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 .
Response to Arguments
Applicant's arguments filed December 10, 2025, regarding claims 8 and 19, have been fully considered but they are not persuasive.
On page 2-3, Applicant argues, “The Office Action states that Park '504 discloses the claimed subject matter of claims 8 and 19, including that the DU obtains a report with a layer 3 measurement from the UE and performs an action that depends on the layer 3 measurement in the report only when the measurement ID of the report is associated with the DU.
Applicant respectfully submits that Park '504 does not disclose "obtaining a report with a layer 3 measurement from the UE" by the DU as recited by claim 8, nor does it disclose the DU "perform[ing] an action that depends on the layer 3 measurement in the report only when the measurement ID of the report is associated with the DU" as recited by both claims 8 and 19. Instead, Park '504 teaches that "the base station CU may receive, from the wireless device via the first base station DU, a measurement report comprising one or more measurement results of at least one cell of the second base station DU." Park '504, paragraph [0366]. This portion of Park '504 describes the CU receiving measurement reports from the UE via the DU, not the DU obtaining the report directly from the UE as required by the claims.
The cited paragraphs in Park '504 describe coordination of power control parameters between the CU and DUs for multiple DU connections, but do not teach the DU independently obtaining layer 3 measurement reports from the UE and making autonomous decisions about whether to act based on measurement ID association with the DU. Park '504 describes that "the base station CU may determine a base station DU addition to establish multiple DU connections with the second base station DU for the wireless device based on the measurement report." Park '504, paragraph [0367]. This portion of Park '504 describes the CU making decisions based on measurement reports and then coordinating with DUs, rather than the DU independently obtaining reports and acting based on measurement ID association.
The claimed feature of "performing an action that depends on the layer 3 measurement in the report only when the measurement ID of the report is associated with the DU" as recited by claims 8 and 19 means, in other words, that the DU makes an independent determination about measurement ID association before acting. Park '504 does not disclose this conditional action based on measurement ID association with the DU. Park '504 teaches coordination mechanisms where "the base station CU may send, to the first base station DU based on the measurement report, a first message indicating a base station DU addition for the wireless device." Park '504, paragraph [0383]. This describes CU-initiated coordination based on measurement reports received by the CU, not DU-initiated actions based on measurement reports obtained directly by the DU.
Accordingly, Applicant respectfully submits that Park '504 fails to anticipate the claimed subject matter of claims 8 and 19, which recite that the DU obtains measurement reports from the UE and performs actions conditionally based on measurement ID association with the DU. Applicant respectfully requests that the rejection of claims 8 and 19 under 35 U.S.C. § 102 be withdrawn.”
The Examiner respectfully disagrees with the above arguments. First, the Examiner respectfully submits that the claim does not say that the UE directly obtaining reporting the measurement. However, Park 504’ also describes that a UE transmits measurement report including measurement parameters (such as cell identifier, RSRP/RSRQ values) to CU through a second DU (e.g. paragraph [0365]-[0366]). That is, the UE directly transmits the measurement report to second DU. As per the argument regarding the second limitation that the DU performing an action depending on the measurement report only when the measurement ID of the report is associated with the DU, it is clear that the DU receives the measurement report including such as cell identifier, RSRP/RSRQ value (which in this case associated with the DU, if not, the DU would have been received it). DU further forwards the measurement report including the measurement parameters or elements to the CU, and transmitting or forwarding the measurement report is taking or performing an action.
Furthermore, the Examiner respectfully submits that, even though through CU, a first/second DU receives the measurement report including the measurement parameters from UE and determines a first power coordination parameters for multiple DU connection of the UE based on a first message including the measurement parameters or elements forwarded from the CU (and this is simply performing an action based on the measurement parameters or elements associated with the first/second DU) (paragraph [0367]-[0370]; [0389]; [0399]-[0400]; and so on).
Therefore, the arguments regarding claims 8 and 19 are not persuasive in view of Park ‘504 and the above brief response.
