DETAILED ACTION
Applicant's response filed on 03/13/2026 has been entered and made of record.
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 .
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 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.
Claim Status
Claims 2-4 and 7-9 are cancelled.
Claims 1, 5, and 6 are amended.
No new claims are added.
Claims 1, 5, and 6 are currently pending for examination.
Response to Arguments
Applicant's Remarks (on page 6-7), filed 03/13/2026, with respect to Objection to the Title have been fully considered and the title has been amended. The objection to Specification has been withdrawn in view of the amendment to the title of the Specification.
Applicant's Remarks (on page 7), filed 03/13/2026, with respect to Claim Objection have been fully considered and claim 1 has been amended. The objection to claim 1 has been withdrawn in view of the amendment.
Applicant's Remarks (on page 7-8), filed 03/13/2026, with respect to Interpretation under AIA 35 U.S.C. § 112(f) have been fully considered and claims 1 and 6 have been amended not to invoke interpretation under AIA 35 U.S.C. § 112(f). Thus, claims 1 and 6 are no longer invoke under AIA 35 U.S.C. § 112(f).
Applicant's Remarks (on page 7-8), filed 03/13/2026, with respect to Rejection under AIA 35 U.S.C. § 112(b) have been fully considered and claims 1, 5, and 6 have been amended, and claims 2-4 have been canceled. The rejection to claims 1-6 under 35 U.S.C. § 112(b) have been withdrawn in view of the amendment.
Applicant's arguments (see Remarks on page 10), filed 03/13/2026, with respect to “Lee is silent regarding a condition comprising: (A) a specific base station or cell within a small coverage area controls the terminal” have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of applicant’s invention, it is noted that the features upon which applicant relies (i.e., “a condition comprising: (A) a specific base station or cell within a small coverage area controls the terminal”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus, the argument(s) is/are not persuasive.
Applicant's arguments with respect to claims 1, 5, and 6 have been fully considered but are moot in view of the new ground(s) of rejection. The amendments to the claims necessitated the new ground(s) of rejection discussed below.
This Office action is made Final.
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, 5, and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, and 6 of copending Application No. 18/567,613 (hereinafter ‘613) in view of LEE (US 2021/0105649 A1) hereinafter “Lee”. Although the conflicting claims are not identical, they are not patentably distinct from each other because the limitations of claims 1, 5, and 6 in this instant application are merely a broader version of co-pending application ‘613, therefore, claims 1, 5, and 6 in this instant application constitute obvious double patenting over said claims of ‘613.
This is a provisional nonstatutory double patenting rejection.
Regarding pending claims 1, 5, and 6, the claimed limitations are substantially the same as claims 1, 5, and 6 of ‘613.
However, ‘613 does not recite “a terminal in a radio resource control (RRC) idle state”. In the same analogous art, Lee discloses to receive a terminal in a radio resource control (RRC) idle state (see FIG. 10; see ¶ [0409-10], the wireless device may perform measurement for cell selection and/or cell reselection in idle state and/or inactive state based on the first measurement configuration which include a relaxed measurement configuration).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to provide to receive a terminal in a radio resource control (RRC) idle state as taught by Lee, in the system of ‘613, so that it would provide a wireless device to perform relaxed measurement for saving power (Lee: see ¶ [0397]).
The table below shows only Example (sample) of how each of the limitations of claim 1 is/are covered by claim 1 of ‘613.
Instant Application No. 18/571,879
Co-pending Application No. 18/567,613
1. A terminal comprising:
a processor that determines, in a radio resource control (RRC) idle state or an RRC inactive state, relaxation of a mobility measurement based on a condition; and
a transceiver that performs the mobility measurement to which the relaxation is applied,
wherein the condition comprises: the terminal being under control by a specific base station or cell, and a reception of information about a period in which at least one of the mobility measurement and reporting is stopped, and
wherein the specific base station or cell has a coverage area less than or equal to a given size.
1. A terminal comprising:
a processor that determines, in a radio resource control (RRC) connected state, relaxation of at least one of measurement and reporting of channel state information (CSI) on the basis of a condition; and
a transceiver that performs at least one of the measurement and reporting to which the relaxation is applied,
wherein the condition comprises: the terminal being under control by a specific base station or cell, and a transmission of information about a period in which at least one of the measurement and reporting is stopped, and
wherein the specific base station or cell is a base station or cell with a coverage area less than or equal to a given size.
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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over LEE (US 2021/0105649 A1) hereinafter “Lee” further in view of HE (US 2021/0352507 A1) hereinafter “He”. The U.S. reference, Lee, was cited in IDS filed 12/19/2023.
