CTNF 18/791,342 CTNF 74959 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Information Disclosure Statement The information disclosure statement (IDS) submitted on 07/31/2024 an 03/12/2025 in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Claim Objections 07-29-01 AIA Claim s 8-14 are objected to because of the following informalities: the limitations “ derotating the distortion compensated signals; and converting the distortion compensated signals to analog signals ” in claim 8, lines 5-6, should be changed to “ derotating the distortion compensated signals to provide derotated distortion compensated signals; and converting the derotated distortion compensated signals to analog signals ” to make it clear which signals are converted . Appropriate correction is required. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15 AIA Claim (s) 1, 2 and 6 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Perlow (WO 00/49710 A1) . Regarding claim 1, Perlow (figures 2 and 3) discloses an apparatus (160), comprising: a a filter (220) configured to provide roll off compensation in a baseband frequency using first coefficients (page 7, lines 6-23 and page 9, lines 15-18), wherein the compensation circuit is configured to convert a first digital signal to a second digital signal so that the second digital signal can be filtered by the filter using the first coefficients (page 6, line 10 – page 7, line 5); and a digital to analog conversion circuit comprising a digital input configured to receive a filtered signal from the filter or a first version of the filtered signal and provide an analog signal at an analog output (digital to analog conversion circuit (DAC) from the output of the Image Rejector and DAC Compensator 250; page 9, lines 10-14). Regarding claim 2, Perlow discloses a mixing circuit disposed between the filter and the digital to analog conversion circuit and configured to up convert the filtered signal or a second version of the filtered signal and provide the first version of the filtered signal to the digital input as an up converted signal at a higher frequency than the baseband frequency (Quadrature Modulator 240; page 8, line 14 – page 9, line 14). Regarding claim 6, Perlow discloses wherein the compensation circuit further comprises a rotation circuit (210) configured to receive the first digital signal and provide the second digital signal (page 6, line 10 – page 7, line 5) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Perlow in view of Johnson et al. (US 5,909,463) . Regarding claim 3, Perlow discloses the apparatus of claim 2 above. In addition, Perlow discloses wherein the apparatus is part of a direct transmitter. Perlow does not explicitly disclose wherein the transmitter provided in a single chip device. However, Johnson et al. (figure 2) dislcose a transmitter provided in a single chip device (integrated circuit) (column 5, lines 16-29). Therefore, it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to adapt teaching of the transmitter in a single chip device of Johnson et al. to the apparatus of Perlow for compact design . 07-21-aia AIA Claim (s) 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Perlow in view of Garg et al. (US 6,535,073 B1) . Regarding claim 4, Perlow discloses the apparatus of claim 1 above. Perlow does not explicitly disclose wherein the filter comprises less than 32 tap coefficients. However, a filter comprising less than 32 tap coefficients in an apparatus or transmitter is well known in the art as taught by Garg et al. (figure 2; column 5, lines 1-6). Therefore, it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to adapt the filter comprises less than 32 tap coefficients of Garg et al. to the apparatus of Perlow as a system design preference for serving the same function as filtering the digital signal. Regarding claim 5, Perlow and Garg et al. disclose the apparatus of claim 4 above. In addition, Perlow discloses wherein the first coefficients do not include imaginary values (page 7, lines 6-23 and page 9, lines 15-18) . Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-5 and 8-20 of U.S. Patent No. 12,063,608 . Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-5 and 8-20 of U.S. Patent No. 12,063,608 anticipate claims 1-20 of the present application . Regarding claim 1 of the present application, claim 1 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including an apparatus, comprising: a filter configured to provide roll off compensation in a baseband frequency using first coefficients (real coefficients) wherein a first digital signal is converted to a second digital signal so that the second digital signal can be filtered by the filter using the first coefficients; and a digital to analog conversion circuit comprising a digital input configured to receive a filtered signal from the filter or a first version of the filtered signal and provide an analog signal at an analog output. Regarding claim 2 of the present application, claim 2 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including a mixing circuit disposed between the filter and the digital to analog conversion circuit and configured to up convert the filtered signal or a second version of the filtered signal and provide the first version of the filtered signal to the digital input as an up converted signal at a higher frequency than the baseband frequency. Regarding claim 3 of the present application, claim 3 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the apparatus is part of a direct transmitter provided in a single chip device. Regarding claim 4 of the present application, claim 4 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the filter comprises less than 32 tap coefficients. Regarding claim 5 of the present application, claim 5 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the first coefficients (real coefficients) do not include imaginary values and are real values. Regarding claim 6 of the present application, claim 1 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including a rotation circuit configured to receive the first digital signal and provide the second digital signal. Regarding claim 7 of the present application, claim 1 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including a derotation circuit configured to receive the filtered