DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-18, respectively, of U.S. Patent No. 11,200,768. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention and the claims of the U.S. Patent are both drawn to a method for receiving an association request frame from a first electronic apparatus, transmitting an association response frame comprising a status code to the first electronic apparatus after reception of the association request frame, receiving a data frame from the first electronic apparatus if the status code of the association response frame indicates a success, wherein information used to set security for communication is obtained through a two dimensional bar code. Claims 16 of the U.S. Patent differs from claim 1 of the present invention by further claiming a display for displaying an image of a two dimensional barcode. It would have been obvious to one of ordinary skill in the art, at the time of invention, to remove the display limitation, as a matter of engineering choice, to conclude at claim 1 of the present invention. Such a modification would not render the invention inoperable for its intended purpose, and would yield predictable results. See MPEP 2144.04.
Claim 2 of the present invention is further rejected for the same reasons as claim 1 above, further in view of claim 17 of the U.S. Patent.
Claim 3 of the present invention is further rejected for the same reasons as claim 1 above, further in view of claim 18 of the U.S. Patent.
Claim 4 of the present invention is further rejected for the same reasons as claim 1 above, further in view of claim 16 of the U.S. Patent.
Claim 5 of the present invention is further rejected for the same reasons as claim 1 above, further in view of claim 17 of the U.S. Patent.
Claim 6 of the present invention is further rejected for the same reasons as claim 5 above, further in view of claim 17 of the U.S. Patent.
Claim 7 of the present invention is further rejected for the same reasons as claim 5 above, further in view of claim 18 of the U.S. Patent.
Claim 8 of the present invention is further rejected for the same reasons as claim 5 above, further in view of claim 17 of the U.S. Patent.
Claim 9 of the present invention is further rejected in view of claim 16 of the U.S. Patent. Claim 9 of the present invention differs from claim 16 of the U.S. Patent by further claiming a second electronic device, wherein information used to set security for communication is obtained through receiving a signal from a second electronic device. Claim 16 of the U.S. Patent claims a display displaying an image of a two dimensional bar code comprising information used to set security for communication. Therefore, the display displaying the two dimensional bar code of claim 16 of the U.S. Patent is functionally equivalent to a second electronic apparatus of the present invention.
Claim 10 of the present invention is further rejected for the same reasons as claim 9 above, further in view of claim 16 of the U.S. Patent.
Claim 11 of the present invention is further rejected for the same reasons as claim 9 above, further in view of claim 16 of the U.S. Patent.
Claim 12 of the present invention is further rejected for the same reasons as claim 9 above, further in view of claim 17 of the U.S. Patent.
Claim 13 of the present invention is further rejected for the same reasons as claim 12 above, further in view of claim 17 of the U.S. Patent.
Claim 14 of the present invention is further rejected for the same reasons as claim 12 above, further in view of claim 17 of the U.S. Patent.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16- of U.S. Patent No. 11,210,881 in view of Giobbi et al. (U.S. 2008/0150678 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention and the claims of the U.S. Patent are both drawn to a method for receiving an association request frame, transmitting an association response frame comprising a status code to the first electronic apparatus after reception of the association request frame, receiving a data frame from the first electronic apparatus if the status code of the association response frame indicates a success, and receiving information used to set security for communication. Claim 1 of the present invention differs from claim 16 of the U.S. Patent by further claiming the information is obtained through an image of a two dimensional bar code. Giobbi teaches barcode encoded technology for utilizing uniquely identifiable graphical, textual or biometric information (see Giobbi, Paragraph [0051]). It would have been obvious to one ordinary skill in the art, at the time of invention, to modify claim 16 of the U.S. Patent with a barcode encoded technology, as taught by Giobbi, for purposes of presenting the information of claim 16. Such a modification would not change the principal operation of the method of claim 16, as a whole, and would yield predictable results. See MPEP 2144.04.
Claims 1-14 are further rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-20, respectively, of U.S. Patent No. 11,210,881. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention and the claims of the U.S. Patent are both drawn to a method for receiving an association request frame, transmitting an association response frame comprising a status code to the first electronic apparatus after reception of the association request frame, receiving a data frame from the first electronic apparatus if the status code of the association response frame indicates a success, and receiving information used to set security for communication. Claim 18 of the U.S. Patent further claims a wireless LAN standard, displaying on a display, an image of a two dimensional bar code, and a first address. It would have been obvious to one of ordinary skill in the art, at the time of invention, to remove the display limitation, as a matter of engineering choice, to conclude at claim 1 of the present invention. Such a modification would not render the invention inoperable for its intended purpose, and would yield predictable results. See MPEP 2144.04.
Claim 2 of the present invention is further rejected for the same reasons as claim 1 above, further in view of claim 18 of the U.S. Patent.
Claim 3 of the present invention is further rejected for the same reasons as claim 1 above, further in view of claim 20 of the U.S. Patent.
Claim 4 of the present invention is further rejected for the same reasons as claim 1 above, further in view of claim 18 of the U.S. Patent.
Claim 5 of the present invention is further rejected for the same reasons as claim 1 above, further in view of claim 18 of the U.S. Patent.
Claim 6 of the present invention is further rejected for the same reasons as claim 5 above, further in view of claim 19 of the U.S. Patent.
Claim 7 of the present invention is further rejected for the same reasons as claim 5 above, further in view of claim 20 of the U.S. Patent.
Claim 8 of the present invention is further rejected for the same reasons as claim 5 above, further in view of claim 18 of the U.S. Patent.
Claim 9 of the present invention is further rejected in view of claim 18 of the U.S. Patent. Claim 9 of the present invention differs from claim 18 of the U.S. Patent by further claiming a second electronic device, wherein information used to set security for communication is obtained through receiving a signal from a second electronic device. Claim 18 of the U.S. Patent claims a display displaying an image of a two dimensional bar code comprising information used to set security for communication. Therefore, the display displaying the two dimensional bar code of claim 18 of the U.S. Patent is functionally equivalent to a second electronic apparatus of the present invention.
Claim 10 of the present invention is further rejected for the same reasons as claim 9 above, further in view of claim 18 of the U.S. Patent.
Claim 11 of the present invention is further rejected for the same reasons as claim 9 above, further in view of claim 18 of the U.S. Patent.
Claim 12 of the present invention is further rejected for the same reasons as claim 9 above, further in view of claim 18 of the U.S. Patent.
Claim 13 of the present invention is further rejected for the same reasons as claim 12 above, further in view of claim 18 of the U.S. Patent.
Claim 14 of the present invention is further rejected for the same reasons as claim 12 above, further in view of claim 18 of the U.S. Patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES J YANG whose telephone number is (571)270-5170. The examiner can normally be reached 9:30am-6:00p M-F.
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/JAMES J YANG/Primary Examiner, Art Unit 2686
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