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 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,155,459 B2. Although the claims at issue are not identical, they are not patentably distinct from each.
Regarding claim 1,
Claim 1 of Application No. 18/961424
Claim 1 of US Patent No. 12,155,459 B2
A method, comprising: assigning an activation window by an optical line terminal (OLT) during a portion of an upstream transmitting window in a passive optical network (PON);
A method, comprising: assigning an activation window by an optical line terminal (OLT) during a portion of an upstream transmitting window in a passive optical network (PON);
performing a first modification to a first upstream transmission;
performing a first modification to a first upstream transmission;
performing a second modification to a second upstream transmission;
performing a second modification to a second upstream transmission;
receiving the first upstream transmission from a first optical network unit (ONU) during the activation window, the first ONU synchronized in the PON; and
receiving the first upstream transmission from a first ONU during the activation window, the first ONU synchronized in the PON;
receiving the second upstream transmission from a second ONU during the activation window, the second ONU requesting activation in the PON.
receiving the second upstream transmission from a second ONU during the activation window, the second ONU requesting activation in the PON
However, Claim 1 of Application No. 18/961424 differs from Claim 1 of U.S. Patent No. 12,155,459 B2 because Claim 1 of Application No. 18/961424 does not include “assigning an open contention grant such that one or more optical network units (ONUs) may transmit without an explicit grant from the OLT; receiving a third upstream transmission from a third ONU that collides with the second upstream transmission from the second ONU; activating the second ONU in the PON; and activating the third ONU in the PON.”
It is clear that all the elements of the application claim 1 are to be found in patent claim 1 (as the application claim 1 fully encompasses patent claim 1). The difference between the application claim 1 and the patent claim 1 lies in the fact that the patent claim includes many more elements and thus much more specific. Thus, the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of the application claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 1 is anticipated by claim 1 of the patent, it is not patentably distinct from claim 1 of the patent.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over UCHIKATA TATSUYA (WO 2011/122700 A1) in view of RAZMTOUZ (EP 2 926 569 B1).
Regarding claim 1, UCHIKATA TATSUYA teaches a method, comprising the steps of:
assigning an activation window (see translation, page 4, lines 31-52 (FIG. 4 section) and see Figs. 4 and 9, note the band assignment and the actual use band for each ONU) by an optical line terminal (OLT) (OLT 15 in Fig. 1, see translation, page 6, lines 23-27, “performs bandwidth allocation”, for example the bandwidth allocated by OLT for each of the ONU11-1, ONU11-2, and ONU11-3, shown in figs. 4, 9) during a portion of an upstream transmitting window (see translation, page 4, lines 31-52, FIG. 4 section) in a passive optical network (PON) (the PON of Fig. 1);
performing a first modification (for example when performing bandwidth change for ONU 11-1, see translation, page 5, last few lines and page 6, lines 7-8 and Fig. 8) to a first upstream transmission (see translation, page 6, lines 7-8, 22-26, 37-40);
performing a second modification (for example when performing bandwidth change for ONU 11-2 or ONU 11-3) to a second upstream transmission (see translation, page 6, lines 41-50);
receiving (16-1, Fig. 1, for example by the receiver of transceiver 16-1) the first upstream transmission (see translation, page 4, lines 10-14) from a first optical network unit (ONU) (for example ONU 11-1 of Fig. 1) during the activation window (the activation window for ONU 11-1, shown in Figs. 4, 9); and
receiving (16-2, Fig. 1, for example by the receiver of transceiver 16-2) the second upstream transmission (see translation, page 4, lines 10-14) from a second ONU (ONU 11-2 of Fig. 1) during the activation window (the activation window for ONU 11-2, shown in Figs. 4, 9), the second ONU (the ONU 11-2 of Fig. 1) requesting activation in the PON (see translation, page 3, lines 10-14, note that it is obvious, for example, for the ONU 11-2, to request an activation, to further transmit the data signal in the upstream direction to OLT 15).
UCHIKATA TATSUYA differs from the claimed invention in that UCHIKATA TATSUYA does not specifically disclose the first ONU is synchronized in the PON. However, the use of synchronized ONUs in a PON is well known. For example, RAZMTOUZ teaches a PON system (see Fig. 1), wherein ONUs (ONU 1, ONU 2, ONU 3, Fig. 1) are synchronized (see paragraphs 0020, paragraph 0034).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to incorporate or provide synchronized ONUs, as it is taught by RAZMTOUZ, for the ONUs of UCHIKATA TATSUYA, for example, for the ONU 11-1, to further reduce the degradation of upstream signal quality (see RAZMTOUZ, paragraph 0006, lines 5-7).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAI M LEE whose telephone number is (571)272-5870. The examiner can normally be reached M-F 9:5:30 PM.
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JAI M. LEE
Examiner
Art Unit 2634
/JAI M LEE/Examiner, Art Unit 2634
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