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.
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. 12,166,563. Although the claims at issue are not identical, they are not patentably distinct from each other because:
As to instant claim 1, conflicting claim 1 includes all the claimed limitations.
As to instant claim 2, conflicting claim 2 includes all the claimed limitations.
As to instant claim 3, conflicting claim 3 includes all the claimed limitations.
As to instant claim 4, conflicting claim 4 includes all the claimed limitations.
As to instant claim 5, conflicting claim 5 includes all the claimed limitations.
As to instant claim 6, conflicting claim 6 includes all the claimed limitations.
As to instant claim 7, conflicting claim 7 includes all the claimed limitations.
As to instant claim 8, conflicting claim 8 includes all the claimed limitations.
As to instant claim 9, conflicting claim 9 includes all the claimed limitations.
As to instant claim 10, conflicting claim 10 includes all the claimed limitations.
As to instant claim 11, conflicting claim 11 includes all the claimed limitations.
As to instant claim 12, conflicting claim 12 includes all the claimed limitations.
As to instant claim 13, conflicting claim 13 includes all the claimed limitations.
As to instant claim 14, conflicting claim 14 includes all the claimed limitations.
As to instant claim 15, conflicting claim 15 includes all the claimed limitations.
As to instant claim 16, conflicting claim 16 includes all the claimed limitations.
As to instant claim 17, conflicting claim 17 includes all the claimed limitations.
As to instant claim 18, conflicting claim 18 includes all the claimed limitations.
As to instant claim 19, conflicting claim 19 includes all the claimed limitations.
As to instant claim 20, conflicting claim 20 includes all the claimed limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pon (US 5,771,456); Syrjarinne (US 2022/0137234 A1); Miller (US 2015/0341886 A1) disclose reducing interference in satellite communication systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NGUYEN THANH VO whose telephone number is (571)272-7901. The examiner can normally be reached Mon-Fri 8-5.
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, Jeanette J Parker can be reached at (571) 270-3647. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NGUYEN T VO/Primary Examiner, Art Unit 2646
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