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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Claims 1 - 30 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 40 of U.S. Patent No. 12,095,646. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower claims of the issued patent anticipate the broader claims of the instant application.
In order to demonstrate the above, claim 1 of the instant application (in plain text) will be mapped to claims of the issued patent (in bold text).
1. A control plane (CP) device configured to be used in a virtual broadband network gateway (vBNG) system in which a CP and a user plane (UP) are separated, comprising (A control plane (CP) device in communication system in which a CP and a user plane (UP) are separated, comprising, claim 1):
at least one processor (at least one processor, claim 1);
one or more memories coupled to the at least one processor and storing programming instructions, wherein the at least one processor is configured to execute the programming instructions to cause the CP device to (one or more memories coupled to the at least one processor and storing programming instructions, wherein the at least one processor is configured to execute the programming instructions to cause the CP device to, claim 1):
generate a first message, wherein the first message comprises route information (generate a first message, wherein the first message comprises route information, claim 1); and
send the first message to a UP device in the vBNG system, the first message indicates the UP device to update the route information (send the first message to a UP device in the communication system, the first message configured to indicate the UP device to update the route information, claim 1),
wherein the first message is an install message or a remove message, the install message indicates the UP device to install the route information, and the remove message indicates the UP to remove the route information (wherein the first message further comprises a control indication, the control indication comprises at least one of an install indication or a remove indication, the install indication indicates the UP device to install the route information, and the remove indication indicates the UP to remove the route information, claim 4).
The remaining dependent claims would be rejected in a substantially similar manner. The dependent claims, both sets of claims are directed to the transmission of route control information in a communication system. The claims of the issued patent contain all limitations, albeit in different combinations, of the instant application claims and thus anticipate and render obvious all claims and subgroups.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER G SOLINSKY whose telephone number is (571)270-7216. The examiner can normally be reached M - Th, 6:30 A - 5:00 P.
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PETER G. SOLINSKY
Examiner
Art Unit 2463
/Peter G Solinsky/Primary Examiner, Art Unit 2463
Prosecution Insights