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 .
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, 10-11, and 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent Nos. 12386441, 11836306, and 11429210. Please see the chart below for claim correspondence.
19/269130
USPN12386441
USPN11836306
USPN11429210
1
1
1
1
2
2
-
-
3
2
-
-
4
-
-
-
5
-
-
-
6
-
-
-
7
-
-
-
8
-
-
-
9
-
-
-
10
9
8
9
11
10
-
-
12
-
-
-
13
-
-
-
14
-
-
-
15
-
-
-
16
-
-
-
17
1
1
1
18
2
-
-
19
-
-
-
20
-
-
-
Although the claims at issue are not identical, they are not patentably distinct from each other because: The claims as shown above all recite similar features. It would have been obvious to one of ordinary skill in the art to use the claimed features of the reference application/patent to arrive at the instant claims, yielding predictable results and no more than one of ordinary skill in the art would expect from such an arrangement. Please see an example of claim language correspondence below.
19/269130
USPN 12.386,441
1. A method of wireless communication executed by an apparatus, comprising: relaying data received from a human interface device at a first time slot of a sequence of time slots of a frame to a computing device coupled to the apparatus; and
1. A method of wireless communication, the method comprising: receiving, at a receive mode of a device via a radio frequency channel, data from a human interface device at a respective time slot of a frame, wherein the frame comprises a sequence of time slots; relaying the received data to a computing device coupled to the device; and
transmitting (i) an acknowledgment to the data and (ii) lighting effect configuration data to the human interface device at a second time slot succeeding the first time slot of the sequence of time slots of the frame.
transmitting, at a transmit mode of the device via the radio frequency channel at a last time slot of the frame, an acknowledgment and a lighting effect configuration data to the human interface device.
The rest of the claims listed above correspond in a similar manner as discussed above.
Allowable Subject Matter
Claims 4-9,12-16, and 19-20 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM R GIESY whose telephone number is (571)272-7555. The examiner can normally be reached Mon-Fri 8-6.
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, Patrick Edouard can be reached at 5712727603. 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.
/ADAM R. GIESY/Primary Examiner, Art Unit 2622
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