DETAILED ACTION
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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,237,820 (hereafter ‘820). Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 1 of ‘820 anticipates claim 1 of the instant application.
Claim 1 of instant application
Claim 1 of ‘820
Claim 1: A radio-frequency attenuator circuit comprising:
Claim 1: A radio-frequency attenuator circuit comprising:
an input node and an output node;
an input node and an output node;
an attenuation path implemented between the input and output nodes and including a first switch, a first node, and a plurality of one or more attenuation blocks arranged in series, a second node and a second switch, each attenuation block including a local bypass path;
an attenuation path including a first switch, a first node, a plurality of attenuation blocks arranged in series, a second node, and a second switch between the input node and the output node, each attenuation block configured to provide a single resistance when providing attenuation, the attenuation block including a bypass switch configured to be on or off to thereby allow switchable bypassing of the single resistance, the bypass switch providing a single local off-capacitance when off, each of at least some of the attenuation blocks including a local phase compensation circuit configured to compensate for the single local off-capacitance of the respective bypass switch;
a global bypass path implemented between the input node and the output node and including a global bypass switch; and
a global bypass path implemented between the input node and the output node to be parallel with the attenuation path, the global bypass path including a global bypass switch configured to be on or off to thereby allow switchable bypassing of the attenuation path including the first and second switches without incurring losses associated with the first and second switches, the global bypass switch having a global off-capacitance when off, each of the first and second switches of the attenuation path configured to be off when the global bypass switch is on, and on when the global bypass switch is off; and
a global phase compensation circuit implemented between the first node and the second node, and configured to compensate for an off-capacitance of the global bypass switch, each of the first and second switches implemented as a single-pole-single-throw switch configured to be on when the global bypass switch is off, the global phase compensation circuit configured to provide a fixed compensation phase value for the off-capacitance of the global bypass switch and not for any of the first and second switches.
a global phase compensation circuit implemented between the first node and the second node, and configured to compensate for the global off- capacitance of the global bypass switch, each of the first and second switches implemented as a single-pole-single-throw switch configured to be on when the global bypass switch is off, the global phase compensation circuit configured to provide a fixed compensation phase value for the global off-capacitance of the global bypass switch and not for any of the first and second switches.
Examiner notes that the difference between “each attenuation block including a local bypass path” in the instant application and “the attenuation block including a bypass switch configured to be on or off to thereby allow switchable bypassing of the single resistance” in ‘820 is that the bypass switch defines the local bypass path, and anticipates the limitation “a local bypass path.”
Therefore, claim 1 of ‘820 anticipates claim 1 of the instant application.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLLEEN J O'TOOLE whose telephone number is (571)270-1273. The examiner can normally be reached Monday - Friday, 9:00 am - 6:00pm.
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/C.J.O/Examiner, Art Unit 2836
/Menatoallah Youssef/SPE, Art Unit 2836
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