DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
General Information Matter
Please note, the instant Non-Provisional application (19/081,658) under prosecution at the United States Patent and Trademark Office (USPTO) has been assigned to David Zarka (Examiner) in Art Unit 2449. To aid in correlating any papers for 19/081,658, all further correspondence regarding the instant application should be directed to the Examiner.
Joint Inventors
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. Applicants are advised of the obligation under 37 C.F.R. § 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 § 102(a)(2) prior art against the later invention.
Preliminary Amendment and Claim Status
The instant Office action is responsive to the preliminary amendment received October 21, 2025.
Claims 1–20 are currently pending.
Provisional Application
The instant application claims benefit to provisional application No. 63/527,379 filed on July 18, 2023 under 35 U.S.C. § 119(e).
Information Disclosure Statement (IDS)
The IDSs filed March 17, 2025; June 4, 2025; September 30, 2025; October 21, 2025; October 22, 2025; and June 5, 2026 each comply with the provisions of 37 C.F.R. §§ 1.97, 1.98 and MPEP § 609. The IDSs have been placed in the application file, and the information referred to therein has been considered.
Drawings
37 C.F.R. § 1.84(l) recites “Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(l) for failing to include letters durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. See Figs. 3–8 (all light-colored text).
37 C.F.R. § 1.84(q) recites “Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed.”
The drawings are objected to under 37 C.F.R. § 1.84(q) for failing to include lead lines for each reference character. See Fig. 1A (items 100, 116, 102, 114); Fig. 1C (items 116, 102); Fig. 1D (items 116, 1012, N2, N3, Xn, N11, N4, N6).
37 C.F.R. § 1.84(p)(3) recites “Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(p)(3) for failing to include letters measuring at least .32 cm. (1/8 inch) in height. See Fig. 2; Fig. 3 (text reciting “Alternative A”, “Alternative B”, and “Alternative C”); Figs. 3, 7, 8 (text reciting “Alternative A”, “Alternative B”, “Alternative C”, and “Alternative D”); Fig. 6 (text reciting “Alternative A” and “Alternative B”).
37 C.F.R. § 1.84(t) recites “These [numbering of sheets of drawings], if present, must be placed in the middle of the top of the sheet, but not in the margin. . . . The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(t) for failing to include the numbering of sheets of drawings—if present—larger than the numbers used as reference characters to avoid confusion.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Applicants are advised to employ the services of a competent patent draftsperson outside the Office, as the USPTO does not prepare new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 C.F.R. § 1.121(d). If the changes are not accepted by the Examiner, Applicants will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Nonstatutory Double Patenting1
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).2
A timely filed terminal disclaimer in compliance with 37 C.F.R. § 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 C.F.R. § 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.
the ‘296 Patent and Perras
Claims 1–20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–4 and 6–9 of Sarathehandra et al. (US 12,267,296 B2; filed July 15, 2024; the ‘296 Patent) in view of Perras et al. (US 2022/0132307 A1; PCT filed Jan. 20, 2020).
Regarding claims 1–20 of the instant App., although the conflicting claims are not identical, they are not patentably distinct from each other because:
Instant Application
the ‘296 Patent
Claim 1: A first wireless transmit/receive unit (WTRU) comprising:
a transceiver; and
a processor configured to:
send, via the transceiver, a direct communication request (DCR) message to a second WTRU, the DCR message comprising an indication of a request for the first WTRU to establish a link with a third WTRU;
receive, via the transceiver, a command message from the second WTRU;
send, via the transceiver, a response message to the second WTRU, the response message comprising an indication of an address of the first WTRU; and
receive, via the transceiver, a reject message from the second WTRU,
the reject message comprising an indication of a conflict3 associated with the address of the first WTRU.
