, note ¶24, 130, 134, 141 which shows the processor establishes the overlay at a location having security access requirements.
Regarding claim 7, #258, 652, 650, 680, figures 12, 5 which shows the processor connects the private network to one or more of a private branch exchange and a public switched telephone network.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent 5,999,813 (Lu, et al) in view of United States Patent Application Publication 2006/0240811 (DeLuca).
Lu, et al disclose all subject matter, note the above paragraphs, except for identifying a wireless device based on an Equipment Identification Number of the wireless device. The Examiner takes Official Notice that identifying a wireless device based on an Equipment Identification Number of the wireless device is over two decades old and well known in the art. The Examiner provides DeLuca. Hence, it 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 to that the two decades old and well known in the art identifying a wireless device based on an Equipment Identification Number of the wireless device in the intelligent network access controller of Lu, et al in order to screen wireless devices based on equipment.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim(s) 9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent 5,999,813 (Lu, et al) in view of United States Patent Application Publication 2001/0026545 (Mataumoto, et al).
Lu, et al disclose all subject matter, note the above and below paragraphs, except for voice over IP. The Examiner takes Official Notice that voice over IP is over two decades old, well known, commercially available voice over IP. The Examiner provides Mataumoto, et al as evidence as such.
Hence, it would have been obvious before the effective filing date of the claimed invention to a person having below ordinary skill in the art to which the claimed invention pertains to incorporate such over two decades old, well known, commercially available voice over IP in the device in the intelligent network access controller of Lu, et al in order to use the internet for voice communications.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim(s) 9-12, 14, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent 5,999,813 (Lu, et al).
Lu, et al discloses a system for controlling access to wireless communications (figure 8), comprising a radio frequency (RF) front end (#534, 538, 540), comprising an RF antenna (#538, 540), RF distribution equipment (#534). The RF front end receiving first transmissions from wireless devices (figure 2, #212, 214) in a vicinity of the RF front end (#210). A base station (#208) coupled (#218) to the RF front end (#210). The base station (#208) receiving signals data from the received transmissions and an intelligent network access controller (INAC) (#452) comprising a non-transitory computer-readable storage medium having stored thereon, machine instructions (#528), and a processor (#526) that executes the machine instructions to control the RF front end (#210) to generate a private network (#464) encompassing a portion of an existing wireless network (#462). Receive an indication of wireless devices (#212, 214) within the portion, the indication including geographical positions of the wireless devices(#212, 214) within the portion (¶10, 18).
Establish identities for the wireless devices(#212, 214) , the identities selected from the group consisting of allowed, unknown, and restricted and direct allowed wireless devices (#212, 214) to register with the INAC (#452) to access the private network (#464) for wireless communications on the private network (#464, figure 7, ¶17, 23-34, 75-78). Lu, et al does not disclose a RF amplifier. A RF amplifier is very well known, over 50 years old, commercially available and basically in every radio equipment. The Examiner takes Official Notice as such. Hence, it would have been obvious before the effective filing date of the claimed invention to a person having below ordinary skill in the art to which the claimed invention pertains to incorporate such a very well known, over 50 years old, commercially available and basically in every radio equipment to have at least one RF amplifier in the system for controlling access to wireless communications Lu, et al in order to amplify transmitting signals.
Regarding claim 11, note figure 64, #450.
Regarding claim 14, note figure 6B, #256, 352.
Regarding claim 15, note 4A, #328, 302.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,937,083. Although the claims at issue are not identical, they are not patentably distinct from each other because It is clear that all the elements of the application claims are to be found in patent claims (as the application claims fully encompasses patent claims). The difference between the application claims and the patent claims lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus, the invention of claims of the patent is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims are anticipated by claims of the patent, it is not patentably distinct from claims of the patent.
CURRENT APPLICATION
1. An intelligent network access controller (INAC), comprising: a non-transitory, computer-readable storage medium comprising machine instructions; and a processor that executes the machine instructions to control radiofrequency (RF) equipment coupled to the processor to: establish an overlay to a portion of an existing wireless communications network, the overlay having a defined, corresponding boundary, generate a private network in the overlay, provide access to the private network for a first class of wireless devices located in the defined, corresponding boundary, and prevent access to the private network for a second class of wireless devices located in the defined, corresponding boundary.
