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 .
Response to Amendment
Applicant’s amendment, filed 7 April 2026, has been entered and carefully considered.
Claims 1, 2, 5, 6, 8, 15, 19, 21 and 28-31 are amended.
Claims 10, 12, 16, 17, 20, 23 and 27 are canceled.
Claims 1-9, 11, 13-15, 18, 19, 21, 22, 24-26 and 28-31 are currently pending.
The outstanding objection to Claims 1, 5, 6, 15, 19, 28 and 30 is withdrawn in light of Applicant’s amendment to said claims.
The outstanding rejection of Claims 1-9, 11, 13-15, 18, 19, 21, 22, 24-26 and 28-31 under 35 U.S.C. 112(b) is withdrawn in light of Applicant’s amendment.
Response to Arguments
Regarding the provisional nonstatutory double patenting rejection of Claims 1 and 15, Applicant “defers the decision to file a terminal disclaimer or traverse the rejection until both the present Application and co-pending patent Application No. 18/556,127 include allowable subject matter.” The Office notes that the nonstatutory double patenting rejection below is updated based on the amendments filed 7 April 2024 in the instant application and 31 December 2025 in co-pending patent Application No. 18/556,127.
Applicant's arguments filed 7 April 2026 regarding the rejection of Claims 1, 6 and 19 under 35 U.S.C. 102(a)(2) have been fully considered but they are not persuasive.
Regarding Claim 1, Applicant states that “there is no disclosure in Yi … of sending a message indicating a portion of traffic to be returned to the CU1.” The Office first notes that the claim language does not require the message “indicating a portion of traffic to be returned to the CU1.” Rather, the claim recites “information indicating that a portion of offloaded traffic is to be returned to the CU1.” This phrase is different from Applicant’s statement in that the message does not need to indicate the portion of traffic to be returned; instead, the message can indicate an intention to return a portion of traffic without identifying the portion itself. The claim language does not specify (e.g., via particular format, content, or structure) how the message indicates this intention. Accordingly, the Office respectfully disagrees with Applicant’s statement that “there is no disclosure in Yi of returning previously offloaded traffic to the CU1.” Yi discloses, at paragraphs 0191-0192, that traffic is initially offloaded to CU2 by establishing a redundant path. In order to release the redundant path (and thereby return traffic routing to the original path), Yi discloses a traffic offload release request/required message that contains the TNL address of the tunnel needing redundant path release, thereby indicating that previously offloaded traffic (via the established redundant path) is to be returned to the original routing (paragraph 0216). Absent further detail in the claim language as to how the message indicates that a portion of offloaded traffic is to be returned to the CU1, the Office submits that Yi discloses the claim language at issue, as currently drafted, when given its broadest reasonable interpretation.
Regarding Claims 6 and 19, Applicant states that “there is no disclosure in Yi…that such a message “indicates an amount of traffic…to be returned” to CU1.” The Office respectfully disagrees. Similar to the discussion of Claim 1 above, the claim language does not further define (e.g., via a particular format, content, or structure) how an “amount of traffic” is indicated in the first message. Further, the claim indicates that the “amount of traffic” is “associated with the portion of the offloaded traffic”, but does not further limit this particular association. As such, Yi’s disclosure of the traffic offload release request/message identifying the particular tunnel subject to redundant path release reasonably indicates that any traffic associated with the redundant path for the particular tunnel is to be returned (see paragraphs 0191-0192 for the redundant path establishment for traffic offloading and paragraph 0216 for the redundant path release). Absent further detail in the claim language as to how the message indicates that the amount of traffic to be returned to the CU1 or the association between the amount of traffic and the offloaded traffic, the Office submits that Yi discloses the claim language at issue, as currently drafted, when given its broadest reasonable interpretation.
The rejection of Claims 1, 6 and 19 under 35 U.S.C. 102(a)(2) is therefore maintained.
Applicant's arguments filed 7 April 2026 regarding the rejection of Claims 7 and 8 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
Regarding Claim 7, Applicant states “there is no disclosure in the cited portion of Akl '390 that the original donor node "determine[es] that the CU1 has a capacity to handle the portion of offloaded traffic to be returned to the CU1," as recited in Claim 7.” The Office respectfully disagrees. The Office notes that the manner in which the claimed “determining” is done is not further limited so as to require specific steps to be performed as part of a determination. As such, the Office submits that a broadest reasonable interpretation of determining that an original donor can handle the portion of offloaded traffic to be returned reasonably encompasses any manner in which it can be determined that the CU1 has capacity to handle the traffic. Akl ‘390 discloses recovery of RLF, where ongoing F1 connections of the IAB-node and its descendent nodes with the original donor (CU) may be retained and rerouted via the recovered path (thereby indicating that the source donor node can handle the portion of traffic that was offloaded prior to the RLF (paragraph 0083). Absent further detail in the claim language as to how it is determined that the node can handle a portion of offloaded traffic, the Office submits that Akl ‘390 discloses the claim language at issue, as currently drafted, when given its broadest reasonable interpretation.
