The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The disclosure is objected to because of the following informalities: Page 1, in the cross-reference to related applications section, note that updated status information (i.e. patent number, issue date) should be provided for the allowed parent patent application to provide for clarity and completeness of description. Note that the following reference labels in the indicated drawings need a corresponding specification description for clarity and completeness of description: FIGS. 4, 5, 6, 7, 8, various reference labels and descriptive wording therein including (SFP, SFP+, SFP(1, 2, 3), 1Gbps 802.3 at P0E, 1Gbps, 10Gbps, board to board male connector in FIGS. 4, 5; all the descriptive wording in FIG. 5; board to board female connector in FIG. 6; circular waveguide port in FIG. 8; etc.) need to be correspondingly described. In general, it should be noted that throughout the detail description, numerous descriptions of particular drawings relied on or make reference to particular reference labels that do not actually appear in the drawing being described. Such descriptive circumstances could potentially lead to particular descriptions that could be construed as being ambiguous, confusing or misleading. Accordingly, the examiner suggests that at appropriate and/or necessary instances, particular reference labels should be reference to the drawings in which such reference labels actually appear for clarity and completeness of description. Appropriate correction is required.
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 13-15; 25- 29 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 pre-AIA the applicant regards as the invention.
In claim 13, lines 2, 3, note that the recitation of “the antenna” lacks strict antecedent basis in the dependency to independent claim. Appropriate clarification is needed.
In claim 25, line 18, note that the recitation of “the diplexer module” lacks strict antecedent basis in the dependency to independent claim 25 and thus “the diplexer module” should perhaps be rewritten as --the diplexer subsystem-- for consistency in claim terminology.
In claim 28, note that the recitation of “the diplexer module subsystem” lacks strict antecedent basis in the dependency to independent claim 25 and thus “the diplexer module subsystem” should perhaps be rewritten as --the diplexer subsystem-- for consistency in claim terminology
The following claims have been found to be objectionable for reasons set forth below:
In claim 28, note that the recitation of “modulesubsystem” should be separated for grammatical clarity.
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 Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the conflicting claims 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.
Claims 1-24; 25-29 are rejected under 35 U.S.C. 101 as claiming the same invention as that of corresponding claims 6-8, 26-29,10-22, 13, 24, 25; 1-5 of prior U.S. Patent No. 12322847 (cited by applicant). This is a 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim 25 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 25 & 26 of U.S. Patent No. 11811123 (cited by applicant) Although the conflicting claims are not identical, they are not patentably distinct from each other because the patent claims recite the same subject matter as set forth in application claim 25 and thus the patent claims meet the application claims under an “anticipation analysis” standard of obviousness double patenting.
Any inquiry concerning this communication should be directed to BENNY T LEE at telephone number (571) 272-1764.
/BENNY T LEE/PRIMARY EXAMINER
ART UNIT 2843
B. Lee
Prosecution Insights