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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 2, 2024 has been considered by the examiner. An initialed copy of the IDS is included with this Office Action.
Specification
The disclosure is objected to because of the following informalities:
in paragraph [0001], line 2, “(now U.S. Patent No. 12,088,293, issued September 10, 2024)” should be inserted after “2022,”; and
in paragraph [0001], line 3, “(now U.S. Patent No. 11,309,892), issued April 19, 2022,” should be “(now U.S. Patent No. 11,309,892, issued April 19, 2022),”.
Appropriate correction is required.
Claim Objections
The claims are objected to because of the following informalities:
in claims 3, 5, 7, 11, 12, 18 and 19, the examiner suggests deleting the extra spacing/gaps between the text (for example, in claim 3, line 1, the extra spaces between “wherein:” and “the high-speed” should be deleted);
in claim 1, the examiner suggests moving “a finite state machine…” on line 6 to line 7;
in claim 4, the examiner suggests moving “a second finite” on line 4 to line 5;
in claim 7, the examiner suggests moving “a first integrated circuit;” and “a second integrated circuit;” on line 1 to lines 2 and 3, respectively;
in claim 18, the examiner suggests moving “a signal conditioning circuit…” on line 5 to line 6; and
in claim 20, line 2, “highspeed” should be “high-speed.”
Appropriate correction is required
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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 1-22 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-22, respectively, of prior U.S. Patent No. 11,309,892 B2 (cited in the IDS of August 2, 2024). This is a statutory double patenting rejection.
Claims 1, 2, 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3 and 13 of U.S. Patent No. 12,088,293 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the present application is not patentably distinct from claim 2 of U.S. Patent No. 12,088,293 B2. Claim 2 of U.S. Patent No. 12,088,293 B2 discloses the limitations in claim 1 of the present application. However, claim 2 of U.S. Patent No. 12,088,293 B2 discloses that the finite state machine detects a first data rate or a second data rate (see claim 20, lines 18 and 21-22) whereas claim 1 of the present application does not recite that the finite state machine detects the second data rate. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to broaden the scope of the invention by omitting the detection of the second data rate by the finite state machine. The omission of a step or an element and its function is an obvious expedient if the function or feature of the element/step is not desired or required. (See MPEP 2144.04(II))
Similarly, claim 2 of the present application is not patentably distinct from claim 3 of U.S. Patent No. 12,088,293 B2.
Claims 12 and 13 are not patentably distinct from claim 13 of U.S. Patent No. 12,088,293 B2. Claim 13 of U.S. Patent No. 12,088,293 B2 discloses the limitations in claims 12 and 13 of the present application. Although claim 13 of U.S. Patent No. 12,088,293 B2 does not specifically recite “a first data rate” and “a second data rate” as recited in the claims 12 and 13 of the present application, it is implicit that the “high-speed data rate” in claim 13 of U.S. Patent No. 12,088,293 B2 corresponds to “a first data rate” in the claims of the present application since the “high-speed data rate” and the “first data rate” relate to operating signal conditioner circuitry for boosting data (see column 21, lines 37-39 and 45-46 of U.S. Patent No. 12,088,293 B2 and claim 12, lines 4-5 and claim 13, line 1 of the present application). Furthermore, it is implicit that “low-speed data rate or full-speed data rate” in claim 13 of U.S. Patent No. 12,088,293 B2 corresponds to “a second data rate” in the claims of the present application since the “low-speed data rate or full-speed data rate” and the “second data rate” relate to operating level shifter circuitry for boosting data (see column 21, lines 37, 39-41 and 47-49 of U.S. Patent No. 12,088,293 B2 and claim 12, lines 5-7 and claim 13, line 2 of the present application).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Betsy Deppe whose telephone number is 571-272-3054. The examiner can normally be reached Monday, Wednesday and Thursday, 7:00 am - 3:00 pm (ET).
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, Sam Ahn, can be reached on 571-272-3044. 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. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BETSY DEPPE/Primary Examiner, Art Unit 2633