DETAILED ACTION
Application filed 11/13/2024 has been examined.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending.
Specification and drawings are accepted.
Application is pending.
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.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,467,973.
Although the claims at issue are not identical, they are not patentably distinct from each other. For example, claim 1 of the present application teaches a test system comprising: a main test flow controller; and a device communication unit configured to be directly coupled to a device under test (DUT), the device communication unit including a trigger generation unit configured to generate a trigger signal in response to protocol-based data received from the DUT and to communicate the trigger signal to the main test flow controller. Whereas claim 1 of U.S. patent ‘973 teaches an automated test equipment for testing one or more devices under test, the automated test equipment comprising: a main test flow control; a device communication unit which is coupled to the main test flow control via a tester interface and which is adapted to interface with the one or more devices under test; wherein the device communication unit comprises a trigger generation configured to: extract payload data from a protocol-based data stream received from the one of the one or more devices under test; extract one or more protocol events from the protocol-based data stream; and generate a trigger signal in response to the extracted payload data or in response to the one or more protocol events. In both claims the test system/equipment has a main test flow controller/control, a device communication unit and at least one device under test which is connected to the device communication unit. The novelty in both claims, as described in the prior application (patent ‘973) is that the device control/communication unit including a trigger generating unit which generates a trigger signal in response to a protocol-based data received from the device under test. Therefore the claims are obvious embodiments of each other and not patentably distinct. A terminal disclaimer would obviate the rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUJTABA M CHAUDRY whose telephone number is (571)272-3817. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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MUJTABA M. CHAUDRY
Primary Examiner
Art Unit 2112
/MUJTABA M CHAUDRY/Primary Examiner, Art Unit 2112
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