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 .
Drawings
The replacement drawings filed on 3/8/2024 are accepted.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,800,584. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader in every instance when compared to the patented claims.
Instant claims 1-4 are broader than patented claim 1.
Instant claims 5 and 6 are broader than patented claims 2 and 3.
Instant claims 7-10 are broader than patented claim 4.
Instant claims 11 and 12 are broader than patented claims 5 and 6.
Instant claims 13-16 are broader than patented claim 7.
Instant claims 17 and 18 are broader than patented claims 8 and 9.
Claim Rejections - 35 USC § 103
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Keller et al. (US-2019/0297538 hereinafter, Keller) in view of Ryu (US-2021/0045029).
Regarding claim 1, Keller teaches a method for providing a 5G mobile network (Fig. 5 [NR] and Page 5 [0107]), comprising:
providing a first base station having a first coverage area for a first Radio Access Network (RAN); (Fig. 5 [LTE] and Page 5 [0107-0108])
providing a second base station (Fig. 5 [eLTE]) having a second coverage area, the second coverage area within the first coverage area of the first base station for an overlay RAN; (Page 5 [0110])
providing a 5G base station (Fig. 5 [NR]) having a third coverage area and a part of the overlay RAN; (Fig. 2C [New RAN]) and
determining, by a 5G Interworking Function (IWF) device (Fig. 7 [102]), which subscribers are to be serviced by the overlay RAN and which subscribers are to be serviced by the first RAN. (Page 16 [0307-0311])
Keller differs from the claimed invention by not explicitly reciting the third coverage area within the first coverage area and within the second coverage area.
In an analogous art, Ryu teaches a method for providing a 5G mobile network (Abstract), comprising:
providing a first base station (Fig. 1 [4G only eNB]) having a first coverage area for a first RAN; (Fig. 1 [LTE])
providing a second base station (Fig. 1 [eNB DU] & [0062]) having a second coverage area, the second coverage area within the first coverage area of the first base station for an overlay RAN; (Fig. 1 [4G+5G] and Page 4 [0062])
providing a 5G base station (Fig. 1 [5G RU]) having a third coverage area within the first coverage area and within the second coverage area. (Fig. 1, Page 4 [0062-0064] note: it is obvious to one of ordinary skill in the art to recognize that the 4G+5G Only Area overlaps with the 4G only area in order to perform handoffs without dropouts between legacy 4G and 5G [gNB] and eLTE eNB)
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to be motivated to implement the invention of Keller after modifying it to incorporate the cellular overlay structure of Ryu since this is a standard 4G/5G network structure (Ryu Fig. 1 and Page 3 [0039 & 0061]) as eLTE/5G cell coverage is smaller than legacy LTE cell coverage.
Regarding claim 2, Keller in view of Ryu teaches acting, by the 5G IWF Ryu (Fig. 1 [enB CU-CP]), as a standard multi-Radio Access Technology (RAT) dual connectivity capable eNodeB towards and Evolved Packet Core (EPC). (Ryu Fig. 1 [enB CU-CP & eNB [DU] connected to MME in EPC)
Regarding claim 3, Keller in view of Ryu teaches acting, by the 5G IWF, as an Evolved Packet Core (EPC) towards the overlay RAN. (Ryu Fig. 1 [enB CU-CP & eNB [DU] connected to MME in EPC)
Regarding claim 4, Keller in view of Ryu teaches handing over coverage of a 5G Non-Stand Alone (NSA) User Equipment (UE) to an incumbent RAN when1 the 5G NSA UE moves out of coverage of the overlay RAN. (Ryu Fig. 1 [Intra RAT HO w/DC release] from 4G+5G to 4G only area)
Regarding claim 5, Keller in view of Ryu teaches wherein 5G Non-Stand Alone (NSA) User Equipment (UE) capable devices are 5G NSA subscription authorized. (Keller [0192])
Regarding claim 6, Keller in view of Ryu teaches redirecting, by the 5G IWF, User Equipments (UEs) that are not 5G NSA subscription authorized to the incumbent RAN. (Keller [0200-0201])
Regarding claims 7-12, the limitations of claims 7-12 are rejected as being the same reasons set forth above in claims 1-6.
Regarding claims 13-18, the limitations of claims 13-18 are rejected as being the same reasons set forth above in claims 1-6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW C SAMS whose telephone number is (571)272-8099. The examiner can normally be reached M-F 8:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lester Kincaid can be reached on (571)272-7922. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew C Sams/Primary Examiner, Art Unit 2646
1 Under the broadest reasonable interpretation standard for conditional “if language” or “when language”, the condition does not occur and the step or function claimed would never be realized, hence the broadest reasonable interpretation of the claim does not require performing the step or function. See Ex parte Katz, 2011 WL 514314, at 4-5 (BPAI Jan. 27, 2011,2011 WL 1211248 at 2 (BPAI Mar. 25, 2011); see also In re Johnston, 435 f.3d 1381, 1384 (Fed. Cir. 2006)("optional elements do not narrow the claim because they can always be omitted”). If conditions are not limitations against which prior art must be found because the step or function only occurs “if the answer is positive”. Under the broadest scenario, the steps or functions dependent on the “if condition” would not be invoked, and such, the Examiner is not required to find these limitations in the prior art in order to render the claim anticipated. See In re Am. Acad. Of Sci. Tech Ctr., 367 f.3d 1359, 1359 (Fed. Cir. 2004).
Prosecution Insights