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 .
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 39-57 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.
Claim 39 recites the limitation "the part of the beam pattern" in line 9 of the claim. There is insufficient antecedent basis for this limitation in the claim.
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 39-41 and 57-61 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 9, 12-13, and 25-26 of U.S. Patent No. 11,456,806. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are generic to all that is recited in the patented claims and are therefore an obvious variant thereof. Specifically, instant independent claim 39 is taught in patented claim 1 but is broader as it omits the last three limitations of the patented claim. Instant dependent claim 40 is taught in patented claim 1. Instant dependent claim 41 is taught in patented claim 2. Instant dependent claim 57 is taught in patented claim 9. Instant independent claim 58 is taught in patented claim 12 but is broader as it omits the second iteration and determining a characteristic of the apparatus. Instant dependent claim 59 is taught in patented claim 13. Instant independent claim 60 is taught in patented claims 25 and 26 but is broader as it omits the details of how the beam pattern is formed and the second locking signal. Instant dependent claim 61 is taught in patented claim 26.
Claims 39-41, 48, 57 and 60 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 11, 18 and 19 of U.S. Patent No. 11,870,503. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are generic to all that is recited in the patented claims and are therefore an obvious variant thereof. Specifically, instant independent claim 39 is taught in patented claim 1 but refers to a null of the beam pattern wherein the patent refers to a part of a beam pattern. Instant dependent claim 40 is taught in patented claim 1. Instant dependent claim 41 is taught in patented claim 3. Instant dependent claim 48 is taught in patented claim 11. Instant dependent claim 57 is taught in patented claim 18. Instant independent claim 60 is taught in patented claim 19.
Claims 39-41, 48, 52-57, and 60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 12-17, and 19-20 of U.S. Patent No. 12,231,177. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are generic to all that is recited in the patented claims and are therefore an obvious variant thereof. Specifically, instant independent claim 39 is taught in patented claim 1. Instant dependent claim 40 is taught in patented claim 1. Instant dependent claim 41 is taught in patented claim 3. Instant dependent claim 48 is taught in patented claim 12. Instant dependent claims 52-57 are taught in patented claims 13-17, and 19, respectively. Instant independent claim 60 is taught in patented claim 20.
Allowable Subject Matter
Claims 42-47, and 49-51 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 ERIKA WASHINGTON whose telephone number is (571)272-7841. The examiner can normally be reached Monday - Thursday.
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/EAW/
September 15, 2026
/ERIKA A WASHINGTON/Primary Examiner, Art Unit 2644
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