Applicant’s arguments, with respect to claims 1, 16-17, and 22, have been fully considered and are persuasive. The rejection of 1-7, 16-17, and 22 has been withdrawn. However, the Applicant need to file terminal disclaimer for the double patenting rejection.
Allowable Subject Matter
Claims 9-11 are 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.
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 1-7, 16-17, and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 9, 11-12, and 14-15, respectively of copending Application No. 18/281,131. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are the same as the claims of the copending application except the performing, at the DU, an action (in the copending application) … is when the measurement ID of the report is one of the measurement IDs in the second subset instead of the first subset associated with the CU. However, it is obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the performing, at the DU, an action … is when the measurement ID of the report is one of the measurement IDs in the second subset instead of the first subset associated with the CU as the DU can directly access, the measurement ID reported by the UE, by DU in order to improve securing of user data and the communication.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 8, 12-15, and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Park et al. (US 2021/0112504 A1).
Regarding claim 8, Park ‘504 discloses a method for handling layer 3 measurements of a user equipment, UE, the method being performed by a distributed unit, DU, of an access network node, the DU being operatively connected to a CU of the access network node (e.g. figs. 20-28), the method comprising: obtaining a report with a layer 3 measurement from the UE, the report having a measurement ID (fig. 20; paragraph [0365]-[0367]; [0370]; [0372]-[0373; [0376]; [0378]-[0379]; [0383]; [0388]-[0389]; and so on, illustrating DU receives RRC layer measurement report including ID or parameter from UE); and performing an action that depends on the layer 3 measurement in the report only when the measurement ID of the report is associated with the DU (paragraph [0366]-[0392]; [0396]; [0397]-[0401]; and etc., the DU performs action based on measurement report when the received ID or parameter associated with the DU or parameter or ID of a cell of the DU).
Regarding claim 19, Park ‘504 discloses a distributed unit, DU, of an access network node for handling layer 3 measurements of a user equipment, UE, the DU being operatively connected to a central unit, CU, of the access network node (e.g. figs. 20-28), the DU comprising processing circuitry, the processing circuitry being configured to cause the DU (paragraph [0393]; [0407]; and etc.) to: obtain a report with a layer 3 measurement from the UE, the report having a measurement ID (paragraph [0148]; [0167]; [0366]-[0367]; [0370]; [0376]; [0378]-[0379]; [0383]; [0389]; [0396]; [0399]-[0400]; and so on); and perform an action that depends on the layer 3 measurement in the report only when the measurement ID of the report is associated with the DU (figs. 22-24; paragraph [0366]-[0367]; [0370]; [0376]; [0378]-[0379]; [0383]; [0389]; [0396]; [0399]-[0400]; [0366]-[0392]; [0396]; [0397]-[0401]; and etc.).
Regarding claim 12, Park ‘504 discloses wherein the method further comprises: forwarding the report to the CU when the measurement ID of the report is not associated with the DU (figs. 20-21, paragraph [0365]; and etc.).
Regarding claim 13, Park ‘504 discloses wherein the report is forwarded to the DU from the CU (figs. 20-22, 24; and so on).
Regarding claim 14, Park ‘504 discloses wherein the method further comprises: providing a request to the CU for the DU to perform the action (paragraph [0371]-[0373]; [0376]; [0378]-[0379]; [0383]; [0385]-[0390]; [00392]-[0394]; [0397]-[0401]; and so on).
Regarding claim 15, Park ‘504 discloses wherein the method further comprises: providing an indication to the CU that the DU has performed the action (figs. 20-24; paragraph [0371]-[0373]; [0376]; [0378]-[0379]; [0383]; [0385]-[0390]; [00392]-[0394]; [0397]-[0401]; and so on).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIBROM T HAILU whose telephone number is (571)270-1209. The examiner can normally be reached M-F 8:00 AM to 5:30 PM.
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, HUY D VU can be reached at (571)272-3155. 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.
/KIBROM T HAILU/Primary Examiner, Art Unit 2461