Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 §§ 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of US 12160681. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1, i.e., the entire scope of the patent claim 1 falls within the scope of claim 1 of the application.
Regarding claim 1, claim 1 of the U.S. Patent No 12160681 teaches A video transmitting apparatus comprising: wireless communication circuitry configured to communicate with a display apparatus, the wireless communication circuitry being configured to transmit, while the wireless communication is connected to the display apparatus after a new connection is established with the display apparatus, a first request message and a second request message to the display apparatus; audio/video signal generation circuitry configured to generate an audio/video signal stream; a memory; and control circuitry configured to: transmit a first request messages to the display apparatus together with a first number via the wireless communication circuitry, the first request message together with a first number; receive capability information relating to the display apparatus from the display apparatus via the wireless communication circuitry; store the received capability information relating to the display apparatus in the memory; determine at least one parameter relating to the audio/video signal stream based on the received capability information relating to the display apparatus; cause the audio/video signal generation circuitry to generate the audio/video signal stream based on the determined at least one parameter relating to the audio/video signal stream; transmit the generated audio/video signal stream to the display apparatus via the wireless communication circuitry; and when a predetermined condition is met, transmit a second request message, to the display apparatus via the wireless communication circuitry, the second request message together with a second number, which is different from the first number, via the wireless communication circuitry, wherein one of the first number transmitted with the first request message to the display apparatus and the second number transmitted with the second request message to the display apparatus is generated by increasing the other of the first number and the second number by an arbitrary number. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12160681. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1, i.e., the entire scope of the patent claim.
Conclusion
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/CHRISTINE A KURIEN/Examiner, Art Unit 2421
/NATHAN J FLYNN/Supervisory Patent Examiner, Art Unit 2421