DETAILED ACTION
The Reply, filed on April 16, 2026, has been received and carefully considered.
Claims 2, 3, 5-13, and 15-21 remain pending in the application. Claims 1, 4, and 14 have been canceled.
Response to Arguments
Applicant's arguments, on page 6 of the Reply, with respect to non-statutory double patenting, have been fully considered but they are not persuasive.
The Applicant submits that the double patenting rejection is moot as the claims have been amended to recite additional subject matter and an analysis of this subject matter has not been made.
The Examiner respectfully disagrees. The Applicant incorporated the language of canceled claims 4 and 14 into claims 2 and 12 respectively. The previous non-statutory double patenting rejection in the Non-Final Office Action mailed on April 1, 2026 addressed canceled claims 4 and 14 on page 5 and page 7, respectively. Specifically, the amended limitation “the reference signal information indicates WTRU specific reference signals used to perform the measurements associated with the measurement condition” of currently amended claims 2 and 12 is mapped to claims 8 and 16 of USPN 11,889,368. Thus, the Examiner respectfully submits that an analysis of the amended limitation has been made.
In view of the above reasons, the Examiner respectfully submits that the non-statutory double patenting rejection should be maintained.
Applicant's arguments, on pages 6 and 7 of the Reply, with respect to rejections under 35 U.S.C. §§ 102 and 103, have been fully considered and are persuasive. The rejections have been withdrawn.
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 2, 3, 5-13, and 15-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,889,368. Although the claims at issue are not identical, they are not patentably distinct from each other because the invention of claims 1-16 of USPN 11,889,368 are obvious variants of claims 2-21 of the current application.
USPN 11,889,368 discloses, teaches, or suggests:
regarding claim 2 of the current application, a method implemented by a wireless transmit/receive unit (WTRU), the method comprising: receiving a configuration message from via a serving cell, wherein the configuration message comprises a configuration information for a candidate cell and a measurement condition for handover (HO) to the candidate cell, wherein the configuration information for the candidate cell comprises reference signal information for measurements associated with the measurement condition, and wherein the reference signal information indicates WTRU specific reference signals used to perform the measurements associated with the measurement condition; determining to initiate HO to the candidate cell based on the measurement condition for HO to the candidate cell being satisfied; and performing random access on the candidate cell based on the measurement condition for HO to the candidate cell being satisfied, wherein WTRU context information is indicated during the random access (see claims 1 and 8 of USPN 11,889,368);
regarding claim 3, the reference signal information indicates that the measurements associated with the measurement condition are to be performed on a synchronization signal of the candidate cell (see claim 1 of USPN 11,889,368);
regarding claim 5, performing random access on the candidate cell based on the measurement condition for HO to the candidate cell being satisfied comprises: transmitting a preamble using physical random access channel (PRACH) resources of the candidate cell based on the measurement condition for HO to the candidate cell being satisfied; receiving a random access response (RAR), the RAR comprising scheduling information for an uplink transmission; and transmitting the uplink transmission, the uplink transmission scheduled by the RAR comprising the WTRU context information (see claim 1 of USPN 11,889,368);
regarding claim 6, the measurement condition is associated with a configured measurement offset value (see claim 2 of USPN 11,889,368);
regarding claim 7, receiving configuration information for a plurality of candidate cells and respective measurement conditions for HO to each of the plurality of candidate cells (see claim 3 of USPN 11,889,368);
regarding claim 8, the measurement condition corresponds to the WTRU determining that a measurement of the candidate cell is greater than a measurement of the serving cell by at least a configured offset amount (see claim 4 of USPN 11,889,368);
regarding claim 9, the measurement of the candidate cell is greater than the measurement of the serving cell by at least an offset amount (see claim 5 of USPN 11,889,368);
regarding claim 10, the measurement condition comprises a combination of multiple conditions (see claim 6 of USPN 11,889,368); and
regarding claim 11, the WTRU context information comprises a radio network temporary identifier (RNTI) for the WTRU in the serving cell (see claim 7 of USPN 11,889,368);
regarding claim 12, a wireless transmit/receive unit (WTRU) comprising a processor and memory, the processor and memory configured to: receive a configuration message from via a serving cell, wherein the configuration message comprises a configuration information for a candidate cell and a measurement condition for handover (HO) to the candidate cell, wherein the configuration information for the candidate cell comprises reference signal information for measurements associated with the measurement condition, and wherein the reference signal information indicates WTRU specific reference signals used to perform the measurements associated with the measurement condition; determine to initiate HO to the candidate cell based on the measurement condition for HO to the candidate cell being satisfied; and perform random access on the candidate cell based on the measurement condition for HO to the candidate cell being satisfied, wherein WTRU context information is indicated during the random access (see claims 9 and 16 of USPN 11,889,368);
regarding claim 13, the reference signal information indicates that the measurements associated with the measurement condition are to be performed on a synchronization signal of the candidate cell (see claim 9 of USPN 11,889,368);
regarding claim 15, the processor and memory configured to perform random access on the candidate cell based on the measurement condition for HO to the candidate cell being satisfied comprises the processor and memory being configured to: transmit a preamble using physical random access channel (PRACH) resources of the candidate cell based on the measurement condition for HO to the candidate cell being satisfied; receive a random access response (RAR), the RAR comprising scheduling information for an uplink transmission; and transmit the uplink transmission, the uplink transmission scheduled by the RAR comprising the WTRU context information (see claim 9 of USPN 11,889,368);
regarding claim 16, the measurement condition is associated with a configured measurement offset value (see claim 10 of USPN 11,889,368);
regarding claim 17, the processor and memory are configured to receive configuration information for a plurality of candidate cells and respective measurement conditions for HO to each of the plurality of candidate cells (see claim 11 of USPN 11,889,368);
regarding claim 18, the measurement condition corresponds to the processor and memory being configured to determine that a measurement of the candidate cell is greater than a measurement of the serving cell by at least a configured offset amount (see claim 12 of USPN 11,889,368);
regarding claim 19, the measurement of the candidate cell is greater than the measurement of the serving cell by at least an offset amount (see claim 13 of USPN 11,889,368);
regarding claim 20, the measurement condition comprises a combination of multiple conditions (see claim 14 of USPN 11,889,368); and
regarding claim 21, the WTRU context information comprises a radio network temporary identifier (RNTI) for the WTRU in the serving cell (see claim 15 of USPN 11,889,368).
Therefore, it would have been obvious to one skilled in the art before the effective filing date of the invention to modify the invention of claims 1-16 of USPN 11,889,368 to teach the invention of claims 2-21 of the current application. The motivation for doing so would be to obtain a well-rounded intellectual protection of the invention.
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 Pawaris Sinkantarakorn whose telephone number is (571)270-1424. The examiner can normally be reached Monday-Friday 8:00am-4:00pm.
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/PAO SINKANTARAKORN/Primary Examiner, Art Unit 2409 06/18/2026
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