Claim 1: A first wireless transmit/receive unit (WTRU) comprising:
a transceiver; and
a processor configured to:
send, via the transceiver, a direct communication request (DCR) message to a second WTRU, wherein the DCR message initiates establishment of a link between the first WTRU and the second WTRU,
wherein the link is for relay traffic between the first WTRU and the second WTRU;
receive, via the transceiver, a direct security mode (DSM) command message from the second WTRU;
send, via the transceiver, a first response message to the second WTRU, wherein the first response message comprises an indication of a medium access control (MAC) address of the first WTRU;
receive, via the transceiver, a direct communication (DC) reject message from the second WTRU,
wherein the DC reject message comprises a cause code indicating that the MAC address of the first WTRU is not unique; and
send a link modification message to the second WTRU, wherein the link modification message comprises an indication of a second MAC address of the first WTRU.
Claim 2. The first WTRU of claim 1, wherein the command message is a direct security mode (DSM) command message.
Claim 1.
receive, via the transceiver, a direct security mode (DSM) command message from the second WTRU;
Claim 3. The first WTRU of claim 1, wherein the command message is configured to establish a secure link between the first WTRU and the second WTRU.
Claim 3. The first WTRU of claim 1, wherein the DSM command message is configured to establish a secure link between the first WTRU and the second WTRU.
Claim 4. The first WTRU of claim 1, wherein the response message is a DSM complete message.
Claim 2. The first WTRU of claim 1, wherein the first response message comprises a DSM complete message.
Claim 5. The first WTRU of claim 1, wherein the reject message is a direct communication (DC) reject message.
Claim 1. receive, via the transceiver, a direct communication (DC) reject message from the second WTRU,
Claim 6. The first WTRU of claim 1, wherein the address of the first WTRU is a medium access control (MAC) address.
Claim 1. wherein the first response message comprises an indication of a medium access control (MAC) address of the first WTRU;
Claim 7. The first WTRU of claim 6, wherein the MAC address of the first WTRU is being used by another WTRU associated with the second WTRU.
Claim 4. The first WTRU of claim 1, wherein MAC address of the first WTRU is being used by another WTRU associated with the second WTRU.
Claim 8. The first WTRU of claim 1, wherein the reject message comprises a cause code indication that the address of the first WTRU is not unique.
Claim 1. wherein the DC reject message comprises a cause code indicating that the MAC address of the first WTRU is not unique
Claim 9. The first WTRU of claim 1, wherein the link is established for the second WTRU to relay traffic between the first WTRU and the third WTRU.
Claim 1.
wherein the link is for relay traffic between the first WTRU and the second WTRU
Claim 10. The first WTRU of claim 1, wherein the processor is configured to send, via the transceiver, a link modification message to the second WTRU.
Claim 1.
send a link modification message to the second WTRU,
Claim 11. A method performed by a first wireless transmit/receive unit (WTRU), the method comprising:
sending a direct communication request (DCR) message to a second WTRU, the DCR message comprising an indication of a request for the first WTRU to establish a link with a third WTRU;
receiving a command message from the second WTRU;
sending a response message to the second WTRU, the response message comprising an indication of an address of the first WTRU; and
receiving a reject message from the second WTRU, the reject message comprising an indication of a conflict4 associated with the address of the first WTRU.
Claim 6. A method performed by a first wireless transmit/receive unit (WTRU), the method comprising:
sending a direct communication request (DCR) message to a second WTRU, wherein the DCR message initiates establishment of a link between the first WTRU and the second WTRU, wherein the link is for relay traffic between the first WTRU and the second WTRU;
receiving a direct security mode (DSM) command message from the second WTRU;
sending a first response message to the second WTRU, wherein the first response message comprises an indication of a medium access control (MAC) address of the first WTRU;
receiving a direct communication (DC) reject message from the second WTRU, wherein the DC reject message comprises a cause code indicating that the MAC address of the first WTRU is not unique; and
sending a link modification message to the second WTRU, wherein the link modification message comprises an indication of a second MAC address of the first WTRU.
Claim 12. The method of claim 11, wherein the command message is a direct security mode (DSM) command message.
Claim 6. receiving a direct security mode (DSM) command message from the second WTRU
Claim 13. The method of claim 11, wherein the command message is configured to establish a secure link between the first WTRU and the second WTRU.
Claim 8. The method of claim 6, wherein the DSM command message is configured to establish a secure link between the first WTRU and the second WTRU.
