CTNF 18/825,406 CTNF 74535 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. 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. 08-35 Claim s 1 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 20 of copending Application No. 19/050,333 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because 1 and 20 of copending Application No. 19/050,333 encompasses the limitations of claims 1 and 15 of instant application. Moreover, omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art. It is well settled that the omission of an element and its functions is an obvious expedient if the remaining elements performs the same function as before In re Karlson, 163 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969) . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 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. 07-21-aia AIA Claim s 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over QI et al PG PUB 2021/0153273 in view of HUANG et al PG PUB 2023/0319887 . Re Claims 1, 13 and 15, QI et al teaches in figure 3, a device A act as Wi-FI Aware device (a communication device; non-transitory CRM) configured to communicate a Wi-FI Aware compliant frame [0039]. QI et al fails to explicitly teach “the frame…includes first indication information indicating whether…apparatus supports an IEEE 802.11be standard.”. However, HUANG teaches a trigger frame flag subfield (a first indication) indicating whether IEEE 802.11be standard is supported by the device [0074]. By combining the teachings, the Wi-Fi compliant frame can be modified to include the trigger frame flag subfield to indicate the support for IEEE 802.11be for interoperability. One skilled in the art would have been motivated to have included the trigger frame in Qi et al for interoperability. Therefore, it would have been obvious to one skilled to have combined the teachings. Re Claims 2, 14, HUANG teaches the trigger frame includes a UL BW subfield (a second indication) indicating a specific frequency bandwidth exceeding 160 MHz or 320 MHz [0074]. Re Claims 3, 4, QI et al teaches the operation information attribute in the frame [0041] wherein in view of HUANG can include the trigger frame flag subfield (the first indication; a first attribute) and the UL BW subfield (the second indication; a second attribute). Re Claim 5, HUANG can include the trigger frame flag subfield (the first indication) indicating device capability attribute for supporting IEEE 802.11be, Re Claims 6-8, HUANG can the UL BW subfield (the second indication) indicating a specific frequency bandwidth exceeding 160 MHz or 320 MHz [0074] as defined by an IEEE 802.11 standard series. Re Claims 9-12, QI et al teaches the NAN action frame defined by WiFI aware [0040] such as NAN discovery frame, NAN discovery/synchronization beacon defined by WI-FI Aware [0057]. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW LEE whose telephone number is (571)272-3130. The examiner can normally be reached Monday-Friday 8:30AM-5PM 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, KASSIM KHALAD can be reached at 57127 03770 . 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. /ANDREW LEE/Primary Examiner, Art Unit 2475 Application/Control Number: 18/825,406 Page 2 Art Unit: 2475 Application/Control Number: 18/825,406 Page 3 Art Unit: 2475 Application/Control Number: 18/825,406 Page 4 Art Unit: 2475 Application/Control Number: 18/825,406 Page 5 Art Unit: 2475 Application/Control Number: 18/825,406 Page 6 Art Unit: 2475
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