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 3-7, 14, 17, 19 and 20 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 3 recites the limitation "the at least one module" on page 2 line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the at least one module" on page 2 line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the at least one module" on page 2 line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the at least one module" on page 2 line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the at least one module" on page 3 line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the at least one module" on page 4 line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the respective module" on page 4 lines 8, 9 and 10 is indefinite because it’s unclear what it refers to. .
Claim 20 recites the limitation "the respective module" on page 5 lines 7, 8, 10 and 11 is indefinite because it’s unclear what it refers to.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 4, 8-12, and 14-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6, 8, 10, 17, 18 and 20 of U.S. Patent No. 12,225,344. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1, 2, 4, 6, 8, 10, 17, 18 and 20 of U.S. Patent No. 12,225,344 are clearly anticipated or similar in scope to the rejected claims 1, 4, 8-12, and 14-18 of the U. S. Pat. App (No. 19/031,194) with only obvious wording variations. For example below:
Instant application
Claim Number
U.S. Patent No. 12,225,344
Claim Number
1
1, 2
4
10
8
17
9
18
10
20
11
2
12
1
14
4
15
6
16
8
17
20
18
17
As shown in table above, the limitations in claims 1, 4, 8-12, and 14-18 of pending Application can be found the limitations in claims 1, 2, 4, 6, 8, 10, 17, 18 and 20 as indicated above of U.S. Patent No. 12,225,344. Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize that they are not patentably distinct from each other. Accordingly, claims 1, 4, 8-12, and 14-18 of pending Application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6, 8, 10, 17, 18 and 20 of U.S. Patent No. 12,225,344 for the reasons as stated above.
Claims 1, 2, 8, 9, 11, 13, 14 and 16-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 6, 8 and 10-14 of co-pending Application No. 19/031,260.
Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claimed invention in the instant application anticipates the scope of the claimed invention in the co-pending application.
An example is listed below.
Instant application
Claim Number
Copending Application 19/031,260
Claim Number
1
1, 2
2
1
8
5
9
6
11
8
13
10
14
11
16
12
17
13
18
14
As shown in table above, the limitations in claims 1, 2, 8, 9, 11, 13, 14 and 16-18 of pending Application can be found the limitations in claims 1, 2, 5, 6, 8 and 10-14 as indicated above of co-pending application No. 19/031,260. Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize that they are not patentably distinct from each other. Accordingly, claims 1, 2, 8, 9, 11, 13, 14 and 16-18 of pending Application is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 6, 8 and 10-14 of co-pending application No. 19/031,260 for the reasons as stated above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-20 are allowed if they overcome the nonstatutory double patenting rejections and 112 2nd rejections above.
Conclusion
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/TUAN D NGUYEN/Primary Examiner, Art Unit 2824
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