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 .
Acknowledgment
The Preliminary Amendment filed on 12/17/2024 has been received and placed of record. Accordingly, claims 20-21 have been cancelled and claims 1-19 and 22 are pending in the instant application.
Claim Objections
Claim 15 is objected to because of the following informalities:
The recitations of “compensation filter” recited at line 4 (two occurrences) are suggested to change to -- compensation filter circuit --.
Appropriate correction is required.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. 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 Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-19 and 22 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5, 8-11, 13-19 of U.S. Patent No. 12,015,451. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-5, 8-11, 13-19 of U.S. Patent No. 12,015,451 cover and encompass the limitations of claims 1-19 and 22 of the instant application. Moreover, because omission element(s) in the claims would make the claims in the instant application broader, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the claim(s) in the U.S. Patent No. 12,015,451 to as now recited in the instant application since it is just merely an obvious variation of the claims. Furthermore, it is well settled that omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 163 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 184 (CCPA 1969).
Regarding claims 1-5 of the instant application, claims 1-5 of the U.S. Patent No. 12,015,451 covers and encompasses, respectively, all subject matter claimed.
Regarding claims 6-7 of the instant application, claim 2 of the U.S. Patent No. 12,015,451 covers and encompasses all subject matter claimed.
Regarding claims 8-11 of the instant application, claims 8-11 of the U.S. Patent No. 12,015,451 covers and encompasses, respectively, all subject matter claimed.
Regarding claim 12 of the instant application, claim 10 of the U.S. Patent No. 12,015,451 covers and encompasses all subject matter claimed.
Regarding claims 13-19 of the instant application, claims 13-19 of the U.S. Patent No. 12,015,451 covers and encompasses all subject matter claimed.
Regarding claim 22 of the instant application, claim 16 of the U.S. Patent No. 12,015,451 covers and encompasses all subject matter claimed.
In light of the foregoing discussion, the broader claims 1-19 and 22 of the instant application are rejected as obvious double patenting over the narrower claims 1-5, 8-11, 13-19 of U.S. Patent No. 12,015,451.
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kao (US 2019/0052303) in view of Tang et al (US 2011/0279736) or Park et al (US 2007/0015479).
Regarding independent claim 1, Kao teaches a transceiver system (fig. 1) comprising: a transmitter configured for transmitting transmit signals to a transmit interface (110); a transmit filter configured for filtering the transmit signals (112-I and 112-Q); a receiver configured for receiving receive signals from a receive interface (120); a receive filter configured for filtering the receive signals (122-I and 122-Q); a switching circuit configured for selectively switching between the receive interface and the transmit interface (130); and a calibration controller in communication with the switching circuit and configured to run a receive calibration mode configured to calibrate the receive signals and a transmit calibration mode configured to calibrate the transmit signals (140, 150-T, 150-R). see also [0016]-[0018]. Kao fails to teach the transmit and receiver filters being of image compensation filters. However, image compensation filters are notoriously well-known in the art of digital communications. For example, Tang or Park, from the same field of endeavor, teaches image compensation filters for filtering transmit and receive signals. See Tang: claims 1, 5 and 18 or Park: [0009]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kao by employing the teachings as taught by Tang or Park in order to arrive at the claimed invention.
Regarding independent claims 9 and 13, the claims recite similar subject matter to claim 1. Therefore, similar rationale is applied as for claim 1.
Allowable Subject Matter
Claims 2-8, 10-12, 14-19 and 22 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
Examiner's note: Examiner has cited particular columns and line numbers in the references as 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 the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. References Hoole (US 5,864,543), Kim et al (US 2005/0095993), Cole et al (US 2007/0298733) and Sharma et al (US 2018/0131453) are cited because they are pertinent to the method and apparatus for calibrating transceiver.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON NGUYEN VO whose telephone number is (571) 272-3018. The examiner can normally be reached on Monday to Friday from 9:00 to 6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kenneth N Vanderpuye, can be reached on 571-272-3078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DON N VO/Primary Examiner, Art Unit 2634
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