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 .
This office action is in response to Applicant’s amendment filed on 07/21/2026.
Claims 64, 65, and 67-75 are currently pending.
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 64, 72, 73, and 74 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 10, 11, and 24 of U.S. Patent No. 11,963,151 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or the following reasons.
With respect to pending claim 64, Issued claim 24 (including claim 22) of US 11,963,151 B2 discloses an apparatus, comprising: (Lines 1-1 in claim 22)
at least one processor; and (Lines 2-2 in claim 22)
at least one non-transitory memory storing instructions, that when executed by the at least one processor, cause the apparatus at least to: (Lines 3-5 in claim 22)
detect a beam failure on a serving cell of a terminal device, the serving cell comprising at least one of a primary cell or a secondary cell serving the terminal device; (Lines 6-9 in claim 22)
in response to detecting the beam failure on the serving cell, generate a medium access control control element, the medium access control control element comprising a field associated with the serving cell (Lines 10-13 in claim 22),
generating the medium access control control element comprising: (Lines 1-2 in claim 24)
in response to detecting the beam failure on the serving cell, determine a contention free random access resource configured for the beam failure on the serving cell; and (Lines 6-9 in claim 24)
generate the medium access control control element in response to absence of the contention free random access resource or the contention free random access resource being unavailable; (Lines 10-13 in claim 24)
wherein the field is set to be a predefined value indicating the beam failure; and transmit the medium access control control element to a network device associated with the serving cell, (Lines 10-13 in claim 22)
wherein the serving cell comprises the secondary cell and the field associated with the serving cell is included in a bitmap, the bitmap including a plurality of fields, each of the plurality of fields associated with a secondary cell or a group of secondary cells. (Lines 14-18 in claim 22)
Pending claim 64 further discloses an apparatus embodiment.
Issued claim 24 discloses a terminal device embodiment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 64 of the current application merely broadens the scope of issued claim 24 of Patent No. 11.963,151 B2 by changing the terminal device embodiment to an apparatus embodiment.
It has been held that the omission of an element and its function is obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA), also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
With respect to claim 72, Issued claim 9 (includes claim 8 and claim 1) of US 11,963,151 B2 discloses a method comprising:
detect a beam failure on a serving cell of a terminal device, the serving cell comprising at least one of a primary cell or a secondary cell serving the terminal device; (Lines 2-5 in claim 1)
in response to detecting the beam failure on the serving cell, generate a medium access control control element, the medium access control control element comprising a field associated with the serving cell, (Lines 6-9 in claim 1)
wherein the field is set to be a predefined value indicating the beam failure; and (Lines 10-11 in claim 1)
transmit the medium access control control element to a network device associated with the serving cell, (Lines 12-13 in claim 1)
wherein the serving cell comprises the secondary cell and the field associated with the serving cell is included in a bitmap, the bitmap including a plurality of fields, each of the plurality of fields associated with a secondary cell or a group of secondary cells, (Lines 14-17 in claim 1)
in response to detecting the beam failure on the serving cell, select a candidate beam from a list of candidate reference signals based on measurements on the candidate reference signals; and (Lines 2-5 in claim 8)
transmit information of the selected candidate beam to the network device for further communication between the network device and the terminal device, (Lines 6-8 in claim 8)
wherein transmitting the information of the selected candidate beam comprises: (Lines 1-2 in claim 9)
including, into the medium access control control element, the information of the selected candidate beam; and (Lines 3-5 in claim 9)
transmitting the medium access control control element to the network device. (Lines 6-7 in claim 9)
Pending claim 72 further discloses an apparatus embodiment and
at least one processor; and
at least one non-transitory memory storing instructions, that when executed by the at least one processor, cause the apparatus at least to.
Issued claim 9 does not disclose an apparatus embodiment (changed to a method embodiment) and
at least one processor; and
at least one non-transitory memory storing instructions, that when executed by the at least one processor, cause the apparatus at least to.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 72 of the current application merely changes the embodiment of issued claim 9 of Patent No. 11.963,151 B2 from a method to an apparatus with a processor and a memory.
Reformulation of the method embodiment to an apparatus embodiment would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
With respect to claim 73, Issued claim 10 (includes claim 9, claim 8, and claim 1) of US 11,963,151 B2 discloses the apparatus of claim 72, wherein transmitting the information of the selected candidate beam comprises:
in response to receiving, from the network device, a request for a candidate beam report, generating a further medium access control control element or an uplink control channel report including the information of the selected candidate beam; and (Lines 3-7 in claim 10)
transmitting the further medium access control control element or the uplink control channel report to the network device. (Lines 8-10 in claim 10)
Pending claim 73 further discloses an apparatus embodiment and
at least one processor; and
at least one non-transitory memory storing instructions, that when executed by the at least one processor, cause the apparatus at least to.
Issued claim 10 does not disclose an apparatus embodiment (changed to a method embodiment) and
at least one processor; and
at least one non-transitory memory storing instructions, that when executed by the at least one processor, cause the apparatus at least to.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 73 of the current application merely changes the embodiment of issued claim 10 of Patent No. 11.963,151 B2 from a method to an apparatus with a processor and a memory.
Reformulation of the method embodiment to an apparatus embodiment would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
With respect to claim 74, Issued claim 11 (includes claim 1) of US 11,963,151 B2 discloses a method comprising:
detect a beam failure on a serving cell of a terminal device, the serving cell comprising at least one of a primary cell or a secondary cell serving the terminal device; (Lines 2-5 in claim 1)
in response to detecting the beam failure on the serving cell, generate a medium access control control element, the medium access control control element comprising a field associated with the serving cell, (Lines 6-9 in claim 1)
wherein the field is set to be a predefined value indicating the beam failure; and (Lines 10-11 in claim 1)
transmit the medium access control control element to a network device associated with the serving cell, (Lines 12-13 in claim 1)
wherein the serving cell comprises the secondary cell and the field associated with the serving cell is included in a bitmap, the bitmap including a plurality of fields, each of the plurality of fields associated with a secondary cell or a group of secondary cells, (Lines 14-17 in claim 1)
wherein the serving cell comprises the secondary cell and the instructions further cause the apparatus to: (Lines 1-3 in claim 11)
monitor a response to the transmitted medium access control control element from the network device; and (Lines 4-5 in claim 11)
in response to absence of the response in a predetermined period of time, deactivate the secondary cell. (Lines 6-7 in claim 11)
Pending claim 74 further discloses an apparatus embodiment and
at least one processor; and
at least one non-transitory memory storing instructions, that when executed by the at least one processor, cause the apparatus at least to.
Issued claim 11 does not disclose an apparatus embodiment (changed to a method embodiment) and
at least one processor; and
at least one non-transitory memory storing instructions, that when executed by the at least one processor, cause the apparatus at least to.
Although the conflicting claims are not identical, they are not patentably distinct from each other because pending claim 74 of the current application merely changes the embodiment of issued claim 11 of Patent No. 11.963,151 B2 from a method to an apparatus with a processor and a memory.
Reformulation of the method embodiment to an apparatus embodiment would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Allowable Subject Matter
Claims 67 and 68 are allowed.
Claims 65, 69-71, and 75 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.
Response to Arguments
Applicant’s arguments, filed on 07/21/2026, with respect to the claims 72, 73, and 74 have been fully considered. However, upon further consideration, a new ground of rejection is made in view of Issued US 11,963,151 B2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian T O'Connor whose telephone number is (571)270-1081. The examiner can normally be reached Mon-Fri Flex 10am-6:30pm.
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/BRIAN T O CONNOR/Primary Examiner, Art Unit 2465 October 2, 2026
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