DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant’s claim for domestic benefit under 35 U.S.C. 119(e) is acknowledged.
Information Disclosure Statement
The information disclosure statement submitted has been considered by the Examiner and made of record in the application file.
Claim Objections
Claims 1, 3, 5, 6 and 15 are objected to because of the following informalities. Appropriate correction is required.
Claim 1 recites, in the central unit limitation, “a database having stored therein a data structure. and”, with a “period” in place of a “comma”. The corresponding claim of US 12,010,526 reads “a data structure, and”. The period should be replaced by a comma.
Claim 3 recites “which the signal is received by the mobile unit”. The phrase is ungrammatical. It is suggested that which the signal is received be amended to read “which signal is received” (the wording used in claim 3 of US 9,054,899).
Claims 5 and 6 recite “The mobile network of claim 3” in the preamble, whereas claim 3 and every other claim recite “a mobile network system”. For consistency the preambles should read The mobile network system of claim 3.
Claim 15 recites a mobile transmitter and a receiving unit with the indefinite article, although claim 1 already introduces a mobile transmitter and a receiving unit. It is unclear whether new elements are being introduced. It is suggested that the claim be amended to read “the mobile transmitter” and “a receiving unit”, or “the mobile transmitter” and “the receiving unit”, consistent with the intended scope. (See also the 112, second paragraph, rejection of claim 15 below.)
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 1-17 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 1 recites “a base station transceiver for communication with a central unit over the first network” before any first network has been introduced; There is insufficient antecedent basis for the first network at the point where it is recited, and it is unclear whether the network over which the base station communicates with the central unit is the same network the central unit communications transceiver communicates with.
Claim 11 recites “the memory of the intermediate base station”. Claim 1 recites no memory of the intermediate base station; it recites only a memory for storing the data in each mobile unit. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites “the portion of the data structure stored within the memory thereof”. It is unclear what thereof refers to. The only memory recited in claim 1 is the memory of each mobile unit, yet claim 12 requires the intermediate base station to transmit the portion stored within the memory thereof to the plurality of mobile units, which suggests a base station memory that claim 1 does not recite.
Claim 15 recites “a mobile transmitter and a receiving unit”. Claim 1 already recites a mobile transmitter of the intermediate base station and a receiving unit. It is unclear whether claim 15 refers to those elements or introduces a second mobile transmitter and a second receiving unit.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-17 are is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-17 of prior U.S. Patent No. 12010526. This is a statutory double patenting rejection.
Claims 1-17 of the present application are word-for-word identical to claims 1-17 of US 12,010,526 (application 17/891,043, issued June 11, 2024), claim for claim. The only textual difference is in claim 1, where the present claim reads a data structure. and (a period) and patent claim 1 reads a data structure, and (a comma); this typographical difference (objected to above) does not change scope. The test for same-invention double patenting is whether one of the claims could be literally infringed without literally infringing the other (MPEP 804 II.A). Because each present claim and the corresponding patent claim recite the same elements in the same words, neither could be infringed without infringing the other. The claims are therefore drawn to identical subject matter.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,701,567. Although the claims at issue are not identical, they are not patentably distinct from each other because present claim 1 is anticipated by patent claim 1, and present claims 2-17 are anticipated by patent claims 2-17, which recite the identical further limitations.
Patent claim 1 recites every element of present claim 1 in the same words. The only difference is drafting form: patent claim 1 positively recites a central unit having: a database having stored therein a data structure; and a central unit communications transceiver for communicating with a first network as a first element of the system, whereas present claim 1 folds the same central unit into the base station limitation (a base station transceiver for communication with a central unit over the first network, the central unit having: a database having stored therein a data structure. and a central unit communications transceiver for communicating with a first network). Present claim 1 is thus at least as broad as patent claim 1; any system falling within patent claim 1 falls within present claim 1. Present claims 2-17 are textually identical to patent claims 2-17.
Present claim
’567 claim
Relationship
1
1
Patent claim positively recites the central unit; otherwise identical; present claim is broader and is anticipated
2-17
2-17
Identical text, claim for claim
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9,054,899. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims recite every limitation of the present claims together with further limitations, so that the present claims are anticipated by the patent claims.