signal and provide the first version of the filtered signal. Regarding claim 8 of the present application, claim 8 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including a method comprising: upsampling and rotating digital signals having first-type values and second-type values to provide digital signals in a first domain; filtering the digital signals in the first domain to provide distortion compensated signals; derotating the distortion compensated signals; and converting the distortion compensated signals to analog signals. Regarding claim 9 of the present application, claim 9 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the distortion compensated signals are derotated to have first-type (real) and second-type (imaginary) components. Regarding claim 10 of the present application, claim 10 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including mixing the distortion compensated signals to be in a higher frequency range before converting. Regarding claim 11 of the present application, claim 11 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein filtering is performed by a FIR filter. Regarding claim 12 of the present application, claim 12 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein filtering is performed by an x/sin(x) filter at baseband. Regarding claim 13 of the present application, claim 13 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the digital signals comprise in phase signals and quadrature signals. Regarding claim 14 of the present application, claim 14 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the distortion compensated signals reduce a roll off characteristic of a digital to analog converter. Regarding claim 15 of the present application, claim 15 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including a transmitter, comprising: a rotator; a filter; a derotator, wherein the rotator is configured to receive a first-type (in-phase) digital signal and a second-type (quadrature) signal and provide a first rotated signal and a second rotated signal, wherein the filter is configured to receive the first rotated signal and the second rotated signal and provide a first filtered signal and a second filtered signal, the filter being configured to compensate for digital to analog conversion distortion, wherein the derotator is configured to receive the first filtered signal and the second filtered signal and provide a first derotated signal and a second derotated signal; a frequency converter configured to receive the first derotated signal and the second derotated signal and provide an up converted first-type signal and an up converted second-type signal; and a digital to analog converter configured to receive the up converted first-type signal and the up converted second-type signal and provide an analog signal at an analog output. Regarding claim 16 of the present application, claim 16 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the filter has a response for compensating for conversion roll off and is comprised of a first FIR filter and a second FIR filter. Regarding claim 17 of the present application, claim 17 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the filter is configured to have a response that compensates for digital to analog conversion distortion at baseband. Regarding claim 18 of the present application, claim 18 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the filter is x/sin(x) FIR filter. Regarding claim 19 of the present application, claim 19 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the filter has 32 or less coefficients. Regarding claim 20 of the present application, claim 20 of U.S. Patent No. 12,063,608 encompasses all the claimed limitation including wherein the filter has 16 or less first coefficients . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mehmia et al. (US 9,374,067 B2) disclose a method and system for the design and implementation of an optimally factored interpolated finite impulse response (IFIR) filter to increase the implementation efficiency of the filter include joint sequencing of the filter stages, use of an nested IFIR filter, taming of a stage by relocation of that stage, fusing two or more stages together to form a single stage, and manual manipulation of a post-stage multiplier; IFIR filters using this approach may be realized as low pass filters or high pass filters, and in either analog or digital form. Lam (US 7,127,481 B1) teaches adaptive Finite Impulse Response (FIR) Filter control includes structure and steps for receiving an input signal, filtering the input signal with an FIR filter having a plurality of filter stages, and delaying application of the input signal to at least one of said filter stages with respect to the other filter stages to skip filtering a portion of the input signal. Dempsey et al. (US 7,068,193 B2) disclose an integrated digital calibration circuit and digital to analog converter includes a digital to analog converter (DAC) and a digital calibration circuit including a memory for storing predetermined end point coefficients of the digital to analog converter transfer function; and an arithmetic logic unit for applying the end point coefficients to the DAC input signal to adjust the end points of the DAC and/or analog signal chain. Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUOCHIEN B VUONG whose telephone number is (571)272-7902. The examiner can normally be reached 10:00-06:00PM M-F. 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, ANTHONY ADDY can be reached at 571-272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /QUOCHIEN B VUONG/Primary Examiner, Art Unit 2645 Application/Control Number: 18/791,342 Page 2 Art Unit: 2645 Application/Control Number: 18/791,342 Page 3 Art Unit: 2645 Application/Control Number: 18/791,342 Page 4 Art Unit: 2645 Application/Control Number: 18/791,342 Page 5 Art Unit: 2645 Application/Control Number: 18/791,342 Page 6 Art Unit: 2645 Application/Control Number: 18/791,342 Page 7 Art Unit: 2645 Application/Control Number: 18/791,342 Page 8 Art Unit: 2645 Application/Control Number: 18/791,342 Page 9 Art Unit: 2645 Application/Control Number: 18/791,342 Page 10 Art Unit: 2645 Application/Control Number: 18/791,342 Page 11 Art Unit: 2645
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