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 .
Examiner’s comment re IDS
The information which has been considered by the office in the parent application has been considered by the examiner in the current application.
Claim Objections
Claims 1-20 are objected to because of the following informalities: Claim 1, line 3 and line 10, please spell out “ADC” and “DFE”, respectively. Claim 1, lines 7-10, after each occurrence of “sign bit” please insert “of the plurality of data sign bits” for consistency with antecedent in lines 5-6, respectively.
Claim 2, line 1, after the occurrence of “sign bit” please insert “of the plurality of data sign bits” for consistency with antecedent in claim 1, lines 5-6.
As per claim 5, line 1, and line 3, see claim 2, line 1.
As per claim 7 see claim 1.
As per claim 8, see claim 2.
As per claim 11 see claim 5.
As per claim 12, line 3, spell out “ADC”.
Claim 17, line 6, shouldn’t “comparison” be replaced by “a comparison signal”?
As per claim 17, line 8, see claim 17, line 6.
As per claim 20, line 2, with respect to “ADC” see claim 12.
Any claim whose base claim is objected is likewise objected.
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.
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 1-20 of U.S. Patent No. 12,181,523. Although the claims at issue are not identical, they are not patentably distinct from each other because:
As per claim 1 of the instant application, claim 1 of the patent includes each and every limitation of claim 1 of the instant application.
As per claim 2 of the instant application, claim 2 of the patent includes each and every limitation of claim 2 of the instant application.
As per claim 3 of the instant application, claim 3 of the patent includes each and every limitation of claim 3 of the instant application.
As per claim 4 of the instant application, claim 4 of the patent includes each and every limitation of claim 4 of the instant application.
As per claim 5 of the instant application, claim 5 of the patent includes each and every limitation of claim 5 of the instant application.
As per claim 6 of the instant application, claim 6 of the patent includes each and every limitation of claim 6 of the instant application.
As per claim 7 of the instant application, claim 7 of the patent includes each and every limitation of claim 7 of the instant application.
As per claim 8 of the instant application, claim 8 of the patent includes each and every limitation of claim 8 of the instant application.
As per claim 9 of the instant application, claim 9 of the patent includes each and every limitation of claim 9 of the instant application.
As per claim 10 of the instant application, claim 10 of the patent includes each and every limitation of claim 10 of the instant application.
As per claim 11 of the instant application, claim 11 of the patent includes each and every limitation of claim 11 of the instant application.
As per claim 12 of the instant application, claim 12 of the patent includes each and every limitation of claim 12 of the instant application.
As per claim 13 of the instant application, claim 13 of the patent includes each and every limitation of claim 13 of the instant application.
As per claim 14 of the instant application, claim 14 of the patent includes each and every limitation of claim 14 of the instant application.
As per claim 15 of the instant application, claim 15 of the patent includes each and every limitation of claim 15 of the instant application.
As per claim 16 of the instant application, claim 16 of the patent includes each and every limitation of claim 16 of the instant application.
As per claim 17 of the instant application, claim 17 of the patent includes each and every limitation of claim 17 of the instant application.
As per claim 18 of the instant application, claim 18 of the patent includes each and every limitation of claim 18 of the instant application.
As per claim 19 of the instant application, claim 19 of the patent includes each and every limitation of claim 19 of the instant application.
As per claim 20 of the instant application, claim 20 of the patent includes each and every limitation of claim 20 of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Conclusion
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/JEAN B CORRIELUS/Primary Examiner, Art Unit 2633