Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
2. This communication is responsive to the amendment filed on August 17, 2026. Claim 1 has been amended. Accordingly, claim 1 is currently pending.
Terminal Disclaimer (TD)
3. About the TD filed on 08/17/26, please see the “Terminal Disclaimer Review Decision” mailed on 08/26/26.
Response to Remarks/Arguments
4. The previous rejections mailed on 04/14/26 have been withdrawn due to proper claim amendments and/or persuasive arguments filed on 08/17/26. However, upon further consideration, a new ground(s) of rejection is made.
Double Patenting
5. 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 TD 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 TD must be signed in compliance with 37 CFR 1.321(b).
The filing of a TD by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the TD 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 TD 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 eTD may be filled out completely online using web-screens. An eTD that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTD, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claim 1 (Instant Application) are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,207,151 B2 (Patented Application) and in view of Kline (US 2002/0118101 A1).
Claim 1 of Instant Application
Claim 1 of Patented Application
A method of receiving data over a power line, the method comprising: receiving a first combined signal from the power line at a first location on the power line, the first combined signal comprising a power signal in a first frequency range and a data signal modulated in a second frequency range, the second frequency range being higher than the first frequency range; frequency filtering the first combined signal to pass signals above a threshold frequency and to not pass signals below the threshold frequency, wherein the threshold frequency is higher than the first frequency and lower than the second frequency in a manner that the data signal is passed and the power signal is filtered out; demodulating the first data signal to produce a demodulated data signal; and transmitting the demodulated data signal to a local network, wherein the power line is a medium voltage or high voltage power line operating at a voltage of 1 kV or greater.
A method of receiving data over a power line, the method comprising: receiving a first combined signal from the power line at a first location on the power line, the first combined signal comprising a power signal in a first frequency range and a data signal modulated in a second frequency range, the second frequency range being higher than the first frequency range; frequency filtering the first combined signal to pass signals above a threshold frequency and to not pass signals below the threshold frequency, wherein the threshold frequency is higher than the first frequency and lower than the second frequency in a manner that the data signal is passed and the power signal is filtered out; demodulating the first data signal to produce a demodulated data signal; and transmitting the demodulated data signal to a local network.
As shown above, claim 1 of the Patented Application discloses all limitations of claim 1 of the Instant Application with the exception of “wherein the power line is a medium voltage or high voltage power line operating at a voltage of 1 kV or greater.” Kline, on the other hand, discloses wherein the power line is a medium voltage or high voltage power line operating at a voltage of 1 kV or greater (Figure 2: 102 “High Voltage Transmission Line”, 120 “Medium Voltage Power Line”, Paragraph 33: the high-voltage transmission lines 102 range from 69 to in excess of 800 kilovolts (kV) & Paragraph 34: the medium voltage 120 is from 1000 V to 100 kV). At the time the invention was made it would have been obvious to modify Applicant’s power line to include high/medium voltage as in Kline. One of ordinary skill in the art would be motivated to do so to safely communicate data signals, Paragraph 6.
Claim Rejections - 35 USC § 112
7. 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.
8. Claim 1 is 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 pre-AIA the Applicant regards as the invention.
Claim 1 recites “a voltage of 1 kV or greater”. Since the greater (> 1 kV) includes ∞ (infinity), renders claim 1 indefinite.
Reason for Allowance
9. Regarding claim 1, the prior art of record teaches refer to the CON 18/380,300 Notice of Allowance mail on 09/18/2024. However, the prior art of record when implemented would not produce the method as claimed in claim 1.
Conclusion
10. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this Final Action is set to expire THREE MONTHS from the mailing date of this Action. In the event a first reply is filed within TWO MONTHS of the mailing date of this Final Action and the Advisory Action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the Advisory Action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the Advisory Action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this Final Action.
11. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to SHAWKAT M. ALI whose telephone number is (571) 270-1639. The Examiner can normally be reached on Monday-Thursday 8:30AM-3:30PM ET.
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 AIR at http://www.uspto.gov/interviewpractice.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s Supervisor, SAM K. AHN can be reached on (571) 272-3044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAWKAT M ALI/
Primary Examiner, Art Unit 2633
Prosecution Insights