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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 1/7/25 and 12/30/24are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of U.S. Patent No. 12,212,331. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite the same subject matter with colorable differences. Claim 1 of the patent recites:
A device, comprising: a first analog-to-digital converter (ADC) configured to: receive a first analog signal; and perform sampling and conversion of the first analog signal during a first period of time to generate a first digital value; a second ADC configured to: receive a second analog signal; and perform sampling and conversion of the second analog signal during a second period of time to generate a second digital value; and circuitry coupled to the first ADC and the second ADC and configured to: determine whether the first period of time overlaps with the second period of time; and determine whether to generate a first indication or a second indication for the first digital value based on determining whether the first period of time overlaps with the second period of time.
This limitation is quasi-identical to claim 1 of the patent.
Claim 1 of the application recites a “device” whereas claim 1 of the patent recites an “integrated circuit”. It is well known that devices are built on integrated circuit.
Both sets of claims recite that the period laps with the second period of time, the patent call the limitation noisy, the same name can be attributed to the present application. Claim 11 of the patent recites:
11. A method, comprising: performing, by a first ADC, sampling and conversion of a first analog signal during a first period of time to generate a first digital value; performing, by a second ADC, sampling and conversion of a second analog signal during a second period of time to generate a second digital value; determining, by circuitry, whether the first period of time overlaps with the second period of time; and determining, by the circuitry, whether to generate a first indication or a second indication for the first digital value based on determining whether the first period of time overlaps with the second period of time.
This limitation is quasi- identical to claim 1 of the patent.
Claim 12 of the application recites a “device” whereas claim 11 of the patent recites an “integrated circuit”. It is well known that devices are built on integrated circuit.
Both sets of claims recite that the period of time overlaps with the second period of time. The patent calls the limitation noisy, the same can be attributed to the present application.
Allowable Subject Matter
Claims 2-10 and 12-20 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PEGUY JEAN PIERRE whose telephone number is (571) 272-1803. The examiner can normally be reached from 8:00-6:30 PM Monday-Thursday. The examiner’s fax phone number is (571) 273-1803. The Examiner email address is peguy.jeanpierre@uspto.gov. If attempts to reach the Examiner are unsuccessful, the Examiner’s supervisor Dameon E. Levi can be reached at (571) 272-2105.
/PEGUY JEAN PIERRE/Primary Examiner, Art Unit 2845
Prosecution Insights