DETAILED ACTION
This action is responsive to the communications filed on 12/3/2024.
Currently, claims 21-42 are pending.
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.
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.
Instant claims 21 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20(+19+1) of commonly owned U.S. Patent No. 10,992,507 (hereinafter: Patent ‘507). Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 20(+19+1) of Patent ‘872 logically anticipates the limitations of instant claims 21 and 22.
Instant claims 32 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20(+19+1) of commonly owned U.S. Patent No. 10,797,926 (hereinafter: Patent ‘926). Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 20(+19+1) of Patent ‘926 logically anticipates the limitations of instant claims 32 and 33.
Allowable Subject Matter
Claims 23-31 and 34-42 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.
Where the closest prior art of record, Weaver (USPN 4,802,222), shows a similar invention directed to a communication system/method including a transmitting device/method and a receiving device/method, where the digital baseband data bits are encoded at the transmitting device into permissible zeroes of a Z-transform by a compression filter (e.g. compression filter 30/204 of figs. 2, 5, and/or 14) which are modulated and transmitted across a channel to the receiving device which demodulates/decodes the encoded zeroes at a reconstruction filter 70/240 of figs. 2, 5, and/or 14) to recover and output the data.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and are cited in the attached PTO-892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James M. Perez, telephone number (571)270-3231. The examiner can normally be reached Monday through Friday: 10am to 6pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David C. Payne can be reached on (571)272-3024. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES M PEREZ/Primary Examiner, Art Unit 2635 1/24/2026
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