DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This Office Action is a response to communications dated 03/19/2024 and 05/29/2024. Claims 1-14 are pending in the application.
Information Disclosure Statement
The information disclosure statement filed 06/02/2025 complies with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. It has been considered and placed in the application file.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,937,317. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following rationales.
Instant Application Claim 1 Claims
‘317 Patent Claim 1 Claims
A method implemented by a base station, the method comprising:
A method performed by a wireless transmit/receive unit (WTRU), the method comprising:
receiving an access stratum message regarding radio conditions of a candidate radio access technology (RAT) for a multiple radio access technology (RAT) operation for a wireless transmit receive unit (WTRU), wherein the access stratum message is received from the WTRU, wherein the access stratum message is received using a primary RAT;
determining radio conditions associated with a candidate radio access technology (RAT) for multiple radio access technology (RAT) operation; transmitting an access stratum message regarding the determined radio conditions using a primary RAT, wherein the access stratum message relates to the candidate RAT;
sending a message indicating setup of multi-RAT operation to the WTRU, wherein the multi-RAT operation includes the primary RAT and the candidate RAT; and
receiving a message from a first network node indicating setup of multi-RAT access using the candidate RAT; and
communicating with the WTRU using at least one RAT of the multi-RAT operation.
communicating simultaneously using the multi-RAT operation, the multi-RAT operation including the primary RAT and the candidate RAT.
Rationales:
From the above claim comparison, one can see that claim 1 of the instant application recites a reverse process of claim 1 of the ‘317 patent. It is deemed obvious to those skilled in the art of claim drafting to draft claims in a later-filed patent application from reading claims in an early-filed patent application issued into a patent reciting a reverse process. A motivation for doing so would be to seek a well-rounded protection for a disclose invention. Moreover, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
The dependent claims 2-7 are included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Specifically, the claims are deemed obvious over dependent claims 2-7 of '317 patent, respectively for the same rationale as applied to their parent claim as above discussed.
Instant Application Claim 8 Claims
‘317 Patent Claim 8 Claims
A base station comprising: a transceiver operatively coupled to a processor,
A wireless transmit receive unit (WTRU), the WTRU comprising: a transceiver operatively coupled to a processor,
the transceiver and processor configured to receive an access stratum message regarding radio conditions of a candidate radio access technology (RAT) for a multiple radio access technology (RAT) operation for a wireless transmit receive unit (WTRU), wherein the access stratum message is received from the WTRU, wherein the access stratum message is received using a primary RAT;
the transceiver and processor configured to determine radio conditions associated with a candidate radio access technology (RAT) for multiple radio access technology (RAT) operation; the transceiver and processor configured to transmit an access stratum message regarding the determined radio conditions using a primary RAT, wherein the access stratum message relates to a candidate RAT, wherein the access stratum message regards the determined radio conditions information;
a transceiver operatively coupled to a processor, the transceiver and processor configured to send a message indicating setup of multi-RAT operation to the WTRU, wherein the multi-RAT operation includes the primary RAT and the candidate RAT; and
the transceiver and processor configured to receive a message from a first network node indicating multi-RAT access using the candidate RAT; and
a transceiver operatively coupled to a processor, the transceiver and processor configured to communicate with the WTRU using at least one RAT of the multi-RAT operation.
the transceiver and processor configured to communicate simultaneously using the multi-RAT operation, the multi-RAT including the primary RAT and the candidate RAT.
Rationales:
From the above claim comparison, one can see that claim 8 of the instant application recites a reverse process of claim 8 of the ‘317 patent. It is deemed obvious to those skilled in the art of claim drafting to draft claims in a later-filed patent application from reading claims in an early-filed patent application issued into a patent reciting a reverse process. A motivation for doing so would be to seek a well-rounded protection for a disclose invention. Moreover, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
The dependent claims 9-14 are included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Specifically, the claims are deemed obvious over dependent claims 13, 9-12, and 14 of '317 patent, respectively for the same rationale as applied to their parent claim as above discussed.
Allowable Subject Matter
It is noted that claims 1-14 of the instant application recite a reverse process of claims 1-14 of the ‘317 patent. Should a response to this Office Action overcome all of the above raised issues, the instant application shall be placed in a favorable condition for allowance for the same rationales pertaining the allowance of its corresponding parent application issued into the ‘317 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bakker et al. (US 8,477,724).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK DUONG whose telephone number is (571)272-3164. The examiner can normally be reached 7:00AM-3:30PM.
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Applicant is encouraged to submit a written authorization for Internet communications (PTO/SB/439, http://www.uspto.gov/sites/default/files/documents/sb0439.pdf) in the instant patent application to authorize the examiner to communicate with the applicant via email. The authorization will allow the examiner to better practice compact prosecution. The written authorization can be submitted via one of the following methods only: (1) Central Fax which can be found in the Conclusion section of this Office action; (2) regular postal mail; (3) EFS WEB; or (4) the service window on the Alexandria campus. EFS web is the recommended way to submit the form since this allows the form to be entered into the file wrapper within the same day (system dependent). Written authorization submitted via other methods, such as direct fax to the examiner or email, will not be accepted. See MPEP § 502.03.
/FRANK DUONG/Primary Examiner, Art Unit 2474 October 16, 2025