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 .
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-16 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Samsung Electronics( WO 2020209641) in view of Balasubramanlan et al. 2021/274380).
For independent claim 1, Samsung Electronics( WO 2020209641) discloses a configuration information sending method and the method comprises: sending configuration information to a multi-card terminal; wherein the configuration information is used for the multi-card terminal to determine a configuration for a first subscriber identity module (SIM) card of the multi- card terminal to leave a first communication system of the base station on a condition that a communication conflict occurs between the first SIM card and a second SIM card of the multi-card terminal ( See paragraphs 5-7).
For independent claim 1, Samsung Electronics( WO 2020209641) discloses all the subject matter of the claimed invention with the exception the method being performed by the base station ( Samsung Electronics( WO 2020209641) is performed by terminal). Balasubramanlan et al.( 2021/274380) from the same or similar fields of endeavor teaches a provision of the method being performed by the base station ( See paragraph 0005 lines 1-15 and boxed 105a and 105b in figure 1). Thus, it would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to use the method being performed by the base station as taught by Balasubramanlan et al.( 2021/274380) in the communication network of Samsung Electronics( WO 2020209641) for the purpose of the method being performed by the base station ( Samsung Electronics( WO 2020209641) instead of the terminal.
For independent claims 9 and 20 are rejected for the same reason as indicating of the claim1.
For depending claims 2-8,10-16, and 19, ( Samsung Electronics( WO 2020209641) also wherein sending the configuration information to the multi-card terminal comprises: in response to receiving trigger information for acquiring the configuration information sent by the multi-card terminal, sending the configuration information to the multi-card terminal( See paragraph 27 lines 1-4);
wherein the trigger information comprises at least one of: the multi-card terminal is provided with a plurality of SIM cards; when the multi-card terminal uses the first SIM card to communicate with the base station, the second SIM card is in an ON state; when the multi-card terminal uses the first SIM card to communicate with the base station, the second SIM card receives information of a service to be started; or when the multi-card terminal uses the first SIM card to communicate with the base station, the communication conflict occurs between the first SIM card and the second SIM card( See paragraph 27 lines 1-14);
wherein the configuration for the first SIM card to leave the first communication system comprises at least one of: a condition for the first SIM card to leave the first communication system; a determination manner of a period of time for the first SIM card to leave the first communication system; or a determination manner of a cycle for the first SIM card to leave the first communication system( See paragraph 27 lines 1-14);
wherein on the condition that the communication conflict occurs between the first SIM card and the second SIM card, the first SIM card performs communication of a first service, the second SIM card performs communication of a second service, and the condition for the first SIM card to leave the first communication system comprises at least one of: a relation between an attribute of the first service and an attribute of the second service satisfies a first condition; the attribute of the first service does not satisfy a second condition; or the attribute of the second service satisfies a third condition( See paragraph 27 lines 1-14);
wherein on the condition that the communication conflict occurs between the first SIM card and the second SIM card, the first SIM card performs communication of a first service, the second SIM card performs communication of a second service, and the determination manner of the period of time for the first SIM card to leave the first communication system comprises at least one of: determining the period of time according to a relation between an attribute of the first service and an attribute of the second service; determining the period of time according to the attribute of the first service; or determining the period of time according to the attribute of the second service( See time in Figure 3A);
wherein on the condition that the communication conflict occurs between the first SIM card and the second SIM card, the first SIM card performs communication of a first service, the second SIM card performs communication of a second service, and the determination manner of the cycle for the first SIM card to leave the first communication system comprises at least one of: determining the cycle according to a relation between an attribute of the first service and an attribute of the second service; determining the cycle according to the attribute of the first service; or determining the cycle according to the attribute of the second service( See Paging Cycle in Figure 3A); and
wherein the attribute of the first service comprises one of: a
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Samsung Electronics( WO 2020209641) in view of Balasubramanlan et al. 2021/274380) and further in view of Nam (2016/0157218).
For claims 21-22, Samsung Electronics( WO 2020209641) in view of Balasubramanlan et al. 2021/274380) disclose all the subject matter of the claimed invention with the exception of a non-transitory computer readable medium having executable codes in a communications network. Nam et al. from the same or similar fields of endeavor teaches a provision of the non-transitory computer readable medium having executable codes ( See paragraphs 0014 and 0052). Thus, it would have been obvious to the person of ordinary skill in the art at the time of the invention to use the non-transitory computer readable medium having executable codes as taught by Nam et al. in the communication network of Samsung Electronics( WO 2020209641) in view of Balasubramanlan et al. 2021/274380) for the purpose of storing codes in the memory to execute the process by the processor.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet 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 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-16 and 19-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12526769 in view of in view of Balasubramanlan et al. 2021/274380) .