Patent claim 1 recites the same central unit, intermediate base station, plurality of mobile units, and broadcast-mode mapping as present claim 1, and additionally requires that the mobile transmitter operate “in a broadcast mode for receipt by a receiving unit and not requiring any back communication link to a receiving unit,” that each mobile receiver operate “in a receive only mode … thus requiring no communication back to the base station,” and that “the central unit operates in a broadcast only mode … such that the portion of the data structure is received by substantially all of the mobile units at the same time.” Present claim 1 omits each of these limitations and is therefore a genus of which patent claim 1 is a species. Patent claims 2-14 recite, word for word, the further limitations of present claims 2-14. Present claim 15 (a mobile transmitter does not require any back communication link to a receiving unit) is recited in patent claim 1 (“not requiring any back communication link to a receiving unit”). Present claims 16 and 17 (receipt at substantially the same time) are recited in patent claim 1 (“received by substantially all of the mobile units at the same time”).
Present claim
’899 claim
Relationship
1
1
Patent claim adds receive-only, no back link, broadcast only, and same-time receipt; present claim is broader and is anticipated
2-14
2-14
Identical further limitations, claim for claim
15
1
“not requiring any back communication link to a receiving unit”
16, 17
1
“received by substantially all of the mobile units at the same time”
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9,380,113. Although the claims at issue are not identical, they are not patentably distinct from each other because present claims 1-14, 16 and 17 are anticipated by the patent claims, and present claim 15 would have been obvious over patent claim 12.
Patent claim 1 recites every element of present claim 1 and additionally requires that the mobile receivers receive the broadcast data “such that all of the plurality of mobile units receive the broadcast data at substantially the same time” and that the mapping is “such that the portion of the data structure is received by substantially all of the mobile units at the same time via the mobile transmitter.” Present claim 1 omits these limitations. Patent claims 2-14 recite the identical further limitations of present claims 2-14. Present claim 16 is recited verbatim in patent claim 1 (“all of the plurality of mobile units receive the broadcast data at substantially the same time”), and present claim 17 is recited verbatim in patent claim 1 (“received by substantially all of the mobile units at the same time”). As to present claim 15, patent claim 12 recites that the intermediate base station transmits “in a broadcast mode requiring no response from the receiving one or ones of the plurality of mobile units”; a broadcast that requires no response from the receiving units is one in which the transmitter does not require any back communication link to a receiving unit, and to the extent the two phrasings differ, it would have been obvious to one of ordinary skill that a transmitter requiring no response has no need of a back link, the purpose of the back link being to carry the response.
Present claim
’113 claim
Relationship
1
1
Patent claim adds same-time receipt; present claim is broader and is anticipated
2-14
2-14
Identical further limitations, claim for claim
15
12
“requiring no response from the receiving one or ones”; obvious variant
16, 17
1
Same-time receipt recited verbatim
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9,801,076. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims recite every limitation of the present claims together with further limitations.
Patent claim 1 recites every element of present claim 1 and additionally requires that the mobile transmitter transmit “in a broadcast mode for receipt by a receiving unit and not requiring any back communication link to a receiving unit” and that the mobile units receive the broadcast data “such that all of the plurality of mobile units receive the broadcast data at substantially the same time” and “such that the portion of the data structure is received by substantially all of the mobile units at the same time.” Patent claims 2-14 recite the identical further limitations of present claims 2-14. Present claims 15, 16 and 17 are each recited verbatim in patent claim 1.
Present claim
’076 claim
Comment
1
1
Patent claim adds no back link and same-time receipt; present claim is broader and is anticipated
2-14
2-14
Identical further limitations, claim for claim
15
1
“not requiring any back communication link to a receiving unit”
16, 17
1
Same-time receipt recited verbatim
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,098,009. Although the claims at issue are not identical, they are not patentably distinct from each other because present claims 1-14, 16 and 17 are anticipated by the patent claims, and present claim 15 would have been obvious over patent claim 12.
Patent claim 1 recites every element of present claim 1 and additionally requires that the mobile transmitter have a “defined communication range over which one or more of a plurality of receiving units can receive the transmitted data,” that the mobile receivers receive the broadcast data “such that all of the plurality of mobile units communicating with the base station over the second network receive the broadcast data at substantially the same time,” and that the mapping is “such that the portion of the data structure is received by substantially all of the plurality of mobile units at the same time.” Patent claims 2-14 recite the identical further limitations of present claims 2-14. Present claims 16 and 17 are recited in patent claim 1. As to present claim 15, patent claim 12 recites a “broadcast mode requiring no response from the receiving one or ones of the plurality of mobile units,” which renders the absence of a back communication link obvious for the reason given above with respect to US 9,380,113. Patent claim 15 (update mode) has no counterpart in the present claims and is not relied upon.
