DETAILED ACTIONNotice 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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,461,611. Although the claims at issue are not identical, they are not patentably distinct from each other because they are a broader recitation of the U.S. Patent.
Instant Application 19/354,086
U.S. Patent No. 12,461,611
1. A pen configured to communicate with a sensor device, the pen comprising: an integrated circuit that generates a sequence of digital values corresponding to pen pressures, wherein the sequence of digital values includes a first value and a second value acquired after the first value, the integrated circuit controls the pen to send the first value to the sensor device as a standard digital value having a first bit length, and the integrated circuit controls the pen to send the second value to the sensor device as a relative value to the first value, the relative value having a second bit length different from the first bit length.
1. A pen configured to supply an internal digital value of a first number of bits to a sensor device, the pen comprising: an integrated circuit that acquires a series of the internal digital values, wherein the series of the internal digital values include a first internal digital value and a second internal digital value acquired subsequently to the first internal digital value, the integrated circuit supplies the first internal digital value to the sensor device by controlling transmission of first transmission data including a first standard digital value corresponding to the first internal digital value, and the integrated circuit supplies the second internal digital value to the sensor device by controlling transmission of second transmission data of a second number of bits different from the first number and corresponding to a relative value between the first internal digital value obtained by restoration from the first standard digital value and the second internal digital value.
As can be shown above the instant application is a broader recitation of the U.S. Patent. Claims 2-20 of the instant application are read on by claims 1-18 of the U.S. Patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,073,034. Although the claims at issue are not identical, they are not patentably distinct from each other because they are a broader recitation of the U.S. Patent. Similar reasonings as the rejection above in view of U.S. Patent No. 12,461,611 are pertinent to this rejection, where the instant application further broadens over each subsequent parent application.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,747,917. Although the claims at issue are not identical, they are not patentably distinct from each other because they are a broader recitation of the U.S. Patent. Similar reasonings as the rejection above in view of U.S. Patent No. 12,461,611 are pertinent to this rejection, where the instant application further broadens over each subsequent parent application.
Conclusion
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/JONATHAN A BOYD/Primary Examiner, Art Unit 2627
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