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 Arguments
Applicant’s arguments with respect to claims filed on 06/03/2026 have been considered but are moot because the arguments are related solely to newly added limitations addressed in the instant Office Action with newly identified prior art, thus rendering applicant’s arguments moot.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,997,732 (hereinafter Pat-732). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1 for instance, as shown in the following table, claims 13, 20 and 23 of Pat-732 recites all the claimed limitations of the claim 1.
Pat-732 Language
Claims / App Language
20. A user equipment (“UE”) comprising: a processing circuit; a wireless transceiver coupled to the processing circuit; and a memory coupled to the processing circuit, the memory storing machine-readable computer program instructions that, when executed by the processing circuit, cause the UE to perform operations comprising:
receiving a radio resource control (“RRC”) message including a measurement configuration field, the RRC message including a first RRC message that is embedded in a second RRC message transmitted to the UE via a SRB1 bearer; and
extracting a measurement configuration information element (“IE”) for measurement of a wireless channel between the UE and a secondary node associated with a secondary cell group that together with a master node provides dual connectivity services to the UE,
wherein the measurement configuration field is associated with a defined signaling radio bearer (“SRB”) that is to be used by the UE for measurement reporting.
23. The UE of claim 20,
wherein the measurement configuration field includes a first measurement configuration field, and
wherein the RRC message includes a second measurement configuration field that includes a different measurement configuration IE than the first measurement configuration IE.
13. … a secondary node associated with a secondary cell group that together with a master node provides dual connectivity services to the UE …
the RRC message includes a second measurement configuration field that includes a different measurement configuration IE than the first measurement configuration IE, wherein the defined SRB comprises a first defined SRB, and wherein the second measurement configuration field is associated with a second defined SRB different from the first defined SRB.
1. A method of operating a user equipment, UE, comprising:
receiving a radio resource control, RRC, message including a measurement configuration field; and
extracting a first measurement configuration for measurement of a wireless channel between the UE and a secondary node associated with a secondary cell group that together with a master node provides dual connectivity services to the UE,
wherein the measurement configuration field is a first measurement configuration field and
wherein the RRC message includes a second measurement configuration field that has a different measurement configuration than the first measurement configuration,
wherein the first and second measurement configuration fields are each associated with different nodes in a dual connectivity configuration,
the first measurement configuration field including a first measurement configuration defining first measurement objects and first reporting parameters, and the second measurement configuration field including a second measurement configuration defining second measurement objects and second reporting parameters different from the first measurement objects and first reporting parameters.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 11 and 20 recite similar subject matter. For instance, claim 1 requires that the first measurement configuration define “first measurement objects and first reporting parameters” and that the second measurement configuration define “second measurement objects and second reporting parameters different from” those of the first. The specification’s only express disclosure of a difference between the first and second measurement configurations is that they include “a different measurement configuration IE” (paragraphs 0038, 0054, 0095, 0108). While the background section reproduces the generic 3GPP MeasConfig IE structure showing that a MeasConfig IE contains a measObjectToAddModList and a reportConfigToAddModList as sub-fields (Par. 0032-0033), the specification never states that an embodiment exists in which both the measurement objects and the reporting parameters are simultaneously and specifically varied between the first and second configurations. The specification’s description of “different handling of measurement configurations” (Par. 0089) refers to different reporting/handling schemes tied to different SRBs, not explicitly to a compound requirement that both measurement objects and reporting parameters differ. The applicant is required to identify with specificity where the originally filed disclosure supports this compound limitation.
Claims 2-10 and 12-19 depend from one of the independent claims, thus carry the same issues as described above, and therefore are rejected on the same grounds discussed above.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. — The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1, 11 and 20 recite similar subject matter. For instance, claim 1 recites “wherein the measurement configuration field is a first measurement configuration field and wherein the RRC message includes a second measurement configuration field that has a different measurement configuration than the first measurement configuration” (Emphasis added). The term “the first measurement configuration” lacks proper antecedent basis. The claim has only established antecedent basis for “a first measurement configuration field” (the field itself), not for “a first measurement configuration” (the configuration content encapsulated within that field). These are distinct claim terms under applicant’s own usage later in the claim, where “the first measurement configuration field including a first measurement configuration defining first measurement objects and first reporting parameters” treats “measurement configuration field” and “measurement configuration” as separate elements. Since “a first measurement configuration” is not introduced until this later clause, its earlier use with the definite article “the” renders the claim indefinite because it is unclear whether applicant intends to refer to the field or to a distinct, not-yet-introduced sub-element.
Further, the final “wherein” clause recites that “second reporting parameters different from the first measurement objects and first reporting parameters”. As literally written, this requires the second reporting parameters to differ from the first measurement objects – a comparison between two different categories of elements (reporting parameters vs. measurement objects) that renders the metes and bounds of the limitation unclear. It is unclear whether applicant intended “second reporting parameters different from the first reporting parameters” (parallel comparison) or some other relationship.
Claims 2-10 and 12-19 depend from one of the independent claims, thus carry the same issues as described above, and therefore are rejected on the same grounds discussed above.
Tentative Indication of Allowable Subject Matter
Claims 1, 10 and 20 appear to contain allowable subject matters pending on satisfactory of overcoming above 112(a), 112(b), and Non-Statutory Double Patenting (NSDP) rejection. The claims would be allowable if the rejections are overcome.
The claims contain the following underlined features which, when combined with other features of the claim, prior art of record failed to anticipate or render obvious before the effective filing date of the instant application was filed:
1. A method of operating a user equipment, UE, comprising:
receiving a radio resource control, RRC, message including a measurement configuration field; and
extracting a first measurement configuration for measurement of a wireless channel between the UE and a secondary node associated with a secondary cell group that together with a master node provides dual connectivity services to the UE,
wherein the measurement configuration field is a first measurement configuration field and wherein the RRC message includes a second measurement configuration field that has a different measurement configuration than the first measurement configuration,
wherein the first and second measurement configuration fields are each associated with different nodes in a dual connectivity configuration, the first measurement configuration field including a first measurement configuration defining first measurement objects and first reporting parameters, and the second measurement configuration field including a second measurement configuration defining second measurement objects and second reporting parameters different from the first measurement objects and first reporting parameters.
The amendments further limit the scope of the claimed invention and with the amendments presented, there is no teaching, suggestion, or motivation for combination in the prior art(s) as cited to show the claimed subject matter as detailed in the independent claims. Examiner submits that the limitations entered into the independent claims are not taken alone but are viewed in view of the entirety of the claim language including any preceding claim limitations, any proceeding limitations, and any intervening claim limitations.
Claims 2-10 and 12-19 depend from claims 1 and 10, respectively, and thus are allowed for the same reason.
An updated search has been performed and no prior art of record has been found that anticipates or render obvious the claimed invention as specifically presented in the independent claims.
Thus, for the reasons indicated above, the claims are allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Harry H. Kim whose telephone number and email address are as follows; 571-272-5009, harry.kim2@uspto.gov.
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, Derrick Ferris can be reached at 571-272-3123.
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/HARRY H KIM/ Primary Examiner, Art Unit 2411
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