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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Double Patenting
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 1-20 of prior U.S. Patent No. 12,235,705 to Erdogan et al. (“Erdogan-705”). This is a statutory double patenting rejection.
Claim 1 of the instant application is a verbatim duplicate of Claim 1 of Erdogan-705.
Claim 2 of the instant application is a verbatim duplicate of Claim 2 of Erdogan-705.
Claim 3 of the instant application is a verbatim duplicate of Claim 3 of Erdogan-705.
Claim 4 of the instant application is a verbatim duplicate of Claim 4 of Erdogan-705.
Claim 5 of the instant application is a verbatim duplicate of Claim 5 of Erdogan-705.
Claim 6 of the instant application is a verbatim duplicate of Claim 6 of Erdogan-705.
Claim 7 of the instant application is a verbatim duplicate of Claim 7 of Erdogan-705.
Claim 8 of the instant application is a verbatim duplicate of Claim 8 of Erdogan-705.
Claim 9 of the instant application is a verbatim duplicate of Claim 9 of Erdogan-705.
Claim 10 of the instant application is a verbatim duplicate of Claim 10 of Erdogan-705.
Claim 11 of the instant application is a verbatim duplicate of Claim 12 of Erdogan-705.
Claim 12 of the instant application is a verbatim duplicate of Claim 11 of Erdogan-705.
Claim 13 of the instant application is a verbatim duplicate of Claim 13 of Erdogan-705.
Claim 14 of the instant application is a verbatim duplicate of Claim 14 of Erdogan-705.
Claim 15 of the instant application is a verbatim duplicate of Claim 15 of Erdogan-705.
Claim 16 of the instant application is a verbatim duplicate of Claim 16 of Erdogan-705.
Claim 17 of the instant application is a verbatim duplicate of Claim 17 of Erdogan-705.
Claim 18 of the instant application is a verbatim duplicate of Claim 18 of Erdogan-705.
Claim 19 of the instant application is a verbatim duplicate of Claim 19 of Erdogan-705.
Claim 20 of the instant application is a verbatim duplicate of Claim 20 of Erdogan-705.
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.
Claim(s) 1-2, 4, and 10-20, is/are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 6, 9-11, and 13-18 of U.S. Patent No. 11,874,718 to Erdogan et al. (“Erdogan-718”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the aforementioned claims of Erdogan-718recite, in substantially equivalent form, all of the limitations of the aforementioned claims of the instant application, as follows:
Claim 1 (Instant Application)
Claim 13 (Erdogan-718)
A repeater comprising:
A repeater interfacing between a host and a peripheral, the repeater comprising:
a host-side squelch detector;
a host-side squelch detector
and a host-side receiver and a host-side transmitter, each coupled to the host-side squelch detector,
a host-side receiver and a host-side transmitter, each coupled to the host-side squelch detector
and the host-side receiver and the host-side transmitter are configured to be in an inactive state for a second time period responsive to the host-side squelch detector determining that a micro frame discludes a data packet during a first time period.
each of…the host-side receiver, the host-side transmitter…are configured to be inactive for a threshold time period after a set time period responsive to the host-side squelch detector determining that the micro frame discludes a data packet.
Claim 2 (Instant Application)
Claim 13 (Erdogan-718)
a peripheral-side squelch detector;
a peripheral-side squelch detector
and a peripheral-side receiver and a peripheral-side transmitter, each coupled to the peripheral-side squelch detector,
a peripheral-side receiver and a peripheral-side transmitter, each coupled to the peripheral side squelch detector
and the peripheral-side receiver, the peripheral-side transmitter and the peripheral-side squelch detector are configured to be in the inactive state for the second time period responsive to the host-side squelch detector determining that the micro frame discludes the data packet during the first time period.
each of the peripheral-side squelch detector…the peripheral-side receiver, and the peripheral-side transmitter are configured to be inactive for a threshold time period after a set time period responsive to the host-side squelch detector determining that the micro frame discludes a data packet
Claim 4 (Instant Application)
Claim 14 (Erdogan-718)
the host-side receiver and the peripheral-side transmitter are configured to be in the active state after the second time period and before the next micro frame is received.
the host-side receiver and the peripheral-side transmitter are configured to be to be in an active state after the threshold time period and before a next micro frame is received.
Claim 10 (Instant Application)
Claim 13 (Erdogan-718)
A circuit comprising:
A repeater interfacing between a host and a peripheral, the repeater comprising:
a first receiver and a first transmitter;
a host-side receiver and a host-side transmitter
a second transmitter coupled to the first receiver;
A repeater interfacing between a host and a peripheral, the repeater comprising…a peripheral-side transmitter
a second receiver coupled to the first transmitter and the second transmitter;
A repeater interfacing between a host and a peripheral, the repeater comprising…a peripheral-side receiver
a first detector coupled to the first receiver and the first transmitter;
a host-side squelch detector
and a second detector coupled to the second receiver and the second transmitter;
a peripheral-side squelch detector
wherein the first receiver, the first transmitter and the second detector are configured to be in an inactive state for a second time period responsive to the first detector determining that a micro frame discludes a data packet during a first time period.
each of the peripheral-side squelch detector, the host-side receiver, the host-side transmitter…are configured to be inactive for a threshold time period after a set time period responsive to the host-side squelch detector determining that the micro frame discludes a data packet.