Present claim
’009 claim
Comment
1
1
Patent claim adds defined communication range and same-time receipt; present claim is broader and is anticipated
2-14
2-14
Identical further limitations, claim for claim
15
12
“requiring no response from the receiving one or ones”; obvious variant
16, 17
1
Same-time receipt recited
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,433,183. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims recite every limitation of the present claims together with further limitations.
Patent claim 1 is identical to claim 1 of US 9,801,076 and recites every element of present claim 1 together with “not requiring any back communication link to a receiving unit,” “such that all of the plurality of mobile units receive the broadcast data at substantially the same time,” and “such that the portion of the data structure is received by substantially all of the mobile units at the same time.” Patent claims 2-14 recite the identical further limitations of present claims 2-14. Present claims 15, 16 and 17 are each recited verbatim in patent claim 1.
Present claim
’183 claim
Comments
1
1
Patent claim adds no back link and same-time receipt; present claim is broader and is anticipated
2-14
2-14
Identical further limitations, claim for claim
15
1
“not requiring any back communication link to a receiving unit”
16, 17
1
Same-time receipt recited verbatim
Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/735,018. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims recite every limitation of the present claims together with further trivial and obvious limitations since the present claims are broader.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1, 2, 14, 15, 16 and 17 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Khivesara US 2008/0137602.
Consider Claim 1:
Khivesara discloses a mobile network system comprising ([0053]: “FIG. 1 is a functional block diagram of a system for broadcasting data to specific locations of a network. The system includes a broadcast distribution network 100 (e.g., a wireless operator or carrier’s network) and a server-side broadcast location manager 200.”; [0004]: “mobile wireless devices such as mobile phones, PDAs, and wirelessly connected laptop computers”):
at least one intermediate base station having ([0053]: “Network 1 includes a first broadcast tower 110 and a second broadcast tower 120 that serve client devices 130, 140, 150 located within network 1.” The broadcast towers 110, 120 sit between the server-side manager 200 and the client devices and are the intermediate base stations.):
a base station transceiver for communication with a central unit over the first network ([0056]: “To distribute event 1 to the mobile devices in the location corresponding to the location tag, event 1 is provided to both the first and second broadcast towers 110, 120.”; [0055]: “The events are provided to the broadcast location manager 200. As described in detail below, the broadcast location manager 200 determines which physical network locations, i.e., IP address(es), should receive the event based on location tags associated with each event.” The towers receive the events from the manager 200 over the broadcast distribution network 100, which is the first network; the server-side broadcast location manager 200 is the central unit.),
the central unit having: a database having stored therein a data structure ([0091]: “These modules of the topology manager 300 allow broadcast network providers and service providers to define and manage broadcast topology tables 350, service topology tables 360, and client topology tables 370.”; [0058]: the topology manager 300 is a component of the broadcast location manager 200. The managed set of topology tables 350, 360, 370 maintained at the manager 200 is a database, and the client topology table 370 is a data structure stored in it; see also [0104]-[0106] describing the fields of the client topology table.) and
a central unit communications transceiver for communicating with a first network ([0055]: the manager 200 “determines which physical network locations, i.e., IP address(es), should receive the event”; [0060]: “physical addressing needed for broadcast to that location on each network expressed as, for example, a multicast IP address and port.” A server that delivers events to IP addresses on the broadcast distribution network 100 necessarily has a communications interface, i.e., a transceiver, for communicating with that network.); and
a mobile transmitter for transmitting data to a second network in a broadcast mode for receipt by a receiving unit ([0053]: the broadcast towers “serve client devices 130, 140, 150 located within network 1”; [0057]: “the client device 130 receives events 1, 4 and 5 from the broadcast distribution network 100 via the second broadcast tower 120.” Wireless network 1 and/or network 2, served by the towers, is the second network, and the tower’s transmitter broadcasts to the client devices.); and
a plurality of mobile units each operating as a receiving unit, each having ([0053]: “client devices 130, 140, 150”; [0004]: “mobile phones, PDAs, and wirelessly connected laptop computers”):
a mobile receiver for receiving broadcast mode data from the base station over the second network ([0057]: “the client device 130 receives events 1, 4 and 5 from the broadcast distribution network 100 via the second broadcast tower 120”; [0112]: “The client topology table manager 410 monitors a broadcast stream for the client topology tables 420.”); and
a memory for storing the data ([0110]: “the event cache 460 stores the payloads of received events”; [0112]: “the client topology table manager 410 obtains the new table and stores it locally”; [0111]: “locally stored client topology tables 420”),
wherein the central unit operates in a broadcast mode to map at least one portion of the data structure to the memory in each of the mobile units through the intermediate base station ([0036]: “The table is managed by the server and broadcast to all client devices.”; [0107]: “The client topology table distributor 340 broadcasts the client topology tables 370 to all client devices in the network. Since client devices are not always monitoring the network, the client topology table distributor 340 rebroadcasts the client topology tables 370 at regular intervals to ensure that client devices entering the network have the most current version.”; [0112]: the client “obtains the new table and stores it locally.” The server-side table 370 is broadcast through the towers and replicated as the locally stored table 420 in each client device, which is the claimed mapping of a portion of the data structure to the memory of each mobile unit.).