Claim 14. The method of claim 11, wherein the response message is a DSM complete message.
Claim 7. The method of claim 6, wherein the first response message comprises a DSM complete message.
Claim 15. The method of claim 11, wherein the reject message is a direct communication (DC) reject message.
Claim 6. receiving a direct communication (DC) reject message from the second WTRU
Claim 16. The method of claim 11, wherein the address of the first WTRU is a medium access control (MAC) address.
Claim 6. wherein the first response message comprises an indication of a medium access control (MAC) address of the first WTRU
Claim 17. The method of claim 16, wherein the MAC address of the first WTRU is being used by another WTRU associated with the second WTRU.
Claim 9. The method of claim 6, wherein the MAC address of the first WTRU is being used by another WTRU associated with the second WTRU.
Claim 18. The method of claim 11, wherein the reject message comprises a cause code indication that the address of the first WTRU is not unique.
Claim 6. wherein the DC reject message comprises a cause code indicating that the MAC address of the first WTRU is not unique
Claim 19. The method of claim 11, wherein the link is established for the second WTRU to relay traffic between the first WTRU and the third WTRU.
Claim 6. wherein the link is for relay traffic between the first WTRU and the second WTRU
Claim 20. The method of claim 11, further comprising sending a link modification message to the second WTRU.
Claim 6. sending a link modification message to the second WTRU
Regarding claim 1 of the instant application, claim 1 of the ‘296 Patent does not teach the DCR message comprising an indication of a request for the first WTRU to establish a link with a third WTRU.
Perras teaches a the DCR message (“Direct Communication Request” at fig. 7A) to a second WTRU (“WTRU- 2” at fig. 7A) comprising an indication of a request for a first WTRU (“WTRU- 1” at fig. 7A; fig. 1B, item 102) to establish a link with a third WTRU (¶¶ 101–102 of Perras at least suggests the WTRU 1 is attempting to establish a link with WTRU 2, WTRU 3, WTRU 4 by broadcasting the direct communication request message to WTRU 2, WTRU 3, WTRU 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the DCR message from claim 1 of the ‘296 Patent to comprise an indication of a request for the first WTRU to establish a link with a third WTRU as taught by Perras “to protect the transfer of data between the two WTRUs.” Perras ¶ 81.
Claim 11 of the instant application by analogy.
Regarding claim 9 of the instant application, claim 1 of the ‘296 Patent does not teach wherein the link is established for the second WTRU to relay traffic between the first WTRU and the third WTRU.
Perras teaches wherein a link (¶¶ 101–102 of Perras at least suggests the WTRU 1 is attempting to establish a link with WTRU 2, WTRU 3, WTRU 4 by broadcasting the direct communication request message to WTRU 2, WTRU 3, WTRU 4) is established for a second WTRU (“WTRU- 2” at fig. 7A) to relay traffic between a first WTRU and a third WTRU (intended use in italics).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the link room claim 1 of the ‘296 Patent to be established for the second WTRU to relay traffic between the first WTRU and the third WTRU as taught by Perras “to protect the transfer of data between the two WTRUs.” Perras ¶ 81.
Claim 19 of the instant application by analogy.
Regarding claim 10 of the instant application, claim 1 of the ‘296 Patent does not teach performing claim 10 of the instant application via a transceiver.
Perras teaches performing a method via a transceiver (fig. 1B, item 120).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for claim 10 of the instant application to be performed via a transceiver as taught by Perras “to protect the transfer of data between the two WTRUs.” Perras ¶ 81.
Claim Rejections – 35 U.S.C. § 103
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Perras and Orava
Claims 1–7, 9–17, 19, and 20 are rejected under 35 U.S.C. § 103 as being obvious over Perras in view of Orava et al. (US 2003/0177267 A1; filed Dec. 5, 2002).
