Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
2. This office action is in response to communication filed on 11/25/2024. Claims 1-20 are pending on this application.
Double Patenting
3. 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.
4. Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,155,397. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,155,397 disclosed every limitation of applicant’s claims.
5. Claims 5-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-7, respectively, of U.S. Patent No. 12,155,397. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2-7 of U.S. Patent No. 12,155,397 disclosed every limitation of applicant’s claims 5-10, respectively.
6. Claims 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim of U.S. Patent No. 12,155,397. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of U.S. Patent No. 12,155,397 disclosed every limitation of applicant’s claims.
7. Claim 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,155,397. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 12,155,397 disclosed every limitation of applicant’s claims.
8. Claims 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,155,397. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 12,155,397 disclosed every limitation of applicant’s claims.
9. Claims 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,155,397 in view of Ekkizogloy et al. Pub. No. 2006/0002712.
Regarding claim 16. Claim 13 of U.S. Patent No. 12,155,397 discloses every limitation of applicant’s claim except for a host comprising first interface circuitry; and a controller coupled to the host and comprising second interface circuitry configured to transmit signals to, and receive signals from, the first interface circuitry.
Fig. 1 of Ekkizogloy et al. discloses a host (111) comprising first interface circuitry (112); and a controller (100) coupled to the host (111) and comprising second interface circuitry (105) configured to transmit signals to, and receive signals from, the first interface circuitry (112).
It would have been obvious before the effective filing date of claimed invention to one ordinary skill in the art to which the claimed invention pertains to combine Ekkizogloy et al. with claim 13 of U.S. Patent No. 12,155,397 for the purpose of providing the controller or may be a separate transceiver component to reports the value to a host computing system coupled to the transceiver module. This allows a user or the host to then evaluate the various operational parameters (paragraph 0009 of Ekkizogloy et al.).
Regarding claim 17. Claim 13 of U.S. Patent No. 12,155,397 and Ekkizogloy et al. applied to claim 16 above, claim 13 of U.S. Patent No. 12,155,397 further disclose limitation of applicant’s claim.
Regarding claim 18, claim 13 of U.S. Patent No. 12,155,397 and Ekkizogloy et al. applied to claim 16 above, claim 13 of U.S. Patent No. 12,155,397 further disclose limitation of applicant’s claim.
Regarding claim 19, claim 13 of U.S. Patent No. 12,155,397 and Ekkizogloy et al. applied to claim 16 above, claim 16 of U.S. Patent No. 12,155,397 further disclose limitation of applicant’s claim.
Regarding claim 20, claim 13 of U.S. Patent No. 12,155,397 and Ekkizogloy et al. applied to claim 16 above, claim 14 of U.S. Patent No. 12,155,397 further disclose limitation of applicant’s claim.
Contact Information
4. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Linh Van Nguyen whose telephone number is (571) 272-1810. The examiner can normally be reached from 8:30 – 5:00 Monday-Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Dameon E. Levi can be reached at (571) 272-2105. The fax phone numbers for the organization where this application or proceeding is assigned are (571-273-8300) for regular communications and (571-273-8300) for After Final communications.
06/14/2026
/LINH V NGUYEN/Primary Examiner, Art Unit 2845
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