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 .
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 1-2, 5-6, 9-10, 13-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/763,417 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
As to claim 1, conflicting claim 11 corresponds.
As to claim 2, conflicting claim 15 corresponds.
As to claim 5, conflicting claim 16 corresponds.
As to claim 6, conflicting claim 20 corresponds.
As to claim 9, conflicting claim 1 corresponds.
As to claim 10, conflicting claim 5 corresponds.
As to claim 13, conflicting claim 6 corresponds.
As to claim 14, conflicting claim 10 corresponds.
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 1-2, 5-6, 9-10, 13-14 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Xiao (US 2026/0012773).
As to claims 1, 9, Xiao discloses a user equipment (UE) (see “User equipment 150” in at least figures 1, and 15) in a wireless communication system, the UE 150 comprising: a transceiver (see paragraph [0127]); a controller 151 (see figure 15) coupled with the transceiver, and configured to: receive, from a base station (see paragraph [0115]), a system information block (SIB) (see paragraphs [0077]) including a first indication on whether a transmission of a second indication is allowed (see paragraphs [0129], [0131], [0132]), identify that a UE capability is restricted for a multi-universal subscriber identity module (MUSIM) operation (see paragraphs [0129], [0131], [0132]), and transmit, to the base station, a radio resource control (RRC) message including the second indication indicating a UE temporary capability restriction due to the MUSIM operation (see paragraphs [0129], [0131], [0132]).
As to claims 2, 6, 10, 14, Xiao discloses that the RRC message includes an RRC setup complete message or an RRC resume complete message (see paragraphs [0007], [0090], [0145], [0176]).
As to claims 5, 13, they are rejected for similar reasons with respect to independent claim 1 as set forth above.
Allowable Subject Matter
Claims 3-4, 7-8, 11-12, 15-16 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.
As to claims 3-4, 11-12, the prior art of record fail to anticipate, or render obvious, that the controller is further configured to: receive, from the base station, information configuring a timer associated with the MUSIM operation, and in case that the UE has the UE temporary capability restriction on a configuration of the UE: transmit, to the base station, a message for requesting a release of the configuration of the UE, and start the timer.
As to claims 7-8, 15-16, they are discussed for similar reasons with respect to claims 3-4 as set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wong (US 2024/0089709), Abraham (US 2024/0276207) disclose handling multi-universal subscriber identity module (MUSIM) operations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NGUYEN THANH VO whose telephone number is (571)272-7901. The examiner can normally be reached Mon-Fri 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Anderson can be reached at (571) 272-4177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NGUYEN T VO/ Primary Examiner, Art Unit 2646