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 .
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 1-11 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.
Claims 1-11 are rejected for the following instances of indefinite language:
Claim 1,
lines 19-28: indefinite because the language used here is broadly unclear and requires editing or revision to make it more readable and understandable.
pp. 2, line 2, “the contact resistance”: indefinite because the claim has previously established a plurality of contact resistances, making it unclear which of the plurality is in view.
pp. 2, line 20, “the first power defined...”: unclear whether this references the first power recited in pp. 1, line 4, or an unnamed first power defined in the second current consumption class.
pp. 2, line 24, “the second power defined...”: same reasoning as line 20.
pp. 2, line 27-28, “the second permissible current value”: lack of antecedent basis, claim 1 has previously recited “a second permissible current” in pp. 2, line 13.
Claims 2-5: “the contact resistance” is indefinite on the same basis as indicated in the rejection for claim 1.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,353,263. Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are anticipated by, or obvious variants of, the patent claims.
Application claims 1-11 correspond to the patent claims in the following manner.
Application Claims
Patent Claims
1
1, 10
2
2
3
3
4
4
5
5
6
6
7
6
8
7
9
8
10
9
11
1, 10
Application claims 1-11, while not identical to the patent claims, recite the same limitations as the patent claims. Where the language differs, it merely represent an obvious variant of the claim language. As a first example, application claim 1 recites a memory device “connectable to” a socket, whereas patent claim 1 recites a “removeable memory device insertable into and detachable from” a socket. As a second example, application claim 1 includes a limitation reciting “each of the plurality of the contact resistances is a contact resistance between a terminal of the socket and a terminal of the memory device” in lines 29-31, whereas this language is recited in patent claim 1 as part of the limitation defining the first current consumption value and the second current consumption value. As a third example, patent claim 6 recites, in a single claim, language that is found separately in application claims 6 and 7. Similar reasoning may be applied to other language in the application claims that varies from the patent claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references are cited as relevant for being directed to memory cards and/or power control for memory cards:
Yu et al., U.S. Patent No. 7,673,080,
Chou et al., U.S. Patent No. 7,069,369,
Han et al., U.S. Patent No. 10,157,678,
Mizuta, U.S. Patent No. 5,828,892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JI H BAE whose telephone number is (571)272-7181. The examiner can normally be reached Tuesday to Friday and every other Monday, 9 am to 6 pm.
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, Jaweed Abbaszadeh can be reached at 571-270-1640. 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.
/JI H BAE/Primary Examiner, Art Unit 2176 U.S. Patent and Trademark Office
Phone: 571-272-7181
Fax: 571-273-7181
ji.bae@uspto.gov
Prosecution Insights