DETAILED ACTION
Brief Summary
On March 4, 2025 a Non-Final Office Action (NFOA) was mailed in which, among other findings, claims 15-20 were rejected under 35 USC § 251 for “Recapture” rejections; claims 1-5, 7-12, and 14-20 were rejected on the grounds of non-statutory double patenting; and claims 1-4, 7-11, and 14-20 were rejected under 35 USC § 103 as being obvious over Zhu in view of Ng.
On June 4, 2025, the Applicant filed their response to the NFOA, which included amendments to the claims and arguments toward the outstanding rejections.
On August 25, 2025, a second Non-Final Office action was mailed in which, among other findings, the “Recapture”, double patenting, and prior art rejections were maintained.
On November 25, 2025, the Applicant filed their response to the August 25, 2025 Office action which included the canceling of the prior claim set and the addition of new claims 21-37, which appear to be the same claims presented in the Applicant’s prior response but renumbered.
On March 5, 2026, a Final Rejection was mailed in which the Rejections from the 8/25/25 Office Action were maintained.
On May 5, 2026, the Applicant filed a Response After Final Rejection with arguments toward the outstanding rejections.
On May 28, 2026, an Advisory Action was mailed in which the Applicant’s arguments were found to be unpersuasive.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/5/26 has been entered.
Response to Arguments
The Applicant’s arguments have been fully considered and are addressed below in the order presented in the Applicant’s Remarks.
Recapture
The Applicant’s amendments to the claims are sufficient to overcome the recapture rejections.
Double Patenting Rejections
The Examiner acknowledges the Applicant's statement that they will file a terminal disclaimer at a later date, however the instant action comprises new statutory double patenting rejections that are necessitated by the Applicant’s latest claim amendments. Statutory double patenting rejections cannot be overcome by a terminal disclaimer.
Rejections under 35 USC § 103
The Applicant’s amendments overcome the outstanding prior art rejections.
Reissue Applications
The reissue declaration is objected to because the applicant has not explained in remarks accompanying the continuation reissue application why a copy of the declaration for the parent reissue application is sufficient. See MPEP 1451(II)(D)(1), which recites in part (emphasis added),
(1) Where a continuation reissue application is filed with a copy of the reissue oath/declaration from the parent reissue application, and the parent reissue application is not to be abandoned, the reissue oath/declaration should be accepted by the Office of Patent Application Processing (OPAP) without further evaluation, because it is an oath/declaration, albeit improper under 35 U.S.C. 251. The examiner should, however, reject the claims of the continuation reissue application under 35 U.S.C. 251 as being based on an oath/declaration that does not identify an error being corrected by the continuation reissue application, and should require a new oath/declaration that identifies a new error or a statement explaining compliance with 37 CFR 1.175(f)(2) if appropriate. If the same error corrected in the parent is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a statement is needed to explain compliance with 37 CFR 1.175(f)(2) for a reissue application filed on or after September 16, 2012. For these applications, a petition under 37 CFR 1.183 is not needed. For a reissue application filed before September 16, 2012, a petition under 37 CFR 1.183 will be needed to waive pre-AIA 37 CFR 1.175(e) in order to rely on the same error identified in the parent but being corrected in a different way. See 37 CFR 1.175(f)(2) for reissue applications filed on or after September 16, 2012, and pre-AIA 37 CFR 1.175(e) for reissue applications filed before September 16, 2012. One of form paragraphs 14.01.01, 14.01.02, or 14.01.03 may be used.
Claims 21-37 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 21,27, and 33 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 6,13, and 20 of prior U.S. Patent No. RE49,397. This is a statutory double patenting rejection.
A claim chart is provided below to show how claim 21 of the instant application comprises all of the limitations of claim 6 (in independent form) of RE49,397. Independent claims 27 and 33 of the instant application have the same limitations in the same manner as claims 13 and 20 of RE49,397, however separate claims charts are not provided for brevity.
Claim 21 Instant Application
RE49,397 – claim 6
21. A method in a wireless device, comprising:
(b) receiving a discovery burst from a network node, the discovery burst comprising multiple signals associated with the network node and received within at least one subframe, each of the multiple signals having one or more associated measurement functions, and
(c) wherein the discovery burst comprises N subframes occurring with a periodicity of once every M subframes, where N is greater than or equal to 1 and where M is greater than or equal to 10; and
(d) performing at least one radio measurement based at least in part on a particular one of the signals of the discovery burst, the performed at least one radio measurement corresponding to a measurement function associated with the particular signal of the discovery burst;
(e) wherein the received multiple signals comprise one or more of: a cell-specific reference signal and a channel state information reference symbol, and the multiple signals are received in subframes other than subframes 0 and 5;
the method further comprising: (a) communicating capability information to a network node, the capability information indicating to the network node whether the wireless device is capable of using the discovery burst for performing at least one radio measurement.
6. A method in a wireless device, comprising:
(a) communicating capability information to a network node, the capability information indicating to the network node whether the wireless device is capable of using a discovery burst for performing at least one radio measurement;
(b) receiving the discovery burst from the network node, the discovery burst comprising multiple signals associated with the network node and received within at least one subframe, each of the multiple signals having one or more associated measurement functions, and
(c) wherein the discovery burst comprises N subframes occurring with a periodicity of once every M subframes, where N is greater than or equal to 1 and where M is greater than or equal to 10; and
(d) performing the at least one radio measurement based at least in part on a particular one of the signals of the discovery burst, the performed at least one radio measurement corresponding to a measurement function associated with the particular signal of the discovery burst,
(e) wherein the received multiple signals comprises of one or more of a cell-specific reference signal and a channel state information reference symbol, and the multiple signals are received in subframes other than subframes 0 and 5.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERON J SORRELL whose telephone number is (571)272-4160. The examiner can normally be reached M-F 9AM-6PM EST.
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Signed:
/ERON J SORRELL/Primary Examiner, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992
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