Claim 10 (Instant Application)
Claim 17 (Erdogan-718)
A circuit comprising:
A repeater comprising:
a first receiver and a first transmitter;
a first port including a first transmitter, a first receiver
a second transmitter coupled to the first receiver;
A repeater comprising…a second port including a second transmitter
a second receiver coupled to the first transmitter and the second transmitter;
A repeater comprising…a second port including…a second receiver
a first detector coupled to the first receiver and the first transmitter;
a first port including…a first squelch detector
and a second detector coupled to the second receiver and the second transmitter;
a second port including…a second squelch detector
wherein the first receiver, the first transmitter and the second detector are configured to be in an inactive state for a second time period responsive to the first detector determining that a micro frame discludes a data packet during a first time period.
the first transmitter, the first receiver…and the second squelch detector are configured to be in an inactive state in an idle period of a micro frame responsive to the first squelch detector determining during a detection period of the micro frame that no data packet is contained in the micro frame
Claim 11 (Instant Application)
Claim 18 (Erdogan-718)
the first receiver and the first transmitter are coupled an eUSB2 port, and the second receiver and the second transmitter are coupled to a USB 2.0 port
the first port is an eUSB2 port and the second port is a USB 2.0 port.
Claim 12 (Instant Application)
Claim 18 (Erdogan-718)
the first receiver and the first transmitter are coupled the USB 2.0 port, and the second receiver and the second transmitter are coupled to the eUSB2 port.
the first port is a USB 2.0 port and the second port is an eUSB2 port.
Claim 13 (Instant Application)
Claim 13 (Erdogan-718)
the second receiver and the second transmitter are configured to be in the inactive state for the second time period responsive to the first detector determining that the micro frame discludes the data packet during the first time period.
each of the peripheral-side receiver, and the peripheral-side transmitter are configured to be inactive for a threshold time period after a set time period responsive to the host-side squelch detector determining that the micro frame discludes a data packet.
Claim 14 (Instant Application)
Claim 14 (Erdogan-718)
the first detector is configured to be in an active state after the second time period and before a next micro frame is received.
the host-side receiver and the peripheral-side transmitter are configured to be to be in an active state after the threshold time period and before a next micro frame is received.
Claim 15 (Instant Application)
Claim 14 (Erdogan-718)
the first receiver and the second transmitter are configured to be in the active state after the second time period and before the next micro frame is received.
the host-side receiver and the peripheral-side transmitter are configured to be to be in an active state after the threshold time period and before a next micro frame is received.
Claim 16 (Instant Application)
Claim 15 (Erdogan-718)
the first transmitter, the second receiver, and the second detector are configured to be in a standby state during the first time period.
the host-side transmitter, the peripheral-side receiver, and the peripheral-side squelch detector are configured to be in a standby state after the threshold time period and before the next micro frame is received.
Claim 17 (Instant Application)
Claim 15 (Erdogan-718)
the first transmitter, the second receiver, and the second detector are configured to be in the standby state after the second time period and before the next micro frame is received.
the host-side transmitter, the peripheral-side receiver, and the peripheral-side squelch detector are configured to be in a standby state after the threshold time period and before the next micro frame is received.
Claim 18 (Instant Application)
Claim 1, 10, and 11 (Erdogan-718)
A method comprising:
[Claim 1] A method…comprising:
detecting by a first detector, during a first time period, a start of a micro frame;
[Claim 1] detecting, on a data bus during a first time period, a start of a micro frame
determining, during a second time period after the first time period, whether at least one data packet is contained in the micro frame;
[Claim 1] determining, during a second time period after the first time period, whether at least one data packet is contained in the micro frame
and inactivating, in response to determining that the micro frame discludes a data packet during the second time period, a first receiver, a first transmitter, a second receiver, a second transmitter and a second detector during a third time period after the second time period,
[Claim 1] in response to determining that the micro frame discludes a data packet during the second time period, controlling active components, except a squelch detector, to be inactive during a third time period after the second time period.
[Claim 10] controlling the receiver and the transmitter in the peripheral-to-host data path and the peripheral-side squelch detector to be in an OFF state during the third time period.
[Claim 11] controlling the receiver and the transmitter in the host-to-peripheral data path to be in an OFF state during the third time period.
the first receiver and the first transmitter are coupled to the first detector,
[Claim 11] the high-speed data communication device is a repeater
and the second transmitter is coupled to the first receiver and the second detector,
[Claim 11] the high-speed data communication device is a repeater
and the second receiver is coupled to the second transmitter and the second detector.
[Claim 11] the high-speed data communication device is a repeater
Claim 19 (Instant Application)
Claim 1 (Erdogan-718)
keeping the first detector active during the third time period.
controlling active components, except a squelch detector, to be inactive during a third time period after the second time period.
Claim 20 (Instant Application)
Claims 6 and 9 (Erdogan-718)
activating the first receiver and the second transmitter after the third time period and before the next micro frame is received,
[Claim 6] the receiver and the transmitter in the host-to-peripheral data path are in the ON state during a fourth time period after the third time period, and the host-side squelch detector is in the ON state during the fourth time period
wherein the first transmitter, the second receiver and the second detector are configured to be in a standby state after the third time period and before the next micro frame is received.
[Claim 9] controlling the receiver and the transmitter in the peripheral-to-host data path and the peripheral-side squelch detector to be in the standby state during a fourth time period after the third time period
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 22 January 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) submitted on 29 May 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J CLEARY whose telephone number is (571)272-3624. The examiner can normally be reached Monday-Friday 8AM-5PM.
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 Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Jung can be reached at 571-270-3779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J. CLEARY/Primary Examiner, Art Unit 2175
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