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 1-16 of the patent discloses:
an information reporting method, wherein the method is applied to a multi-card terminal, and the method comprises: reporting SIM card information corresponding to pluralities of SIM cards to a network- side device; receiving a first paging message sent by the network-side device; wherein the first paging message is a paging message for paging a first SIM card in an idle state among the pluralities of SIM cards; and in response to determining that the first paging message carries paging cause information, determining whether to perform a paging response according to the paging cause information wherein, the method further comprises: in response to determining that a state of any one of the pluralities of SIM cards has changed or is about to change, reporting updated SIM card information corresponding to the pluralities of SIM cards to the network-side device: receiving a second paging message for paging a second SIM card sent by the network-side device; wherein the second SIM card is an only SIM card in a turn-on state among the pluralities of SIM cards, and the second paging message does not carry the paging cause information; wherein the reporting the SIM card information corresponding to the pluralities of SIM cards to the network-side device comprises: reporting the SIM card information corresponding to the pluralities of SIM cards to the network-side device through at least one of the pluralities of SIM cards; wherein the reporting the SIM card information corresponding to the pluralities of SIM cards to the network-side device comprises: reporting the SIM card information corresponding to the pluralities of SIM cards to the network-side device through a first information unit in a first signaling; wherein before reporting the SIM card information corresponding to the pluralities of SIM cards to the network-side device, the method further comprises: reporting capability information for indicating a target terminal capability to the network- side device; wherein the target terminal capability is used for indicating whether the multi-card terminal supports a capability of reporting the SIM card information corresponding to the pluralities of SIM cards; wherein the reporting the capability information for indicating the target terminal capability to the network-side device comprises: reporting the capability information for indicating the target terminal capability to the network-side device through a second information unit of a second signaling; further comprising:5receiving target configuration information sent by the network-side device; wherein the target configuration information is used for indicating configuration information when the multi-card terminal reports the SIM card information corresponding to the pluralities of SIM cards; and the reporting the SIM card information corresponding to the pluralities of SIM cards to the network-side device comprises: reporting the SIM card information corresponding to the pluralities of SIM cards to the network-side device based on the target configuration information; and wherein the target configuration information is used for indicating at least one of: whether to allow the multi-card terminal to report the SIM card information corresponding to the pluralities of SIM cards: a SIM card identifier that allows reporting the SIM card information corresponding to the pluralities of SIM cards; a period duration of reporting the SIM card information corresponding to the pluralities of SIM cards: a reporting condition for reporting the SIM card information corresponding to the pluralities of SIM cards; a content of the reported SIM card information corresponding to the pluralities of SIM cards; or a reporting format when reporting the SIM card information corresponding to the pluralities of SIM cards.
The following is mapping between the instant claim of the invention and the claim of the patent:
For instant application claim: a configuration information sending method, performed by a base station (The claims of the patent do not teach but See 103(a) rejection in this office action) and the method comprises: sending configuration information to a multi-card termina (reporting SIM card information corresponding to pluralities of SIM cards to a network- side device) ; receiving a first paging message sent by the network-side device( See receiving a second paging message for paging a second SIM card sent by the network-side device in the parent claim 1) ; wherein the configuration information is used for the multi-card terminal to determine a configuration for a first subscriber identity module (SIM) card of the multi- card terminal to leave a first communication system of the base station on a condition that a communication conflict occurs between the first SIM card and a second SIM card of the multi-card terminal during( See in response to determining that a state of any one of the pluralities of SIM cards has changed or is about to change, reporting updated SIM card information corresponding to the pluralities of SIM cards to the network-side device: receiving a second paging message for paging a second SIM card sent by the network-side device in the parent claim 1).
Applicant's claims 1-16 and 19-22 broaden the scope of the claims 1-16 of patent number by eliminating “ the first paging message” and “ wherein, the method further comprises: in response to determining that a state of any one of the pluralities of SIM cards has changed or is about to change, reporting updated SIM card information corresponding to the pluralities of SIM cards to the network-side device: receiving a second paging message for paging a second SIM card sent by the network-side device; wherein the second SIM card is an only SIM card in a turn-on state among the pluralities of SIM cards, and the second paging message does not carry the paging cause information” from the claims 1-16 of patent number. It has been held that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re karlson, 136 USPQ 184 (CCPA). Also note Ex Parte Raine, 168 USPQ 375 (bd. App. 1969); omission of a reference element whose function is not need would be obvious to one skilled in the art.
This is a non-provisional statutory double patenting rejection because the patentably indistinct claims have in fact been patented.
For independent claim 1,9, and 19, the patent claims disclose all the subject matter of the claimed invention with the exception the method being performed by the base station . Balasubramanlan et al.( 2021/274380) from the same or similar fields of endeavor teaches a provision of the method being performed by the base station ( See paragraph 0005 lines 1-15 and boxed 105a and 105b in figure 1). Thus, it would have been obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to use the method being performed by the base station as taught by Balasubramanlan et al.( 2021/274380) in the communication network of the claims of the patent for the purpose of the method being performed by the base station .
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hong (2023/0379879) is cited to show a system which is considered pertinent to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANG T TON whose telephone number is (571)272-3171. The examiner can normally be reached Monday to Friday 5:30 AM to 3:00 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, Ayaz Sheikh can be reached at 571-272-3795. 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.
/DANG T TON/Primary Examiner, Art Unit 2476 /D.T.T/Primary Examiner, Art Unit 2476