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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Claim 1 of the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of Malaki et al. U.S. Patent No. 9,961,168; over claim 1 of Malaki et al. U.S. Patent No. 10,582,019. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the rejection presented on the table
Pending Application 18/937,791
US Patent No. 9,961,168
1. A method to communicate network data associated with a network with a host device that does not include a network driver, the method comprising:
receiving a radio frequency signal with a module, the radio frequency signal including network data for a host device that does not include a network driver, the host device unable to communicate with the network without the network driver;
generating, with the module, baseband data that includes the network data;
adding, with the module, informational data to the baseband data to form host data, the informational data associated with one or more of the RF signal and the network; and
sending, with the module, the host data over an interface to the host device, the host data including the network data.
1. A method to communicate network data associated with a network with a host device that does not include a network driver, the host device unable to communicate with the network without the network driver, the method comprising:
receiving a radio frequency signal with a module, the radio frequency signal including network data for a host device that does not include a network driver, the host device unable to communicate with the network without the network driver;
processing, with the module, the radio frequency signal to generate baseband data that includes the network data;
removing from the baseband data overhead data that refers to a communication protocol associated with the network;
adding, with the module, informational data to the baseband data to form host data, the informational data associated with one or more of the RF signal and the network; and
sending, with the module, the host data over an interface to the host device using an Ethernet protocol, the host data including the network data.
Pending Application 18/937,791
US Patent Number 10,582,018
1. A method to communicate network data associated with a network with a host device that does not include a network driver, the method comprising:
receiving a radio frequency signal with a module, the radio frequency signal including network data for a host device that does not include a network driver, the host device unable to communicate with the network without the network driver;
generating, with the module, baseband data that includes the network data;
adding, with the module, informational data to the baseband data to form host data, the informational data associated with one or more of the RF signal and the network; and
sending, with the module, the host data over an interface to the host device, the host data including the network data.
1. A method to communicate network data associated with a network with a host device that does not include a network driver, the host device unable to communicate with the network without the network driver, the method comprising:
receiving a radio frequency signal with a module, the radio frequency signal including network data for a host device that does not include a network driver, the host device unable to communicate with the network without the network driver;
processing, with the module, the radio frequency signal to generate baseband data that includes the network data;
adding, with the module, informational data to the baseband data to form host data, the informational data associated with one or more of the radio frequency signal and the network; and
sending, with the module, the host data over an interface to the host device using an Ethernet protocol, the host data including the network data.
Claim 1 is provisionally rejected on the ground of nonstatutory –obviousness-type double patenting as being unpatentable over claim 1 of US Patent No. 9,961,168, hereinafter ‘168 in view of Akhter et al. (US 9,369,149), hereinafter Akhter.
As for claim 1, ‘168 teaches a method to communicate network data associated with a network with a host device that does not include a network driver (claim 1, preamble discloses a method), the method comprising:
receiving a radio frequency signal with a module, the radio frequency signal including network data for a host device that does not include a network driver, the host device unable to communicate with the network without the network driver (claim 1, stanza 1 teaches the same “receiving a radio frequency signal with a module, the radio frequency signal including network data for a host device that does not include a network driver, the host device unable to communicate with the network without the network driver”);
adding, with the module, informational data to the baseband data to form host data, the informational data associated with one or more of the RF signal and the network (claim 1, stanza 3 teaches the same “adding, with the module, informational data to the baseband data to form host data, the informational data associated with one or more of the radio frequency signal and the network”); and
sending, with the module, the host data over an interface to the host device, the host data including the network data (claim 1, stanza 4 teaches “sending, with the module, the host data over an interface to the host device using an Ethernet protocol, the host data including the network data”).
‘168 fails to teach
generating, with a module, baseband data that includes network data.
Akhter discloses
generating, with a module, baseband data that includes network data (Fig. 1A; col. 5, lines 46-56 describe radio frequency data is transmitted from remote radio units to a switch located in one of the plurality of baseband processing cards. Each of the remote radio units includes a processing control device for processing the radio frequency data received from a user and for compressing prior to transmitting the data to the baseband unit; col. 6, lines 12-21 describe the compressed data is transmitted directly to a switch of the baseband unit. The switch distributes the compressed data to one of the baseband processing cards. The computation processors of the baseband processing car is used to further process the received data and to decompress the data prior to distribution over a backhaul).
One of ordinary skill in the art before the effective filing date of the claimed invention would have recognized the ability to utilize the teachings of Akhter for generating radio frequency data. The teachings of Akhter, when implemented in the ‘168 system, will allow one of ordinary skill in the art to make data available to a communication network. One of ordinary skill in the art would be motivated to utilize the teachings of Akhter in the ‘198 system in order to process data received from radio units to baseband data prior to store the baseband data at storage or server cards.
