`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`14/609, 145
`
`01/29/2015
`
`Stefano GALLI
`
`734356.409C4
`
`1007
`
`Seed IP Law Group/Panasonic
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`SHAH, SAUMIT
`
`PAPER NUIVIBER
`
`ART UNIT
`
`2414
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/19/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patentinfo @ seedip.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/609,145 GALLI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`SAUMIT SHAH its“ 2414
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 03/23/2015.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 10-19 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`
`7)|Z| Claim(s 1011 13-15 18 and 19 is/are rejected.
`)
`8)|Z| Claim(s) 12,16 and 17is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`:/'I’vaIW.usnI‘.0. ovI’ atentS/init events/
`h/index.‘s orsend an inquiryto PPI-iieedback{®usgtc.00v.
`
`hit
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 01/29/2015 is/are: a)IXI accepted or b)|:l objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20160609
`
`

`

`Application/Control Number: 14/609,145
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`Art Unit: 2414
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`Page 2
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`1.
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`The present application is being examined under the pre-AIA first to invent provisions.
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`DETAILED ACTION
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`2.
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`This office action is a response to the application filed on 01/29/2015, which is a continuation of
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`application 14/218459 filed on 03/18/2014. Claims 10-19 are pending and ready for examination.
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`Priority
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`3.
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`Acknowledgement is made of applicant’s claims for foreign priority under 35 U.S.C. 119 (a)—(d).
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`The certified copy has been filed in parent application no. 2007-266950 (Japan) filed on 10/12/2007.
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`Double Patenting
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`4.
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`The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in
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`public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise
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`extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple
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`assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not
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`identical, but at least one examined application claim is not patentably distinct from the reference claim(s)
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`because the examined application claim is either anticipated by, or would have been obvious over, the
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`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
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`438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`

`

`Application/Control Number: 14/609,145
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`Art Unit: 2414
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`Page 3
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1 .321 (d) may be used to
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`overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided
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`the reference application or patent either is shown to be commonly owned with this application, or claims
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`an invention made as a result of activities undertaken within the scope of a joint research agreement. See
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`MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA
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`as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to
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`examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in
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`compliance with 37 CFR 1.321 (b).
`
`The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit
`
`www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form
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`(e.g., PTO/SB/25, PTO/SB/26, PTO/AlA/25, or PTO/AlA/26) should be used. A web-based eTerminal
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`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
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`eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`5.
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`Claims 10, 11, 13, 14, 15, 18 and 19 are rejected on the ground of nonstatutory double patenting
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`as being unpatentable over claims 1, 2, 3, 8, 9 and 12 of U.S. Patent No. 8971422. Although the claims at
`
`issue are not identical, they are not patentably distinct from each other because the claims of the instant
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`application are an obvious variation of the claims of the patent.
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`Regarding claims 10, 11, 13, 14 and 15, the patent 8971422 discloses as set forth below:
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`Claims of the instant application
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`Claims of the patent 8971422
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`Claim 10:
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`Claim 1:
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`communicating based on a first communication
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`A communication apparatus which is capable of
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`A communication apparatus which is capable of
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`communicating based on a first communication
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`

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`Application/Control Number: 14/609,145
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`Page 4
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`Art Unit: 2414
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`system via a transmission channel, wherein
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`system via a transmission channel, to which
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`another communication apparatus is
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`another communication apparatus capable of
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`communicating based on a second communication
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`communicating based on a second communication
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`system via the transmission channel, comprising:
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`system connects comprising:
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`a transmitter which is adapted for transmitting a
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`an integrated circuit;
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`first notice, which is rotated by a first phase vector,
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`a housing which includes the integrated circuit;
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`within a first notification domain in a first
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`a first connector which is adapted for connecting
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`communication cycle;
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`the transmission channel provided on a first side of
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`a detector which is adapted for detecting a second
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`the housing;
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`notice, which is rotated by a second phase vector
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`a indicator which is provided on a second side of
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`and transmitted from the another communication
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`the housing (100); wherein the integrated circuit
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`apparatus, within a second notification domain in a
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`comprising,
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`second communication cycle after the first
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`a transmitter which transmits a first notice including
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`communication cycle;
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`a first notification signal which is rotated by a first
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`wherein the transmitter is adapted for transmitting a
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`phase vector within a first notification domain in a
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`data signal in a data transmission domain of the
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`first communication cycle; and
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`second communication cycle or a third
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`a detector which is capable of detecting a second
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`communication cycle after the second
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`notice transmitted from the another communication
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`communication cycle,
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`apparatus within a second notification domain in a
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`wherein the data transmission domain is allocated
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`second communication cycle after the first
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`to the first communication system on the basis of
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`communication cycle;
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`the first notice and the second notice.
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`wherein the transmitter transmits a data signal
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`within a first data domain in the second
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`communication cycle or a third communication
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`cycle after the second communication cycle,
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`wherein the first data domain is allocated to the first
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`

