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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. 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 Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20, respectively, of U.S. Patent No. 12,184,752. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-20 of U.S. Patent No. 12,184,752 cover and encompass, respectively, the limitations of claims 1-20 of the instant application. Moreover, because omission element(s) in the claims would make the claims in the instant application broader, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the claim(s) in the U.S. Patent No. 1-20 to as now recited in the instant application since it is just merely an obvious variation of the claims. Furthermore, it is well settled that omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 163 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 184 (CCPA 1969).
Regarding claims 1-20 of the instant application, claims 1-20 of the U.S. Patent No. 12,184,752 covers and encompasses, respectively, all subject matter claimed.
In light of the foregoing discussion, the broader claims 1-20 of the instant application are rejected as obvious double patenting over the respective narrower claims 1-20 of U.S. Patent No. 12,184,752.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. References Lombardi (US 10,466,363), Franck et al (US 10,879,910), Kwak (US 2008/0144423), Ware (US 2018/0196462) and Chang (US 2021/0356986) are cited because they are pertinent to the method and apparatus for generating and synchronizing clock signal. However, none of the cited references teaches or suggests the arrangements of an apparatus comprising: an integrated circuit (IC) chip configured to: receive a timing signal and a first reference clock signal and generate a first reference time signal based on the timing signal and the first reference clock signal; generate a second reference time signal based on the first reference time signal and a second reference clock signal, different from the first reference clock signal, wherein the second reference time signal specifies a count of a number of cycles of the second reference clock signal starting from a particular cycle of the second reference clock signal; and synchronize one or more actions performed by the IC chip based on the second reference time signal as recited in claim 1 and similar limitations as recited in the corresponding method claim 15 and further limitations of the dependent claims 2-14 and 16-20.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON NGUYEN VO whose telephone number is (571) 272-3018. The examiner can normally be reached on Monday to Friday from 9:00 to 6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kenneth N Vanderpuye, can be reached on 571-272-3078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DON N VO/Primary Examiner, Art Unit 2634
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