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 § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 8-14, 16, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Keysight (NPL).
Regarding claim 1:
Keysight teaches:
A method, comprising:
receiving, by a first device, results associated with tracing through of a link training and status state machine (LTSSM) test configuration associated with a second device [pages 102-105, 110, inter alia – tester provides various LTSSM tests to DUT, including numerous predefined tests and designed corner cases, gets results of the tests] ;
modifying, by the first device and based on the results, the LTSSM test configuration [pages 102-105, 110, inter alia – running a different type of test or a corner case test modifies the test configuration]; and
providing, by the first device, the modified LTSSM test configuration [pages 102-105, 110, inter alia – running further tests].
Regarding claim 2:
Keysight teaches:
The method of claim 1, wherein the LTSSM test configuration includes a plurality of states and paths connecting a subset of the plurality of states [pages 100, 101, inter alia].
Regarding claim 3:
Keysight teaches:
The method of claim 1, wherein the results are received from, and the LTSSM test configuration is provided to, a third device [page 102 – results received and tests routed from testing station through protocol exerciser card to DUT].
Regarding claim 4:
Keysight teaches:
The method of claim 1, wherein modifying the LTSSM test configuration comprises:
modifying one or more paths of the LTSSM test configuration [pages 102-105, 110 – modifies paths to verify state transitions in various tests].
Regarding claim 8:
Keysight teaches:
The method of claim 1, wherein modifying the LTSSM test configuration comprises:
providing a defined path for the LTSSM test configuration that couples one or more actions to one or more states in the defined path [pages 102-105, 110-120 – details various actions that are linked to states, e.g. performing capture, verification, display for states in the state transitions. This meets the broadest reasonable definition of couple actions to states].
Regarding claim 9:
Keysight teaches:
The method of claim 1, further comprising:
enabling, in the LTSSM test configuration, definition of a path that couples one or more actions to one or more states in the path [pages 102-105, 110-120 – details various actions that are linked to states, e.g. performing capture, verification, display for states in the state transitions. This meets the broadest reasonable definition of couple actions to states. To define a corner cases requires that a path is defined].
Regarding claims 11-14, 16 and 20:
See the teachings above with respect to claims 1-4 and 8.
Keysight further teaches one or more memories, one or more processors and a non-transitory computer-readable medium [page 22 fig 2 – computer functioning as host contains processor(s) and memories].
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, 2, and 4-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, 9, 15-17 and 19 of U.S. Patent No. 12360871. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘871 claims contain all teachings of the instant claims and therefore anticipate the instant claims.
Claim 1 is exemplary:
Instant claim
‘871 claim language
Explanation as necessary
A method, comprising:
A method, comprising:
identical
receiving, by a first device, results associated with tracing through of a link training and status state machine (LTSSM) test configuration associated with a second device;
receiving, by the device, results associated with tracing through of the LTSSM test configuration by the device under test
‘871 device corresponds to instant claim’s first device, ‘871 device under test corresponds to instant claim’s second device
modifying, by the first device and based on the results, the LTSSM test configuration;
modifying, by the device and based on the results, one of the paths of the LTSSM test configuration to include a different one of the states and to generate a modified LTSSM test configuration
Details of the modification provided by ‘871 claim removed to broaden instant claim limitation
providing, by the first device, the modified LTSSM test configuration
providing, by the device, the modified LTSSM test configuration for tracing through by the device under test.
Remove intended use of the providing step to broaden instant limitation
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12360871 in view of Keysight.
Claim 1 of the ‘871 patent contains all teachings of instant claim 3 except wherein the results are received from, and the LTSSM test configuration is provided to, a third device.
Keysight teaches the results received from, and LTSSM test configuration provided to, a third device [page 22, fig 2 – protocol exerciser card is third device that routes results and test configurations between host and device under test].
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the third device of Keysight with the teachings of the ‘871 claim because the use of the protocol exerciser card provides flexibility to adapt to different setups as an endpoint or a root complex and provides a plethora of options for testing indicated throughout the Keysight reference.
Allowable Subject Matter
The examiner notes that claims 5-7, 15, and 17-19 are rejected only under double patenting. If the double patenting rejection were to be obviated, these claims would be considered to contain allowable subject matter. The examiner recommends filing of a termina disclaimer to obviate the outstanding double patenting rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC M DUNCAN whose telephone number is (571)272-3646. The examiner can normally be reached M-F: 730am-9am, 10am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bryce Bonzo can be reached at 571-272-3655. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARC DUNCAN/Primary Examiner, Art Unit 2113
Prosecution Insights