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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 3/3/2025, and 1/13/2026 are being considered by the examiner.
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.
Claim 12 is/are rejected under 35 U.S.C. 101 as claim 12 claiming the same invention as that of claim 11 of prior U.S. Patent No. . This is a statutory double patenting rejection.
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 1-11 is are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,278,504. Although the claims at issue are not identical, they are not patentably distinct from each other because Applicant has broadened claim 1 by removing the limitation of “wherein the first communicator circuit is arranged to synchronize a sampling of a signal of the output circuit to the power transfer signal”. Although this has created a distinction between the Application and the prior Patent, Applicant has claimed this limitation in dependent claim 3.
Claims 21-26 is are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-16 of U.S. Patent No. 12,278,504. Although the claims at issue are not identical, they are not patentably distinct from each other because Applicant has broadened claim 21 by removing the limitation of “and synchronizing the sampling of the signal of the output circuit to the power transfer signal”. Although this has created a distinction between the Application and the prior Patent, Applicant has claimed this limitation in dependent claim 22.
Claims 27-32 is are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,278,504. Although the claims at issue are not identical, they are not patentably distinct from each other because Applicant has broadened claim 27 by claiming claim 27 as a method as well as rearranging the limitations however it is clear that the claim encompasses the same inventive limitations with a different preamble.
Allowable Subject Matter
Claims 13-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims including any non-statutory double patenting issues that may arise from the proposed amendment.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. *Please see Form Pto-892*.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J WARMFLASH whose telephone number is (571)270-1434. The examiner can normally be reached 8AM-6PM EST M-Th.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Menna Youssef can be reached at (571) 270-3684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MW
1/30/2026
/Menatoallah Youssef/SPE, Art Unit 2849