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 .
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 12009951. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application and the U.S. Patent recite similar limitations, i.e. claim 1 of both current application and the U.S. Patent recite “a transmitter”, “an out-of-band electrical interface” and “an engine” configured the similar operations.
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, 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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tajima et al. (US 20190238250) in view of Soh et al. (US 11343088).
As to claim 1, Tajima et al.’s figure 2 shows a first host device (SITE X) governing operation of an optical module (1, 2 or 5), the first host device comprising: a transmitter (13 in figure 3) configured to transmit in-band signals on an in-band electrical interface from the first host device to the optical module, wherein the first host device communicates with a second host device (SITE Y) over an optical medium via the optical module, wherein the communication with the second host device includes transmission by the optical module of optical signals to the second host device, and wherein the optical signals are generated based on the in-band signals from the second host device. The figure fails to show an out-of-band electrical interface. However, Soh et al.’s figure 1 shows a similar device that first host device (102) and second host device (104) communicate with each other via optical channel 126 and classical channel 132, wherein authentication data 130 is confirmed by way of transmission over the classical channel 132 (col. 11, lines 5-10). Therefore, it would have been obvious to one having ordinary skill in the art to further includes an out-of-band interfaces, for performing the ID authentication steps shown in Tajima et al.’s figure 8, in the first and second host devices for the purpose of providing more precise communication. Therefore, the modified Tajima et al.’s figure further shows an out-of-band electrical interface (¶0117 teaches that a wavelength band for transmitting a data signal and a wavelength band for transmitting a control signal are separated from each other) configured to transmit first out-of-band messages (ID authentication message) from the first host device to the optical module, and receive second out-of-band messages from the optical module; and an engine (Controller 16 in figure 3) configured to i) to transmit via the transmitter one of the in-band signals on the in-band electrical interface to the optical module, ii) to receive feedback from the optical module via the out-of-band electrical interface, the feedback being based on the one of the in-band signals, and iii) to tune the transmitter of the first host device based on the feedback (figures 4, 8 and 9 ).
As to claim 2, selecting at least one of the in-band signals to be at 50 gigabits per second is seen as an obvious design preference to ensure optimum performance, MPEP 2144.05. The modified figures further show that the out-of-band electrical interface is reliable for communication of management messages between the first host device and the optical module.
As to claim 3, the modified Tajima et al.’s figures show that the first host device controls the out-of-band electrical interface.
Allowable Subject Matter
Claims 4-17 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.
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/QUAN TRA/
Primary Examiner
Art Unit 2842