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`Application/Control Number: 14/609,145
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`Page 5
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`Art Unit: 2414
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`communication system on the basis of the first
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`noflce.
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`Claim 2:
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`The communication apparatus according to claim
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`1 , wherein the first data domain is allocated to the
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`first communication system on the basis of (1) the
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`first notice or (2) the first notice and the second
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`Claim 11 :
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`noflce.
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`Claim 3:
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`The communication apparatus according to claim
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`The communication apparatus according to claim
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`10, wherein the first notification domain is allocated
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`1, wherein the first notification domain is allocated
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`to the first communication system and the second
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`to the first communication system and the second
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`notification domain is allocated to the second
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`notification domain is allocated to the second
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`storing the allocation order.
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`communication system.
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`communication system.
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`Claim 13:
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`Claim 8:
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`The communication apparatus according to claim
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`8. The communication apparatus according to
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`12, further comprising a memory for storing the
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`claim 7, further comprising a memory for previously
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`allocation order of the data transmission domain in
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`advance.
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`Claim 14:
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`Claim 9:
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`The communication apparatus according to claim
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`The communication apparatus according to claim
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`10, wherein the transmission channel is a power
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`1, wherein the transmission channel is a power line
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`line which provides an alternating current, wherein
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`which is provide an alternating current, wherein the
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`the first notification domain and the second
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`first notification domain and the second notification
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`notification domain are allotted on the basis of zero
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`domain are allotted on the basis of zero cross
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`
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`cross points of the alternating current. points of the alternating current.
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`

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`Application/Control Number: 14/609,145
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`Page 6
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`Art Unit: 2414
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`Claim 15:
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`Claim 12:
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`The communication apparatus according to claim
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`The communication apparatus according to claim
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`10, wherein the first notification domain and the
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`1, wherein the first notification domain and the
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`second notification domain are allotted periodically
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`second notification domain are allotted periodically
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`on the basis of a predetermined interval.
`on the basis of a predetermined interval.
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`Regarding claim 10; in view of the above, it is clear that the conflicting claims are not patentably
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`distinct from each other because the claim of the instant application and the claim of the patent include
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`similar features of transmitting a first notice, detecting a second notice, transmitting a data signal in a data
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`transmission domain of the second cycle or a third cycle, and allocating the data transmission domain to
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`the first communication system. The difference between the application claim 10 and the patent claims 1,
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`2 lies in the fact that the patent claims include elements such as an integrated circuit, a housing for the
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`integrated circuit, a connector for connecting the transmission channel on the housing and an indicator.
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`Since the application claim 10 is an obvious variation of the patent claims, it is not patentably distinct from
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`claims 1 and 2 of the patent.
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`Similarly, claims 11, 13, 14 and 15 are also not patentably distinct from claim 3,8,9 and 12 of the
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`patent as shown above.
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`Claims 18 and 19 are method and system claims related to the apparatus of claim 10 with the
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`same features. These claims are also not patentably distinct from claims 1 and 2 of the patent for the
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`same reasons mentioned above for claim 10.
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`

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`Application/Control Number: 14/609,145
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`Art Unit: 2414
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`Page 7
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`Allowable Subject Matter
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`6.
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`Claims 12, 16 and 17 are objected to as being dependent upon a rejected base claim, but would
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`be allowable if rewritten in independent form including all of the limitations of the base claim and any
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`intervening claims.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner should
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`be directed to SAUMIT SHAH whose telephone number is (571 )272—6959. The examiner can normally
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`be reached on M-F 8:30 AM - 5:00 PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Edan Orgad can be reached on 571 -272-7884. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained from
`
`either Private PAIR or Public PAIR. Status information for unpublished applications is available through
`
`Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC)
`
`at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative
`
`or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-
`
`1000.
`
`/SAUMIT SHAH/
`
`Examiner, Art Unit 2414
`
`/EDAN ORGAD/
`
`Supervisory Patent Examiner, Art Unit 2414
`
`