Consider Claim 2:
Khivesara discloses the mobile network system of claim 1, wherein each of the plurality of mobile units further includes: a display ([0004]: the mobile devices have “display size and resolution” constraints; [0009]: “a message intended to be displayed to the user of the receiving application”); and a processor for running an application to display at least a portion of stored data ([0004]: “applications executing on those devices”; [0110]: “the event cache 460 stores the payloads of received events … the distribution manager 470 distributes received events to the appropriate applications on the client device”; [0009]: the events include “a message intended to be displayed to the user of the receiving application, data to be presented within an application (e.g., news, weather, sports information or updates)”. The stored event payloads are distributed to, and presented by, the application running on the device.).
Consider Claim 14:
Khivesara discloses the mobile network system of claim 1, wherein the central unit is operable to map a first portion of the data structure to the memory of a first mobile unit through a first intermediate base station, and map a second portion of the data structure to the memory of a second mobile unit through a second intermediate base station ([0056]: “event 1 is provided to both the first and second broadcast towers 110, 120. Similarly, event 6 is associated with a more fine-grained location (e.g., Long Island) and, therefore, is provided to only one broadcast tower that serves that location (e.g., the first broadcast tower 110).”; [0125]: “application C sends the same event to locations 2 and 3, but does not send any events to location 1.” Different portions of the event data held at the manager 200 are delivered to different client devices through different towers, and the received payloads are stored in the event cache 460 ([0110]).).
Consider Claim 15:
Khivesara discloses the mobile network system of claim 1, wherein a mobile transmitter does not require any back communication link to a receiving unit ([0007]: “Broadcasting enables data to be delivered efficiently to a larger group of recipients without the need for communicating client-side requests to a server”; [0026]: “an automobile navigation system where there is no or only limited ability for the user device to communicate with the source of the data … the present invention is most applicable to client devices where there is a broadcast mechanism or other efficient data distribution mechanism in one direction (network to many devices), but there is not an efficient/cost-effective or available two-way mechanism to pull data customized for each device.”).
Consider Claim 16:
Khivesara discloses the mobile network system of claim 1, wherein all of the plurality of mobile units receive the broadcast mode data at substantially the same time ([0008]: “Certain types of applications require asynchronous, simultaneous distribution of data to a large set of clients.”; [0107]: “The client topology table distributor 340 broadcasts the client topology tables 370 to all client devices in the network.”).
Consider Claim 17:
Khivesara discloses the mobile network system of claim 1, wherein the portion of the data structure is received by substantially all of the mobile units at the same time ([0036]: “The table is managed by the server and broadcast to all client devices.”; [0107]: the table 370 is broadcast “to all client devices in the network”; [0008]: “simultaneous distribution of data to a large set of clients”).
Allowable Subject Matter
Claims 3-13 are allowable over prior art once remaining outstanding issue are resolved.
Conclusion
Any response to this Office Action should be faxed to (571) 273-8300 or mailed to:
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P.O. Box 1450
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Hand-delivered responses should be brought to
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Any inquiry concerning this communication or earlier communications from the
Examiner should be directed to Fayyaz Alam whose telephone number is (571) 270-1102. The Examiner can normally be reached on Monday-Friday from 9:30am to 7:00pm.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Jeanette Parker can be reached on (571) 270-3647. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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Fayyaz Alam
September 29, 2026
/FAYYAZ ALAM/
Primary Examiner, Art Unit 2646
