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 .
Claim Objections
Claims 1 and 12 (first instance) are objected to because of the following informalities: The instant claims include markings for an original claim set, where claim 12 is further an additional number. However, the intent is clear, as the markings appear to represent changes made to the claims of the parent application that were to be changed for the instant filing, with the markings being inadvertently included. Further, it was clear that the intention was to remove the initial claim 12, where if the markings were all adhered to, the claim set would be proper (including removal of the first claim 12, which would result in a proper claim numbering). Applicant should submit a new claim set with appropriate markings (e.g. a clean form of the instant claim language with each claim indicated as being original). Appropriate correction is required.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,132,810. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully within the scope of the claims of ‘810. For example, with regard to claims 1, 5, and 9, each of the instant claims are within the scope of claims 1, 6, and 10 of ‘810, where the instant claims are duplicates of the corresponding claims of ‘810 with certain language being omitted, such as “by counting pules on a serial clock signal and comparing the pulses to a complete frame,” as can be seen by the included markings of claim 1 of the instant application. As the instant claims are fully within the scope of the claims of ‘810, they are deemed to be an obvious variation.
Allowable Subject Matter
If the above rejections for obvious-type double patenting and objections were overcome, the instant claims would be found allowable for at least the same reasons as provided with regard to the parent application, 16/224,092 (issued as 12,132,810). Further, an additional search has been performed, where the additional art and reasons are applicable.
US 2011/0320853 (Maruko) is now considered to be the closest prior art of record. In Maruko, two set of components are provided, one for SPI and one for I2C. When an I2C signal is received, a reset signal is sent (Maruko: Figure 5), which serves to cancel the clk and Data signals to the SPI circuitry, thus serving to disable the functioning of the SPI circuitry (Maruko: Paragraph [0083]). However, in Maruko, the triggering of the reset signal and clearing of the reset signal is entirely based on the detection of the I2C signal by a component connected via, but separate from, the SPI circuitry. Further, the reset signal is not sent to either set of components, but instead is sent to DFF 103, which is separate from either set of components, which only serves to modify the inputs to the component (Maruko: Figure 5).
Thus, while a modification may be possible to combine the additional components, including Communication Status Detector 106 and DFF 103 with the SPI circuitry of Maruko, thus resulting in the claimed second set of components that sends a reset signal, such detection would be based on the second set of components detecting the I2C signal (while in the instant claim it would detect the SPI signal) and sending the reset signal to itself (as opposed to the first set of components that would receive the I2C signal).
While Maruko and the instant claims produce the same result, the receipt in the system of both I2C and SPI signals, recognition of one or the other set of signals, and the processing of the detected set of signals, the instant claims and Maruko provide distinctly different ways of producing this result, where modifying Maruko to perform the functionality in the same manner as provided in the instant claim would require modifications that are not fairly taught or suggested in the prior art of record to achieve questionable benefit (as the claimed invention would require additional logic and components that are not required by Maruko to achieve a similar effect). Accordingly, Maruko does not fairly teach or suggest the claimed invention, as a whole, as provided in claims 1, 5, and 9, as the two set of components (e.g. Maruko Figure 5, 101 and 102) do not both detect their corresponding protocol and send a reset signal to the other set of components responsive to detecting their corresponding protocol.
US 2015/0363353 (Enami) also provides for separate I2C and SPI components (Enami: Figure 2), but provides a more centrally controlled enabling and disabling of the circuits, where the components, themselves, do not actually perform any detection or sending of a reset or other disabling signal (Enami: Paragraph [0068]).
US 2013/0100825 (Bancel) shows a more typical protocol detection scheme (not specific to I2C or SPI), where a specific module is provided for such detection of all supported protocols, where signals are sent from that module to activate and deactivate the different modules corresponding to undetected protocols (Bancel: Paragraph [0034]), where such central detection and control of the circuits based on detected protocols/signals would be the most typical way of supporting multiple protocols. As a note, this general logic is similar to that of Enami and is closer to the logic of Maruko than to the instant claims, as all of these references are providing a single entity to detect the protocol and control the different components based on the detection, while the instant claim has each set of components that only support their one corresponding protocol individually detecting their protocol, then using their own functionality to reset/disable the other components.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT B CHRISTENSEN whose telephone number is (571)270-1144. The examiner can normally be reached Monday through Friday, 6AM to 2PM.
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SCOTT B. CHRISTENSEN
Examiner
Art Unit 2444
/SCOTT B CHRISTENSEN/ Primary Examiner, Art Unit 2444