Claim 1 is provisionally rejected on the ground of nonstatutory –obviousness-type double patenting as being unpatentable over claim 1 of US Patent No. 10,582,018
, hereinafter ‘018 in view of Akhter et al. (US 9,369,149), hereinafter Akhter.
As for claim 1, ‘018 teaches a method to communicate network data associated with a network with a host device that does not include a network driver (claim 1, preamble discloses a method), the method comprising:
receiving a radio frequency signal with a module, the radio frequency signal including network data for a host device that does not include a network driver, the host device unable to communicate with the network without the network driver (claim 1, stanza 1 teaches the same “receiving a radio frequency signal with a module, the radio frequency signal including network data for a host device that does not include a network driver, the host device unable to communicate with the network without the network driver”);
adding, with the module, informational data to the baseband data to form host data, the informational data associated with one or more of the RF signal and the network (claim 1, stanza 3 teaches the same “adding, with the module, informational data to the baseband data to form host data, the informational data associated with one or more of the radio frequency signal and the network”); and
sending, with the module, the host data over an interface to the host device, the host data including the network data (claim 1, stanza 4 teaches “sending, with the module, the host data over an interface to the host device using an Ethernet protocol, the host data including the network data”).
‘018 fails to teach
generating, with a module, baseband data that includes network data.
Akhter discloses
generating, with a module, baseband data that includes network data (Fig. 1A; col. 5, lines 46-56 describe radio frequency data is transmitted from remote radio units to a switch located in one of the plurality of baseband processing cards. Each of the remote radio units includes a processing control device for processing the radio frequency data received from a user and for compressing prior to transmitting the data to the baseband unit; col. 6, lines 12-21 describe the compressed data is transmitted directly to a switch of the baseband unit. The switch distributes the compressed data to one of the baseband processing cards. The computation processors of the baseband processing car is used to further process the received data and to decompress the data prior to distribution over a backhaul).
One of ordinary skill in the art before the effective filing date of the claimed invention would have recognized the ability to utilize the teachings of Akhter for generating radio frequency data. The teachings of Akhter, when implemented in the ‘168 system, will allow one of ordinary skill in the art to make data available to a communication network. One of ordinary skill in the art would be motivated to utilize the teachings of Akhter in the ‘018 system in order to process data received from radio units to baseband data prior to store the baseband data at storage or server cards.
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.
Below is the rejection of claim 1 of the pending application
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11,070,653 of Malaki et al.
Pending Application 18/937,791
U.S. Patent No. 11,070,653
1. A method to communicate network data associated with a network with a host device that does not include a network driver, the method comprising:
receiving a radio frequency signal with a module, the radio frequency signal including network data for a host device that does not include a network driver, the host device unable to communicate with the network without the network driver;
generating, with the module, baseband data that includes the network data;
adding, with the module, informational data to the baseband data to form host data, the informational data associated with one or more of the RF signal and the network; and
sending, with the module, the host data over an interface to the host device, the host data including the network data.
1. A method to communicate network data associated with a network with a host device that does not include a network driver, the method comprising:
receiving a radio frequency signal with a module, the radio frequency signal including network data for a host device that does not include a network driver, the host device unable to communicate with the network without the network driver;
generating, with the module, baseband data that includes the network data;
adding, with the module, informational data to the baseband data to form host data, the informational data associated with one or more of the RF signal and the network; and
sending, with the module, the host data over an interface to the host device, the host data including the network data.
Since claim 1 of US Patent No. 11,070,653 contains limitations that are identical to claim 1 of the pending application. The rejection is the same as presented on the above table.
Claim Objections
Claim 1 is objected to as containing/reciting allowable subject matter; however, there is an outstanding non-statutory/statutory patenting rejections currently applied to the claim that prevents the application claim from issuing to a patent.
Applicant is advised to file a terminal disclaimer in order to obviate the non-statutory double patenting rejections, and to further amend the claim which can lead to the subsequent issuance of a patent for the currently filed application claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zou Hao (CN202957991U) teaches Host Device, Wireless Network Device and System based on Host Device and Wireless Network Device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to L. T N. whose telephone number is (571)272-1013. The examiner can normally be reached M & Th 5:30 am - 2:30 pm EST.
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/L. T. N/
Examiner, Art Unit 2459
/TONIA L DOLLINGER/Supervisory Patent Examiner, Art Unit 2459