Regarding claims 1 and 5, Lee discloses Claim 1 of a terminal (see FIG. 5; see ¶ [0096], UE) and Claim 5 of a radio communication method for a terminal, comprising:
a processor (see FIG. 5; see ¶ [0098], UE includes a processor) that determines, in a radio resource control (RRC) idle state or an RRC inactive state, relaxation of a mobility measurement based on a condition (see FIG. 10; see ¶ [0409-10], the first measurement configuration for mobility of the wireless device and may include measurement configuration for cell selection and/or cell reselection. The wireless device may perform measurement for cell selection and/or cell reselection in idle state and/or inactive state based on the first measurement configuration which include a relaxed measurement configuration); and
a transceiver (see FIG. 5; see ¶ [0098], UE includes a transceiver) that performs the mobility measurement to which the relaxation is applied (see FIG. 10; see ¶ [0409-10], the wireless device may perform a relaxed measurement or no measurement in idle state and/or inactive state based on the first measurement configuration),
wherein the condition comprises: the terminal being under control by a specific base station or cell (see ¶ [0124], the term “cell” may be used to represent service coverage of the node sometimes, radio resources at other time, or a range that signals using the radio resources can reach with valid strength at other times), wherein the specific base station or cell has a coverage area less than or equal to a given size (see Table 3 and 4; see ¶ [0122-24]).
Lee does not explicitly disclose a reception of information about a period in which at least one of the mobility measurement is stopped.
However, He discloses wherein the condition comprises: the terminal being under control by a specific base station or cell (see ¶ [0027], the base stations may wirelessly communicate with the UEs and each of the base stations may provide communication coverage for a respective geographic coverage area), and a reception of information about a period in which at least one of the mobility measurement is stopped (see ¶ [0072] [0077], the UE receives a second indication to stop RRM measurement), and
wherein the specific base station or cell has a coverage area less than or equal to a given size (see ¶ [0027], the base station with a small cell coverage).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to provide a reception of information about a period in which at least one of the mobility measurement is stopped as taught by He, in the system of Lee, so that it would provide the aspects including the potential for reduced measurements and reporting may improve the efficient allocation of resources for the stationary UEs (He: see ¶ [0007]).
Regarding claim 6, Lee discloses a base station (see FIG. 1 and 3; see ¶ [0060], base station) comprising:
a processor (see FIG. 3; see ¶ [0089], control unit) that judges that relaxation of mobility measurement is applied in a terminal in a radio resource control (RRC) idle state or an RRC inactive state based on a condition (see FIG. 12; see ¶ [0588-89], the base station may transmit, to the wireless device, a first measurement configuration for a first relaxed measurement including at least one of relaxed measurement conditions; and see ¶ [0409-10], the wireless device may perform a relaxed measurement or no measurement in idle state and/or inactive state based on the first measurement configuration); and
a transmitter (see FIG. 3; see ¶ [0089], communication unit) that transmits, to the terminal, a signal used for the mobility measurement to which the relaxation is applied (see FIG. 12; see ¶ [0588-89], the base station may transmit, to the wireless device, a first measurement configuration for a first relaxed measurement including at least one of relaxed measurement conditions),
wherein the condition comprises: the terminal being under control by a specific base station or cell (see ¶ [0124], the term “cell” may be used to represent service coverage of the node sometimes, radio resources at other time, or a range that signals using the radio resources can reach with valid strength at other times), wherein the specific base station or cell has a coverage area less than or equal to a given size (see Table 3 and 4; see ¶ [0122-24]).
Lee does not explicitly disclose a reception of information about a period in which at least one of the mobility measurement is stopped.
However, He discloses wherein the condition comprises: the terminal being under control by a specific base station or cell (see ¶ [0027], the base stations may wirelessly communicate with the UEs and each of the base stations may provide communication coverage for a respective geographic coverage area), and a reception of information about a period in which at least one of the mobility measurement is stopped (see ¶ [0072] [0077], the UE receives a second indication to stop RRM measurement), and
wherein the specific base station or cell has a coverage area less than or equal to a given size (see ¶ [0027], the base station with a small cell coverage).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to provide a reception of information about a period in which at least one of the mobility measurement is stopped as taught by He, in the system of Lee, so that it would provide the aspects including the potential for reduced measurements and reporting may improve the efficient allocation of resources for the stationary UEs (He: see ¶ [0007]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 PETER CHEN whose telephone number is (571)270-7241. The examiner can normally be reached Monday - Friday 8:00am to 5:00pm.
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, Yemane Mesfin can be reached at (571) 272-3927. 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.
/PETER CHEN/Primary Examiner, Art Unit 2462
Prosecution Insights