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 .
Continued Examination Under 37 CFR 1.114
This application is a continuation of application 17/369,692, now U.S. Patent No. 12,191,575.
Claim Objections
Applicant is advised that should claim 30 be found allowable, claim 31 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 21-27 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-6 and 8 of prior U.S. Patent No. 12,191,575. This is a statutory double patenting rejection.
The subject matter of system claims 21-27 is the same as that of U.S. Patent No. 12,191,575 (‘575) system claims 1-6 and 8, respectively. The only differences between the instant claims and the ‘575 claims are:
(1) the language of the “wherein” clause at the end of ‘575 claim 1 has been incorporated in the “power amplifier” and “delay line” clauses of instant claim 21;
(2) the intended use language “for improving angular coverage” in the preamble of ‘575 claim 1 has been removed; and
(3) instant claims 24 and 26 recite “substantially equal to a line impedance”, while ‘575 claims 4 and 6 recites “equal or close to a line impedance”.
Examiner notes that the preamble language “for improving angular coverage” comprises only an intended use. It does not recite limitations of the claim and is not ‘necessary to give life, meaning, and vitality’ to the claim (see MPEP 2111.02).
The differences (1)-(3) do not provide a patentable distinction between the claims. The same subject matter is therefore recited in instant claims 21-27 and ‘575 claims 1-6 and 8.
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 33-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 8 of U.S. Patent No. 12,191,575 (‘575). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The steps of method claim 33-37 are either inherent to or obvious in view of ‘575 system claims 1, 3, 4, 8, and 2, respectively.
Claims 33 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,191,575 (‘575). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 33 is anticipated by claim 11 of ‘575. Examiner notes that the differences between claim 33 and ‘575 claim 11 include:
(1) the subject matter of the “wherein” clause at the end of ‘575 claim 9, on which ‘575 claim 11 depends, has been incorporated in the “coupling-in” clause of instant claim 33; and
(2) the language “and terminate the reflection signal” at the end of the “reflecting” clause in claim 33 (“reflecting, by a delay line coupled to the second end of the transmission line, a portion of the input signal into the transmission line to provide a reflection signal during the second operating period, wherein during the second operating period the power amplifier is configured to switch off and terminate the reflection signal”) does not appear in ‘575 claim 11.
However, termination of the reflection signal when the amplifier is switched off is inherent to the ‘575 claim 11 element “providing, by the power amplifier, an output impedance equal or close to a line impedance of the transmission line”.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 30 and 31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 30 line 2 and claim 31 line 2, “the first power amplifier” lacks clear antecedent basis in the claim. There is no previous reference to a “first” power amplifier.
Allowable Subject Matter
Claims 28, 29, and 32 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.
Claims 30 and 31 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. However, as noted above, Applicant is advised that should claim 30 be found allowable, claim 31 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. See MPEP § 608.01(m).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASSI J GALT whose telephone number is (571)270-1469. The examiner can normally be reached Monday-Friday, 9AM - 5PM EST.
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/CASSI J GALT/Primary Examiner, Art Unit 3648
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