Regarding claim 1, while Perras teaches a first wireless transmit/receive unit (WTRU) (“WTRU- 1” at fig. 7A; fig. 1B, item 102) comprising:
a transceiver (fig. 1B, item 120); and
a processor (fig. 1B, item 118) configured to:
send, via the transceiver, a direct communication request (DCR) message (“Direct Communication Request” at fig. 7A) to a second WTRU (“WTRU- 2” at fig. 7A), the DCR message comprising an indication of a request for the first WTRU to establish a link with a third WTRU (¶¶ 101–102 of Perras at least suggests the WTRU 1 is attempting to establish a link with WTRU 2, WTRU 3, WTRU 4 by broadcasting the direct communication request message to WTRU 2, WTRU 3, WTRU 4);
receive, via the transceiver, a command message (“Direct Security Mode Command” at fig. 7A) from the second WTRU; and
send, via the transceiver, a response message (“Direct Security Mode Complete” at fig. 7A) to the second WTRU, the response message comprising an indication that a secure direct communication link has been established (“The second WTRU may receive a direct security mode complete message that may indicate that a secure direct communication link associated with the third security context ID has been established between first WTRU and the second WTRU.” at ¶ 101),
Perras does not teach (A) the indication being of an address of the first WTRU; and (B) receiving, via the transceiver, a reject message from the second WTRU, the reject message comprising an indication of a conflict associated with the address of the first WTRU.
Orava teaches an address of a device (“challenge messages comprising a temporary MAC address to be suggested from another device, either from a terminal or an access point AP” at ¶ 60); and
receiving, via a transceiver (because the “another device, either from a terminal or an access point AP” at ¶ 60 receives and transmits signals at ¶ 60, Orava at least suggests the another device sending the temporary MAC address comprising a transceiver), a reject message from a second device (“terminal MT” at ¶ 60), the reject message comprising an indication of a conflict5 (“response message . . . may be a special response message to indicate that the temporary MAC address is not unique” at ¶ 60) associated with an address of a first device (“another device” at ¶ 60).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Perras’ indication to be an address of the first WTRU and for Perras’ transceiver to receive a reject message from the second WTRU, the reject message comprising an indication of a conflict associated with the address of the first WTRU as taught by Orava “which allows the [WTRUs] to be distinguished from each other.” Orava ¶ 7. Moreover, so that “the uniqueness of the suggested . . . address can be ensured with checking.” Id. ¶ 8.
Regarding claim 2, Perras teaches wherein the command message is a direct security mode (DSM) command message (“Direct Security Mode Command” at fig. 7A).
Regarding claim 3, Perras teaches wherein the command message is configured to establish a secure link (¶¶ 101–102 of Perras at least suggests the WTRU 1 is attempting to establish a secure link with WTRU 2, WTRU 3, WTRU 4 by broadcasting the direct communication request message to WTRU 2, WTRU 3, WTRU 4) between the first WTRU and the second WTRU.
Regarding claim 4, Perras teaches wherein the response message is a DSM complete message (“Direct Security Mode Complete” at fig. 7A).
Regarding claim 5, the Perras/Orava combination does not teach wherein the reject message is a direct communication (DC) reject message.
Orava teaches a DC reject message (“response message . . . may be a special response message to indicate that the temporary MAC address is not unique” at ¶ 60).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for the Perras/Orava combination’s reject message to be a DC reject message as taught by Orava “which allows the [WTRUs] to be distinguished from each other.” Orava ¶ 7. Moreover, so that “the uniqueness of the suggested . . . address can be ensured with checking.” Id. ¶ 8.
Regarding claim 6, the Perras/Orava combination does not teach wherein the address of the first WTRU is a medium access control (MAC) address.
Orava teaches a MAC address (“a temporary MAC address” at ¶ 25).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for the Perras/Orava combination’s address of the first WTRU to be a MAC address as taught by Orava “which allows the [WTRUs] to be distinguished from each other.” Orava ¶ 7. Moreover, so that “the uniqueness of the suggested . . . address can be ensured with checking.” Id. ¶ 8.
Regarding claim 7, the Perras/Orava combination does not teach wherein the MAC address of the first WTRU is being used by another WTRU associated with the second WTRU.
