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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/060,569
`
`10/01/2020
`
`TAKAKO HORI
`
`731456.476C2
`
`7551
`
`Seed IP Law Group LLP/Panasonic (PIPCA)
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
`
`RENNER, BRANDON M
`
`ART UNIT
`
`2419
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`11/16/2021
`
`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):
`USPTOeAction @ SeedIP.com
`
`pairlinkdktg @seedip.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-18 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-18 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)(] The specification is objected to by the Examiner.
`11) The drawing(s) filed on 10/1/2020 is/are: a)(¥) accepted or b)() 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).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20211103
`
`Application No.
`Applicant(s)
`17/060,569
`HORI et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`BRANDON M RENNER
`2419
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 10/1/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/060,569
`Art Unit: 2419
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine groundedin public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
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`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
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`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,
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`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 timelyfiled terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321 (d)
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`may be used to overcome an actual or provisional rejection based on nonstatutory
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`double patenting provided the reference application or patent either is shown to be
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`commonly owned with the examined application, or claims an invention made as a
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`result of activities undertaken within the scope of a joint research agreement. See
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`

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`Application/Control Number: 17/060,569
`Art Unit: 2419
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`Page 3
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`MPEP § 717.02 for applications subject to examination under the first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146et seq.for
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`applications not subject to examination under the first inventor to file provisions of the
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`AlA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`The USPTOInternet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The 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
`
`befilled 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/process/file/efs/guidance/eT D-info-l.jsp.
`
`Claims 1-18 are rejected on the ground of nonstatutory double patenting as being
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`unpatentable over claims 1-19 of U.S. Patent No. 10834146. Although the claims at
`
`issue are not identical, they are not patentably distinct from each other because the
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`claims of the instant application are anticipated by the claims of patent 10834146 as
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`shownin the table below.
`
`Claim 1 of instant application
`
`Claim 1 of patent 10834146
`
`A communication apparatus, for use ina_|A terminal, for use in a communication
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`apparatuses including the communication|support a codec mode request message,
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`communication system including a base
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`system including a basestation, a first set
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`station, a first set of communication
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`of terminals including the terminal which
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`

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`Application/Control Number: 17/060,569
`Page 4
`Art Unit: 2419
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`apparatus which support a codec mode
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`and a second set of terminals which do
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`request message, and a second setof
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`not support the codec mode request
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`communication apparatuses which do not
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`message, the terminal comprising:
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`support the codec mode request
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`capability notification circuitry, which, in
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`message, the communication apparatus
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`operation, notifies the base station of
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`comprising: a transmitter, which, in
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`capability information indicating that the
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`operation, notifies the base station of
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`terminal supports the codec mode
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`capability information indicating that the
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`request message; reception circuitry,
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`communication apparatus supports the
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`which receives, from the base station, in
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`codec mode request message; a
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`responseto the capability information, the
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`receiver, which, in operation, receives,
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`codec mode request message including a
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`from the basestation, in response to the
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`codec mode thatis determined by the
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`capability information, the codec mode
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`base station in accordance with a radio
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`request message including a codec
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`condition of the terminal, wherein the
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`mode, wherein the base station sends the
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`base station sends the codec mode
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`codec mode request message only to the
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`request message onlyto the first set of
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`first set of communication apparatuses in
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`terminals in responseto the capability
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`response to the capability information
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`information received therefrom, and does
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`received therefrom, and does not send
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`not send the codec mode request
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`the codec mode request message to the
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`message to the second set of terminals;
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`second set of communication
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`mode switching notification circuitry,
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`apparatuses; and circuitry, which, in
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`which, in operation, notifies an encoder of
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`operation, indicates to an upper layer the
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`switching to the codec mode includedin
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`

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`Application/Control Number: 17/060,569
`Art Unit: 2419
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`Page 5
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`codec mode included in the codec mode_|the codec mode request message; and
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`request message.
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`mode switching acknowledgement
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`circuitry, which, in operation, transmits a
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`response message to the basestation
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`when confirming that the encoder
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`switches the codec mode.
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`Appropriate correction required.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to BRANDON M RENNER whosetelephone number is
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`(571)270-3621. The examiner can normally be reached Monday-Friday 7am-5pm EST.
`
`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:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Hadi Armouche can be reached on (571)270-3618. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`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,
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`

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`Application/Control Number: 17/060,569
`Art Unit: 2419
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`Page 6
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`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/BRANDON M RENNER/
`Primary Examiner, Art Unit 2419
`
`