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.
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Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12095139 in view of US 20200374980 (“Zimmerman” or “Z”).
Claim 1 of ‘139 teaches a system (line 1 of claim 1 as filed on 5/10/2024) comprising: an integrated roofing accessory (line 2) installed on a roof of a home (line 3), the integrated roofing accessory comprising: a roofing accessory (lines 4-11), at least one transceiver integrated into the roofing accessory for exchanging data with at least one backhaul network via electromagnetic communication signals according to at least one electromagnetic communication protocol (13-18), and at least one antenna integrated into the roofing accessory (lines 15-18), the at least one antenna being configured to emit, receive or emit and receive the electromagnetic communication signals with the at least one backhaul network (lines 15-18).
However, claim 1 fails to teach a customer access radio in communication with the at least one transceiver; wherein the customer access radio is configured to exchange the data with at least one client device using the electromagnetic communication signals according to the at least one electromagnetic communication protocol.
Nevertheless, Z teaches components 300 comprise wireless transceiver module 356 to enable communication of Z’s small cell device with a user client to allow the user’s client to communicate with the internet (0057-0084).
Thus, it would have been obvious to modify the device of claim 1 to provide a customer access radio in communication with the at least one transceiver; wherein the customer access radio is configured to exchange the data with at least one client device using the electromagnetic communication signals according to the at least one electromagnetic communication protocol.
The motive would have been to allow a user’s client to access the internet, or other services.
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) 21, 23, 24, 31, 33-34, 38-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20200374980 (“Zimmerman” or “Z”).
21: Z teaches a system comprising: an integrated roofing accessory (402G) installed on a roof of a home (402G is installed on the roof of an apartment home), the integrated roofing accessory comprising: a roofing accessory (402G is a roofing accessory since it is installed on a roof), at least one transceiver (356, 346 of fig 3A) integrated into the roofing accessory for exchanging data with at least one backhaul network via electromagnetic communication signals according to at least one electromagnetic communication protocol (as shown in fig 1), and at least one antenna (352A, B, C, N) integrated into the roofing accessory (as shown, the at least one antenna being configured to emit, receive or emit and receive the electromagnetic communication signals with the at least one backhaul network (as shown in fig 1); and a customer access radio in communication with the at least one transceiver (as shown in fig 1, 116 communicates with 402G); wherein the customer access radio is configured to exchange the data with at least one client device using the electromagnetic communication signals according to the at least one electromagnetic communication protocol (0057-0084).
31: Z teaches a method comprising: obtaining an integrated roofing accessory comprising: a roofing accessory, at least one transceiver integrated into the roofing accessory for exchanging data with at least one backhaul network via electromagnetic communication signals according to at least one electromagnetic communication protocol, and at least one antenna integrated into the roofing accessory, the at least one antenna being configured to emit, receive or emit and receive the electromagnetic communication signals with the at least one backhaul network; installing the integrated roofing accessory on a roof of a home; obtaining a customer access radio; wherein the customer access radio is configured to exchange the data with at least one client device using the electromagnetic communication signals according to the at least one electromagnetic communication protocol; and installing the customer access radio on a portion of the home and in communication with the at least one transceiver (the method inherent in the device of claim 21, as described above).
23, 33: Z teaches that the at least one transceiver-comprises a software-defined radio module (as shown in fig 3A).
24, 34: Z teaches that the integrated roofing accessory further comprises: a compartment (that of fig 3B), holding: the at least one transceiver (as shown in 3A, the at least one antenna (as shown in 3A); wherein a portion of the compartment comprises a roofing material (it’s shown on a roof of the apartment home); and a frame connected to the compartment and to the roof (the body of the device of fig 3B can be considered a frame connecting it to the roof).
28, 38: Z teaches that the customer access radio is further configured to cause, when executed, the electromagnetic communication network to communicate with at least one customer access radio enabled computing device (as shown in fig 1).
29, 39: Z teaches that the customer access radio enabled device comprises a WiFi communication module (as shown in fig 3A).
30, 40: Z teaches that the integrated roofing accessory comprises a data storage device (342) and a compute device (340); wherein the customer access radio is configured to cause, when executed, the integrated roofing accessory to form a distributed datacenter across the electromagnetic communication network (as shown in fig 1).
Allowable Subject Matter
Claim 22, 25-27, 32, 35, 36, 37 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRAHAM P SMITH whose telephone number is (571)270-1568. The examiner can normally be reached M-F 10am - 6pm.
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/GRAHAM P SMITH/Primary Examiner, Art Unit 2845