DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The applicant is requested to update the status of related applications on page 1 of the specification.
Claim Interpretation
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a synchronization unit, a secondary scrambling unit, and a transmit unit in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 3, 11, and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fukuta et al (2008/0107086) in view of Akita et al (2008/0285433).
Regarding claims 1 and 11, Fukuta discloses a method and a transmitter (see figure 10), comprising: a synchronization unit configured to provide a primary synchronization signal and a secondary synchronization signal (see P-SCH and S-SCH in figure 10); a secondary scrambling unit configured to provide a scrambled secondary synchronization signal wherein scrambling agents for the first and second segments are derived from a primary synchronization sequence of the primary synchronization signal (see scrambling in figure 10 and paragraph 0018); and a transmit unit configured to transmit the primary synchronization signal and the scrambled secondary synchronization signal (see transmitter 1025 in figure 10). Fukuta doesn't specifically disclose the secondary synchronization signal having first and second segments. However, Akita discloses this feature (see S-SCH1 (first segment) and S-SCH2 (second segment) in figure 11 and paragraphs 0019-0020). The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
Regarding claims 3 and 13, Akita discloses the primary synchronization sequence is derived from an M-sequence (see M-sequence in paragraph 0024).
Claims 2 and 12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fukuta in view of Akita as applied to claims 1 and 11 above, and further in view of Saily et al (2011/0077015).
Regarding claims 2 and 12, Fukuta doesn't specifically disclose the primary synchronization sequence is a length-31 sequence. However, this feature is well known in the art. Saily discloses this feature (see length-31 binary sequences in paragraph 0063). The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
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.
Claims 1-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of prior U.S. Patent No. 8,054,823. This is a statutory double patenting rejection.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 11-19 of U.S. Patent No. 12,425,989. Although the claims at issue are not identical, they are not patentably distinct from each other because the two sets of claims have substantially the same limitations except that independent claims 1 and 11 do not include the limitations of claims 4 and 14 of 12,425,989. Broadening independent claims 1 and 11 are obvious in view of the independent claims 1 and 11 of 12,425,989.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,341,969. Although the claims at issue are not identical, they are not patentably distinct from each other because the two sets of claims have substantially the same limitations except that this application claims a method and a transmitter for performing the method while patent No. 10,341,969 claims a receiver that is located at the other end of the communication with the transmitter. Claims 1-20 are, therefore, obvious in view of 10,341,969.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9,730,171. Although the claims at issue are not identical, they are not patentably distinct from each other because the two sets of claims have substantially the same limitations except that this application claims a method and a transmitter for performing the method while patent No. 9,730,171 claims a receiver and its corresponding method that is located at the other end of the communication with the transmitter. Claims 1-20 are, therefore, obvious in view of 9,730,171.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 29-38 of U.S. Patent No. 9,332,515. Although the claims at issue are not identical, they are not patentably distinct from each other because the two sets of claims have substantially the same limitations except that this application claims a method and a transmitter for performing the method while patent No. 9,332,515 claims a receiver and its corresponding method that is located at the other end of the communication with the transmitter. In addition, claims 1-20 of this application are broaden by eliminating the handover features claimed in 9,332,515. Claims 1-20 are, therefore, obvious in view of 9,332,515.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 27-36 of U.S. Patent No. 9,155,056. Although the claims at issue are not identical, they are not patentably distinct from each other because the two sets of claims have substantially the same limitations except that this application claims a method and a transmitter for performing the method while patent No. 9,155,056 claims a receiver and its corresponding method that is located at the other end of the communication with the transmitter. In addition, claims 1-20 of this application are broaden by eliminating the handover features claimed in 9,155,056. Claims 1-20 are, therefore, obvious in view of 9,155,056.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 27-37, and 53 of U.S. Patent No. 8,830,984. Although the claims at issue are not identical, they are not patentably distinct from each other because the two sets of claims have substantially the same limitations except that this application claims a method and a transmitter for performing the method while patent No. 8,830,984 claims a receiver and its corresponding method that is located at the other end of the communication with the transmitter. Claims 1-20 are, therefore, obvious in view of 8,830,984.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 8,175,077. Although the claims at issue are not identical, they are not patentably distinct from each other because the two sets of claims have substantially the same limitations except that “at least one scrambling agent” is replaced by “scrambling agents”. Claims 1-20 are, therefore, obvious in view of 8,175,077.
Allowable Subject Matter
Claims 4-10 and 14-20 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 and to overcome the double patenting rejections.
Conclusion
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/BRIAN D NGUYEN/Primary Examiner, Art Unit 2475
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