Regarding Claim 8, Applicant states “(e)ven to the extent that the original donor node disclosed in Akl '390 is analogous to Applicant's CUl, there is no disclosure in Akl '390 that the original donor node determines that a condition is fulfilled and transmits the first message to another donor node based on the condition being fulfilled.” The Office respectfully disagrees. The Office notes that Claim 8 recites six separate alternatives for the condition that needs to be fulfilled. As such, the broadest reasonable interpretation of the claim language only requires one of the conditions to be met by the prior art. To this end, Akl ‘390 discloses recovery of RLF, where ongoing F1 connections of the IAB-node and its descendent nodes with the original donor (CU) may be retained and rerouted via the recovered path (the source donor node now has capacity to handle the recovered traffic that it could not handle due to the RLF (paragraph 0083)), which reasonably reads on the alternative for “identifying a traffic load decrease at a source donor node.”
The rejection of Claims 7 and 8 under 35 U.S.C. 103 is therefore maintained.
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 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of copending Application No. 18/556,127 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Regarding Claim 1 of the instant application, Claim 1 of the reference application anticipates the limitations as shown in the table below:
Claim 1 of instant application
Claim 1 of reference application
A method by a first Centralized Unit, CU1, in an Integrated Access and Backhaul, IAB, network, the method comprising: transmitting or receiving a first message, wherein the first message is transmitted from a second Centralized Unit (CU2) or the first message is received from the CU2, and
transmitting, to a second donor node, a first message
wherein the first message comprises information indicating that a portion of offloaded traffic is to be returned to the CU1, and wherein the offloaded traffic was previously offloaded from the CU1 to the CU2.
a first message requesting a revocation of traffic offloading from the first donor node to the second donor nodes (i.e., returning offloaded traffic from a CU1 to the CU2).
Claim 15 of the instant application is anticipated by Claim 17 of the reference application in a similar fashion to that shown for Claim 1 above (i.e., the revocation in Claim 17 anticipates the returning offloaded traffic in Claim 15).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5, 6, 11, 15, 18, 19, 24, 25 and 28-31 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yi et al (United States Pre-Grant Publication 2024/0064572), hereinafter Yi.
Regarding Claim 1, Yi discloses a method by a first Centralized Unit (CU1) in an Integrated Access and Backhaul (IAB) network (refer to Figure 2 for IAB architecture comprising Donor-CU 1), the method comprising:
transmitting or receiving a first message, wherein the first message is transmitted to a second Centralized Unit (CU2) (paragraphs 0214-0215 and Figure 10 – the traffic offloading initiator CU1 can send a traffic offloading release request), or the first message is received from the CU2 (paragraphs 0214-0215 and Figure 11 – the traffic offloading receptor CU2 can send a traffic offloading release requirement to CU1), and
wherein the first message comprises information indicating that a portion of offloaded traffic is to be returned to the CU1 (paragraph 0191 – when performing traffic offloading, CU1 determines that some traffic should be offloaded to CU2 and establishes a redundant path to do so (see Figure 7 and paragraph 0192); paragraph 0216 – the message for releasing redundant paths identifies addresses or tunnels needing redundant path release), and
wherein the offloaded traffic was previously offloaded from the CU1 to the CU2 (paragraph 0191 – when performing traffic offloading, CU1 determines that some traffic should be offloaded to CU2 and establishes a redundant path to do so (see Figure 7 and paragraph 0192)).
Claim 28 comprises the same limitations as Claim 1, claimed as a first centralized unit comprising memory storing instructions and processing circuitry operable to execute the instructions to cause the CU1 to perform the same steps as Claim 1. Yi discloses the network device comprises memory 1820 and processor 1810, as depicted in Figure 18 and described in paragraph 0355. The remaining limitations in Claim 28 are rejected for the same reasons as described above for Claim 1.