U.S. Patent No. 11,937,083
1. A method executed by a processor of an Intelligent Network Access Controller (INAC) for controlling access to wireless communications in an existing wireless communications network, comprising the processor: generating an overlay to a portion of the existing wireless communications network, comprising the processor controlling radio frequency (RF) equipment of the existing wireless communications network to establish a defined geographical area and a corresponding area boundary as the overlay; receiving an indication of wireless devices within the area boundary, the indication including positions of the wireless devices within the area boundary; establishing identities for the wireless devices having indicated positions within the area boundary, the identities selected from a group consisting of allowed, unknown, and restricted based on established identities and indicated positions for the wireless devices within the area boundary; generating a private network encompassing the area boundary; for wireless devices having established identities of one of unknown and restricted, locking and maintaining locked the unknown and restricted wireless devices, while within the area boundary, to the processor, wherein the locking prevents wireless communication access by the unknown and restricted wireless devices to the private network; and directing allowed wireless devices within the area boundary to access the private network for wireless communications within the area boundary.
It is inherent that the processor must also attached to a non-transitory, computer-readable storage medium comprising machine instructions in order the processor to operate.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 8,254,886. Although the claims at issue are not identical, they are not patentably distinct from each other because It is clear that all the elements of the application claims are to be found in patent claims (as the application claims fully encompasses patent claims). The difference between the application claims and the patent claims lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus, the invention of claims of the patent is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims are anticipated by claims of the patent, it is not patentably distinct from claims of the patent.
CURRENT APPLICATION
16. A method for controlling access to wireless communications, comprising a processor: generating an overlay to a portion of an existing wireless network, comprising the processor controlling radio frequency (RF) equipment to establish a defined geographical area and a corresponding boundary as the overlay; receiving an indication of wireless devices within the boundary, the indication including geographical positions of the wireless devices within the boundary; establishing identities for the wireless devices, the identities selected from the group consisting of allowed, unknown, and restricted; generating a private network encompassing at least a portion of the overlay; locking and maintaining locked unknown and restricted wireless devices to the processor; and directing allowed wireless devices to access the private network for wireless communications within the portion.
U.S. Patent No. 8,254,886
1. An intelligent network access controller (INAC), tangibly embodying a program of instructions readable by the INAC to perform steps of a process that creates a local wireless network and that dynamically controls access by wireless devices to a macro wireless network overlaying or underlying the local wireless network, the steps, comprising: registering the wireless devices, wherein the devices are identified and classified, and wherein the devices comprise one of allowed, restricted, and unknown; dynamically determining characteristic values of the devices; dynamically granting access by the devices to the macro network based on the dynamically determined characteristics of the devices; and locking devices to the local wireless network based on the dynamically determined characteristics.
2. The INAC of claim 1, wherein registering comprises identifying the devices based on one or more of phone number, subscription information, and equipment identification number.
Applicants MUST either traverse the nonstatutory double patenting rejection or file a terminal disclaimer. The requirement for terminal disclaimer will NOT be held in abeyance.
eTerminal Disclaimer
The United States Patent and Trademark Office is pleased to announce the release of eTerminal Disclaimer in EFS-Web. The new eTerminal Disclaimer provides applicants with many advantages and promotes greater efficiency in the patent examination process. This web-based eTerminal Disclaimer can be filled out completely online through web-screens and no EFS-Web fillable forms are required. eTerminal Disclaimers are auto-processed and approved immediately upon submission if the request meets all of the requirements.
Fees must be paid immediately which will then provide users more financial flexibility. A paper terminal disclaimer filing requires a fee but does not guarantee a terminal disclaimer approval. Each eTerminal Disclaimer filed requires a single terminal disclaimer fee, but can include up to 50 “reference applications” and 50 “prior patents.”
For assistance with filing an eTerminal Disclaimer, or to suggest improvements, please call the Patent Electronic Business Center at 866-217-9197 (toll free) or send an email to EBC@uspto.gov.
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claims 12 is 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
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/ Primary Examiner, Art Unit 2645
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