DETAILED ACTION
This Office Action is in response to the Amendment filed 8/14/2025. Previous claim 1 has been canceled. New claims 2-20 have been added.
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
Newly submitted claims 13-20 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Originally presented claim 1 was directed towards a controller controlling channel assignment or connection assignment among a network station or access point. New claims 13-20 are directed towards a mobile phone transmitting wireless traffic on channels in accordance with received channel assignments. The newly claimed mobile phone is a distinct invention from the previous claimed controller.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 13-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 2-6 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 10-11 of U.S. Patent No. US 11,968,564 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons set forth below.
Regarding claim 2 of the application, claim 1 of the patent is directed towards a small cell base station comprising all of the components and performing all of the functions of the small cell base station of claim 2 of the application. Although the patented device includes additional functions, claim 2 of the application is merely a broader version of the patented claim. It has been held that such a broader claim is obvious in view of the patented claim.
Regarding claim 3 of the application, claim 1 of the patent is directed towards a small cell base station comprising all of the components and performing all of the functions of the small cell base station of claim 3 of the application. Thus, this claim is rejected for the same reasons as applied above to claim 2 of the application.
Regarding claim 4 of the application, claim 10 of the patent is directed towards a small cell base station comprising all of the components and performing all of the functions of the small cell base station of claim 4 of the application. Thus, this claim is rejected for the same reasons as applied above to claim 2 of the application.
Regarding claim 5 of the application, claim 11 of the patent is directed towards a small cell base station comprising all of the components and performing all of the functions of the small cell base station of claim 5 of the application. Thus, this claim is rejected for the same reasons as applied above to claim 2 of the application.
Regarding claim6 of the application, claim 1 of the patent is directed towards a small cell base station comprising all of the components and performing all of the functions of the small cell base station of claim 6 of the application. Thus, this claim is rejected for the same reasons as applied above to claim 2 of the application.
Regarding claim 8 of the application, claim 8 of the patent is directed towards a small cell base station comprising all of the components and performing all of the functions of the small cell base station of claim 8 of the application. Thus, this claim is rejected for the same reasons as applied above to claim 2 of the application.
Allowable Subject Matter
Claims 7 and 9-12 are 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Jason E Mattis whose telephone number is (571)272-3154. The examiner can normally be reached M-F 7:00am-4:30pm.
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, Huy Vu can be reached at 571-2723155. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON E MATTIS/Primary Examiner, Art Unit 2461
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