Regarding Claim 15, Yi discloses a method by a second Centralized Unit (CU2) in an Integrated Access and Backhaul (IAB) network (refer to Figure 2 for IAB architecture comprising Donor-CU 2), the method comprising:
transmitting or receiving a first message, wherein the first message is transmitted to a first Centralized Unit (CU1) (paragraphs 0214-0215 and Figure 11 – the traffic offloading receptor CU2 can send a traffic offloading release requirement to CU1) or the first message is received from the CU1 (paragraphs 0214-0215 and Figure 10 – the traffic offloading initiator CU1 can send a traffic offloading release request to CU2), and
wherein the first message comprises information indicating that a portion of offloaded traffic is to be returned to the CU1 (paragraph 0191 – when performing traffic offloading, CU1 determines that some traffic should be offloaded to CU2 and establishes a redundant path to do so (see Figure 7 and paragraph 0192); paragraph 0216 – the message for releasing redundant paths identifies addresses or tunnels needing redundant path release), and
wherein the offloaded traffic was previously offloaded from the CU1 to the CU2 (paragraph 0191 – when performing traffic offloading, CU1 determines that some traffic should be offloaded to CU2 and establishes a redundant path to do so (see Figure 7 and paragraph 0192)).
Claim 30 comprises the same limitations as Claim 15, claimed as a second centralized unit comprising memory storing instructions and processing circuitry operable to execute the instructions to cause the CU2 to perform the same steps as Claim 15. Yi discloses the network device comprises memory 1820 and processor 1810, as depicted in Figure 18 and described in paragraph 0355. The remaining limitations of Claim 30 are rejected for the same reasons as described above for Claim 15.
Regarding Claims 2 and 29, Yi discloses prior to transmitting or receiving the first message, offloading the offloaded traffic from the first CU1 to the CU2 (paragraph 0191 – when performing traffic offloading, CU1 determines that some traffic should be offloaded to CU2 and establishes a redundant path to do so (see Figure 7 and paragraph 0192); paragraph 0216 – the message for releasing redundant paths (which is sent after offloading has been performed) identifies addresses or tunnels needing redundant path release).
Regarding Claim 3, Yi discloses the offloaded traffic is terminated at a migrating IAB node (refer to Figure 6 at step 16 and paragraph 0184 – a UE is connected via a dual-connecting IAB-node, and the tunnel is migrated between an IAB-donor-CU1 and a descendant IAB-DU).
Regarding Claims 5, 18 and 31, Yi discloses the CU1 comprises a F1 termination node (paragraph 0215), and the CU2 comprises a F1 non-termination node (paragraph 0215).
Regarding Claims 6 and 19, Yi discloses the first message indicates an amount of traffic associated with the portion of the offloaded traffic to be returned to the CU1 (paragraph 0191 – when performing traffic offloading, CU1 determines that some traffic should be offloaded to CU2 and establishes a redundant path to do so (see Figure 7 and paragraph 0192); paragraph 0216 – the message for releasing redundant paths (which is sent after offloading has been performed) identifies addresses or tunnels needing redundant path release).
Regarding Claims 11 and 24, Yi discloses the first message indicates at least one granted resource associated with the portion of the offloaded traffic to be returned to the CU1 (paragraph 0216 - the traffic offload release request/required messages contain a TNL address with which an F1-C needing redundant path release is associated, or UP transport layer information of an F1-U tunnel needing redundant path release).
Regarding Claim 25, Yi discloses the at least one granted resource comprises at least one of: a downlink resource, and/or an uplink resource (paragraph 0094 – in order to offload the traffic, the request includes TNL address, where the acceptance message (as described in paragraph 0096 comprises a TNL address newly allocated); paragraph 0216 - the traffic offload release request/required messages contain a TNL address with which an F1-C needing redundant path release is associated, or UP transport layer information of an F1-U tunnel needing redundant path release).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 4, 7, 8, 9, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Yi in view of Akl et al (United States Pre-Grant Publication 2022/0132390), hereinafter Akl ‘390.
Regarding Claim 4, Yi discloses the limitations of Claim 1, as described above. However, Yi does not disclose receiving the portion of the offloaded traffic that was previously offloaded from the CU1 to the CU2. In an analogous art, Akl ‘390 discloses this. Specifically, Akl ‘390 discloses recovery of RLF, where ongoing F1 connections of the IAB-node and its descendent nodes with the original donor (CU) may be retained and rerouted via the recovered path (paragraph 0083). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine Yi and Akl ‘390. One would have been motivated to do so in order to perform traffic rerouting without the need for IAB-DU migration (see paragraph 0083 of Akl ‘390).
