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 .
DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 6, and 10 each state the claim limitation, “…to/from an outside of a mobile information terminal.” The use of “to/from” is indefinite, as the term could be interpreted as “to and from” or “to or from”. For the purpose of expediting prosecution of the instant application, the Examiner will be interpreting the limitation as “to and from”.
Claim 1 states the claim limitation, “the communication processor”. This claim limitation lack any antecedent basis prior to its introduction in the claim. It is indefinite as to whether this claim limitation is intended to refer to a previous limitation or is intended to represent a new limitation.
Claims 1 and 6 each state the claim limitation, “the display”. This claim limitation lack any antecedent basis prior to its introduction in each claim, respectively. It is indefinite as to whether this claim limitation is intended to refer to a previous limitation or is intended to represent a new limitation.
Clarification is required.
Claim Objections
Claims 10-12 are objected to because of the following informalities:
Regarding claim 10, “…and reception including, video data reception…” should read “…and reception, including video data reception…” in order to achieve proper syntax.
Regarding claim 10, “…transmit a setting value…” should read “…transmitting a setting value…” in order to maintain consistent grammar throughout the entirety of the method claim.
Claims 11 and 12 each state, “further including further including”. One of the two recitations of “further including” should be omitted in order to achieve proper grammar.
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-13 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-13, respectively of prior U.S. Patent No. 12,206,934. This is a statutory double patenting rejection.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, and 14 of U.S. Patent No. 11,140,438. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claims 1, 6 ,and 10 of the instant application are broader than and fully disclosed by claims 1, 9, and 14, respectively, of the cited patent.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 9 of U.S. Patent No. 11,665,390. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claims 1, 6 ,and 10 of the instant application are broader than and fully disclosed by claims 1, 5, and 9, respectively, of the cited patent.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 10 of U.S. Patent No. 11,930,245. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of claims 1, 6 ,and 10 of the instant application are broader than and fully disclosed by claims 1, 6, and 10, respectively, of the cited patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS T CORBO whose telephone number is (571)270-5675. The examiner can normally be reached on Monday - Friday 11am-7pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Bruckart can be reached at 571-272-3982. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS T CORBO/
Primary Examiner, Art Unit 2424
11/10/2025