DETAILED ACTION
This non-final action replies to reissue application, filed Feb. 6, 2025 that amends the specification to provide notice this is a reissue application, adds new claims 19-36 and cancels original claims 1-18. Claims 1-19 are pending.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Notice of Multiple Reissue Applications to Same Reissue Patent
Applicant is reminded of requirement to notify public of each reissue application of a single patent. See 37 CFR 1.177. See also MPEP 1451.
If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date.
The preliminary amendment co-filed with this application on Feb. 06, 2025 fails to identify all related reissue applications of same patent. Although this application was amended to contain in the first paragraph of the specification a notice providing notice of some of the related reissue applications, it fails to include all of the reissue patents (lacks including 18/105165, now RE50358) to same ‘348 patent with each of their respective filing dates and relationship(s) as required. So that it is clear, the amendment to specification co-filed with the application regards a statement of priority, (i.e., such as amending specification to state this application is a continuation of 18/105165), is a separate requirement from a notice under 1.177 of related reissue application(s).
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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 19-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-40 of U.S. Patent No. RE49427 in view of U.S. Pat. App. No. 2011/0243066, hereafter “Nayeb Nazar” or U.S. Pat. No. 8009606, hereafter “Seo”. Lacking evidence to the contrary, with broadest reasonable interpretation of the claims without reading limitations from disclosure of ‘348 into the claims herein, although the claims at issue are not identical, they are not patentably distinct from each other because in comparing Claims 19-40 of Patent No. RE49427 to Claims 19-36 of the instant application, the Claims of RE49427 are an obvious variant thereto that contain substantially the same subject matter that overlaps process/UE herein. In general, where the claims in RE49427 regard/overlap the claims herein to recite same formats of 1a/1b and/or 3 as recited in claims herein for same purpose to facilitate communication between user equipment and a base station where any difference(s) in process/elements regard known process/element(s) as shown by Nayeb Nazar (Abs, [0006]-[0008], [0069]-[0073], [0075]-[0078], [0082], [0086], [0133]-[0175], FIGs. 1-28) in such communications prior to priority here. In essence, the process/UE (WTRUs) in RE49427 claims regard an obvious variation of similar process/elements herein involving same formats using same structure for communication between UE and BS where “determining” step in the claims of RE49427 involve/overlap “receiving” herein where Nayeb Nazar is relied on to show evidence of known communication process/elements between UE and BS including where determining PUCCH format involves receiving a PDCCH for downlink SPS release.
Claims 19-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-40 of U.S. Patent No. RE49379 in view of U.S. Patent No. RE50358 in view of U.S. Pat. App. No. 2011/0243066, hereafter “Nayeb Nazar”. Lacking evidence to the contrary, with broadest reasonable interpretation of the claims without reading limitations from disclosure of ‘348 into the claims herein, although the claims at issue are not identical, they are not patentably distinct from each other because in comparing Claims 19-40 of Patent No. RE49379 to Claims 19-36 of the instant application, the Claims of RE49379 are an obvious variant thereto that contain substantially the same subject matter that overlaps process/UE herein. In general, the claims in RE49379 recite same formats of 1a/1b and 3 as recited in claims herein for same purpose to facilitate communication between user equipment and a base station where any difference(s) in process/elements regard known process/element(s) as shown by Nayeb Nazar (Abs, [0006]-[0008], [0069]-[0073], [0075]-[0078], [0082], [0086], [0133]-[0175], FIGs. 1-28) in such communications prior to priority here. In essence, the process/UE (WTRUs) in RE49379 claims regard an obvious variation of similar process/elements herein involving same formats using same structure for communication between UE and BS where “determining” step in the claims of RE49379 involve/overlap “receiving” herein where Nayeb Nazar is relied on to show evidence of known communication process/elements between UE and BS including where determining PUCCH format involves receiving a PDCCH for downlink SPS release.
Claims 19-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-40 of U.S. Patent No. RE50358 in view of U.S. Pat. App. No. 2011/0243066, hereafter “Nayeb Nazar”. Lacking evidence to the contrary, with broadest reasonable interpretation of the claims without reading limitations from disclosure of ‘348 into the claims herein, although the claims at issue are not identical, they are not patentably distinct from each other because in comparing Claims 19-40 of Patent No. RE50358 to Claims 19-36 of the instant application, the Claims of RE50358 are an obvious variant thereto that contain substantially the same subject matter where “determining” in RE50358 involves or overlaps “receiving” step herein. In general, the claims in RE50358 recite same formats of 1a/1b and 3 as recited in claims herein for same purpose to facilitate communicating between user equipment and a base station where any difference(s) in process/elements regard known process/element(s) as shown by Nayeb Nazar (Abs, [0006]-[0008], [0069]-[0073], [0075]-[0078], [0082], [0086], [0133]-[0175], FIGs. 1-28) in such communications prior to priority here. In essence, the process/UE (WTRUs) in RE50358 claims regard an obvious variation of similar process/elements herein involving same formats using same structure for communication between UE and BS where “determining” step in the claims of RE50358 involve/overlap “receiving” herein where Nayeb Nazar is relied on to show evidence of known communication process/elements between UE and BS including where determining PUCCH format involves receiving a PDCCH for downlink SPS release.
Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the 11310772 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mark Sager whose telephone number is (571) 272-4454. The examiner can normally be reached M-Th, 6:30 AM - 3 PM, EST.
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, Alexander Kosowski can be reached at (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like
assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)
or 571-272-1000.
/MARK SAGER/Primary Examiner, Art Unit 3992
Conferees:
/JEFFREY D CARLSON/Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992