Regarding Claim 7, Yi discloses the limitations of Claim 1, as described above. However, Yi does not disclose determining that the CU1 has a capacity to handle the portion of offloaded traffic to be returned to the CU1. In an analogous art, Akl ‘390 discloses this. Specifically, Akl ‘390 discloses recovery of RLF, where ongoing F1 connections of the IAB-node and its descendent nodes with the original donor (CU) may be retained and rerouted via the recovered path (thereby indicating that the source donor node can handle the portion of traffic that was offloaded prior to the RLF (paragraph 0083). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine Yi and Akl ‘390. One would have been motivated to do so in order to perform traffic rerouting without the need for IAB-DU migration (see paragraph 0083 of Akl ‘390).
Regarding Claim 8, Yi discloses the limitations of Claim 1, as described above. However, Yi does not disclose determining that a condition has been fulfilled, and wherein the first message is transmitted to the CU2 in response to determining that the condition has been fulfilled, wherein the condition comprises at least one of: determining that a timer has expired; identifying a traffic load increase at a target donor node; identifying that traffic at the target donor node has increased more than a threshold amount; identifying a traffic load decrease at a source donor node; and identifying that traffic at the source donor node has decreased more than a threshold amount. In an analogous art, Akl ‘390 discloses this. Specifically, Akl ‘390 discloses recovery of RLF, where ongoing F1 connections of the IAB-node and its descendent nodes with the original donor (CU) may be retained and rerouted via the recovered path (the source donor node now has capacity to handle the recovered traffic that it could not handle due to the RLF (paragraph 0083)). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine Yi and Akl ‘390. One would have been motivated to do so in order to perform traffic rerouting without the need for IAB-DU migration (see paragraph 0083 of Akl ‘390).
Regarding Claim 9, Yi discloses receiving, from the CU2, a second message indicating at least one resource to be released by the CU2 (paragraph 0216 - the traffic offload release request/required messages contain a TNL address with which an F1-C needing redundant path release is associated, or UP transport layer information of an F1-U tunnel needing redundant path release).
Regarding Claim 21, Yi discloses the limitations of Claim 15, as described above. However, Li does not disclose determining that a condition has been fulfilled, and wherein the first message is transmitted to the CU1 in response to determining that the condition has been fulfilled, wherein the condition comprises at least one of: determining that a timer has expired; identifying a traffic load increase at a target donor node; identifying that traffic at the target donor node has increased more than a threshold amount; identifying a traffic load decrease at a source donor node; and identifying that traffic at the source donor node has decreased more than a threshold amount. In an analogous art, Akl ‘390 discloses this. Specifically, Akl ‘390 discloses recovery of RLF, where ongoing F1 connections of the IAB-node and its descendent nodes with the original donor (CU) may be retained and rerouted via the recovered path (the source donor node now has capacity to handle the recovered traffic that it could not handle due to the RLF (paragraph 0083). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine Yi and Akl ‘390. One would have been motivated to do so in order to perform traffic rerouting without the need for IAB-DU migration (see paragraph 0083 of Akl ‘390).
Regarding Claim 22, Yi discloses receiving, from the CU1, a second message indicating at least one resource to be released by the CU2 (paragraph 0216 - the traffic offload release request/required messages contain a TNL address with which an F1-C needing redundant path release is associated, or UP transport layer information of an F1-U tunnel needing redundant path release).
Claims 13, 14 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Yi in view of Akl et al (United States Pre-Grant Publication 2022/0386219), hereinafter Akl ‘219.
Regarding Claims 13 and 26, Yi discloses the limitations of Claims 1 and 15, as described above. However, Yi does not disclose transmitting, to at least one IAB node, information associated with the portion of the offloaded traffic to be returned to the CU1. In an analogous art, Akl ‘219 discloses this. Specifically, Akl ‘219 discloses distributed routing address management in IAB networks (paragraph 0065 and Figure 5), where cell IDs and corresponding routing addresses are transmitted among the nodes in the network (paragraph 0066). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine Yi and Akl ‘219. One would have been motivated to do so in order to perform topology discovery and load balancing in an IAB network (see paragraph 0004 of Akl ‘219).
Regarding Claim 14, the combination of Yi and Akl ‘219 discloses the information transmitted to the at least one IAB node comprises a routing table (Figure 5 and paragraph 0066 - where cell IDs and corresponding routing addresses are transmitted among the nodes in the network). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further combine Yi and Akl ‘219. One would have been motivated to do so in order to perform topology discovery and load balancing in an IAB network (see paragraph 0004 of Akl ‘219).
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 ANDREW W. CHRISS whose telephone number is (571)272-1774. The examiner can normally be reached Monday-Friday, 8am-4pm ET.
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/ANDREW W CHRISS/Primary Examiner, Art Unit 2472
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