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 .
Reissue Applications
This application seeks to reissue US Patent No. 10,312,919 (“the ‘919 patent”). By preliminary amendment, claims 1-3, 6, 9-12, 14-17, 20-22, and 25-27 have been amended; claims 4-5, 7, 18-19, 23-24, and 28-29 have been canceled; and new claims 31-39 have been introduced. Claims 1-3, 6, 8-17, 20-22, 25-27, and 30-39 are pending. This is a continuation reissue application of 18/676,297.
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.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,312,919 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
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.
Objection, 37 CFR 1.175 – Defective Reissue Declaration
The reissue declaration filed with this application is defective because the
error that is identified in the declaration is the same error as that corrected in parent
reissue application 18/676,297, and is being corrected in the same way in this
application.
Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application … [the] examiner should … reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration that identifies a new error or a statement explaining compliance with 37 CFR 1.175(f)(2) if appropriate.
MPEP 1414 II. The declaration that is filed with the instant application is not a direct copy of the declaration filed in parent application 18/676,297. In addition to describing removal of the same “in accordance with a radio technology …” limitation that was identified in the declaration of the parent application, the instant declaration also describes removal of the limitation “corresponding to variable nodes of a base graph.” Both limitations are described as correcting the error of the patentee claiming less than its right to claim in the patent. However, this second “variable nodes” limitation, while not described in the declaration of 18/676,297, was also removed in claim 1 of the parent application. Therefore the error that is described in the instant declaration corrects the same error as corrected in the parent, and does so in the same manner as the parent. And while the instant declaration also describes the addition of the limitation “elements in the base matrix are zero elements except for …”, this is not described as correcting the error of the patentee claiming less than its right to claim. As such this is not considered to be a description of a different error, or correction of the same error in a different way, as was corrected in the parent application.
The applicant must provide a supplemental declaration that identifies either a different error that is being corrected in this application, or provide a statement that explains compliance with 37 CFR 1.172(f)(2). See MPEP 1414 II.
Rejections, 35 USC § 251
Claims 1-3, 6, 8-17, 20-22, 25-27, and 30-39 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect in the declaration is set forth in the discussion above in this Office action.
Claims 1-3, 6, 8-17, 20-22, 25-27, and 30 are additionally rejected under §251 for not correcting an error in the original patent. This application is a continuing reissue application of 18/676,297 (issued as RE50437), which was a continuation reissue application of 17/334,608 (issued as RE49989). This application seeks to reissue claims of the ‘939 patent that have already been reissued in RE49989 and RE50437. “The same claim of the patent cannot, however, be presented for examination in both the parent reissue application and the continuation reissue application.” MPEP 1451 II. “Once a claim in the patent has been reissued, it does not exist in the original patent; thus, it cannot be reissued from the original patent in another reissue application.” MPEP 1451 I. The claims of this application therefore do not properly correct an error in the patent because the claims of the original patent have been superseded by the reissuance of the claims in RE49989 and RE50437.
For suggestions on overcoming this issue, please refer to MPEP 1451 I and II.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 6, 8-17, 20-22, 25-27, and 30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As described in the §251 rejections above, the claims of this application seek to reissue claims of the ‘939 patent that have been superseded by the issuance of RE49989 and RE50437. The claims of this application therefore present one coverage, while claims of RE49989 and RE50437 present different coverage of the same claims. This is inconsistent. These claims are therefore indefinite for not particularly pointing out and distinctly claiming subject matter of the invention. See MPEP 1451 I and II.
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 1-3, 6, 8-17, 20-22, 25-27, and 30-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-17, 20-22, 25-27, and 30-42 of US Patent No. RE50437; and claims 1-4, 7-18, 20-23, 25-28, and 30-46 of U.S. Patent No. RE49989. Although the claims at issue are not identical, they are not patentably distinct from each other as follows:
The claims of RE50437 recite everything that is recited in the claims of the instant application except for a description of the columns of the base matrix other than j=0 and j=1. The remaining columns of the base matrix that are described in the claims of this application recite only an obvious variant of the base matrix that is claimed in RE49989, as would be appreciated by a person having skill in this art. Therefore the instant claims are not patentably distinct over the claims of RE50437.
The independent claims of RE49989 do not explicitly recite which elements of the base matrix are zero and non-zero, as the claims of this application do. However, the instant claims include an explicit recitation of the values of the first two columns of the matrix that are required by the claims of RE49989. Claim 1 of RE49989 recites: “elements in all adjacent rows of a column are orthogonal, for each of the plurality of columns, in at least twenty-one rows starting from a last row of the base matrix; and each row of the twenty-one rows contains a non-zero element in a first column, of the plurality of columns, with a column index 0, or a non-zero element in a second column, of the plurality of columns, with a column index 1.” When this limitation of claim 1 in RE49989 is understood in light of the written description, it requires that the elements Vij of the first two columns of the base matrix have the values that are recited in claim 1 of the instant application. These values of Vij are also explicitly recited in claims 33, 34, 40, and 41 of RE49989. In addition, the remaining columns of the base matrix that are described in the claims of this application recite only an obvious variant of the base matrix that is claimed in RE49989.
The independent claims of this application recite that “the LDPC code is based on a base matrix and a lifting factor.” The independent claims of RE49989 do not recite this limitation. However, claim 39 of RE49989 recites that the base matrix is “lifted by a lifting factor of Z.” The person of skill in the art would have understood that the limitation in the independent claims is merely an obvious variant of this subject matter found in claim 39 of RE49989.
The independent claims of this application further recite that the “base matrix consists of sixty-eight columns … and forty-six rows.” Because claim 1 of RE49989 describes “twenty-one rows starting from a last row of the base matrix,” a skilled artisan would have understood this to describe a base matrix having 46 rows, in that the ‘939 patent depicted the last row of a base matrix to be the 25th row. See e.g. ‘939 patent Fig. 12. Further, given that the BG1 base graph in the 5G proposals was known at the time of the invention to be a base matrix of 46x68 size, a skilled artisan would have found it obvious to use a matrix of this size, the rationale being to ensure conformance to emerging standards. This subject matter is also explicitly recited in claim 39 of RE49989.
Allowable Subject Matter
While rejected above, the claims recite allowable subject matter. The reason for this are the same as in parent application 18/676,297. See the 09/25/2024 non-final Office action in parent application 18/676,297 at 8-11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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, Michael Fuelling can be reached at (571) 270-1367. 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.
/ROBERT J HANCE/ Primary Examiner, Art Unit 3992
Conferees:
/CHARLES R CRAVER/ Reexamination Specialist, Art Unit 3992 /M.F/Supervisory Patent Examiner, Art Unit 3992