Orava teaches a MAC address (“MAC address 306” at ¶ 32; “the address MAC suggested by the terminal MT” at ¶ 33) of a first device (“terminal MT” at ¶ 33) is being used by another device (“n use in terminals MT associated to this AP” at ¶ 33) associated with a second device (“AP” at ¶ 33).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for the Perras/Orava combination’s MAC address of the first WTRU to be used by another WTRU associated with the second WTRU as taught by Orava “which allows the [WTRUs] to be distinguished from each other.” Orava ¶ 7. Moreover, so that “the uniqueness of the suggested . . . address can be ensured with checking.” Id. ¶ 8.
Regarding claim 9, Perras teaches wherein the link is established for the second WTRU (¶¶ 101–102 of Perras at least suggests the WTRU 1 is attempting to establish a link with WTRU 2, WTRU 3, WTRU 4 by broadcasting the direct communication request message to WTRU 2, WTRU 3, WTRU 4) to relay traffic between the first WTRU and the third WTRU (intended use in italics).
Regarding claim 10, Perras teaches wherein the processor is configured to send, via the transceiver, a link modification message (¶¶ 101–102 of Perras at least suggests the WTRU 1 is attempting to establish a link with WTRU 2, WTRU 3, WTRU 4 by broadcasting the direct communication request message to WTRU 2, WTRU 3, WTRU 4) to the second WTRU.
Regarding claim 11, Perras teaches a method (fig. 7A; ¶¶ 101–102) performed by a first wireless transmit/receive unit (WTRU) (“WTRU 1” at fig. 7A) to perform operations according to claim 1. Thus, references/arguments equivalent to those present for claim 1 are equally applicable to claim 11.
Regarding claims 12–17, 19, and 20, claims 2–7, 9, and 10, respectively, recite substantially similar features. Thus, references/arguments equivalent to those present for claims 2–7, 9, and 10 are equally applicable to, respectively, claims 12–17, 19, and 20.
Perras, Orava, and Ahmad
Claims 8 and 18 are rejected under 35 U.S.C. § 103 as being obvious over Perras in view of Orava, and in further view of Ahmad (US 2023/0099812 A1; filed Dec. 5, 2022).
Regarding claim 8, the Perras/Orava combination does not teach wherein the reject message comprises a cause code indication that the address of the first WTRU is not unique.
Orava teaches an indication that an address of a device (“another device, either from a terminal or an access point AP” at ¶ 60) is not unique (“response message . . . may be a special response message to indicate that the temporary MAC address is not unique” at ¶ 60).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for the Perras/Orava combination’s reject message to comprise an indication that the address of the first WTRU is not unique as taught by Orava “which allows the [WTRUs] to be distinguished from each other.” Orava ¶ 7. Moreover, so that “the uniqueness of the suggested . . . address can be ensured with checking.” Id. ¶ 8.
Ahmad teaches a cause code (“The PC5-S message may also contain the cause code/value indicating the reason for the rejection.” at ¶ 123).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for the Perras/Orava combination’s indication to be a cause code indication as taught by Ahmad for “indicating the reason for the rejection.” Ahmad ¶ 123. Moreover, “for effecting device-to-device (D2D) communications in wireless communication networks.” Id. ¶ 1.
Regarding claim 18, claim 8 recites substantially similar features. Thus, references/arguments equivalent to those present for claim 8 are equally applicable to claim 18.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure: US-20150095505-A1; US-20220174481-A1; US-20220150754-A1; US-20210211870-A1; US-20210410129-A1; and US-20220417212-A1.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449
1 The Examiner will determine whether Applicants’ reply to the nonstatutory double patenting rejection is compliant under 37 C.F.R. § 1.111(b). See MPEP § 804(I)(B)(1) (reciting
[a] complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
). In the event the reply is non-compliant under 37 C.F.R. § 1.111(b), the Examiner will issue a Notice of Non-Compliant Response.
2 See, e.g., In re Berg, 140 F.3d 1428 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (CCPA 1969).
3 Applicants’ invention discloses “The conflict may be indicative of the MAC address not being unique.” Spec. ¶ 4.
4 See n. 3 supra.
5 See n. 3 supra.
Prosecution Insights