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 .
Acknowledgment
The Preliminary Amendment filed on 05/31/2024 has been received and placed of record. Accordingly, claims 1-20 have been cancelled and claims 21-40 are pending in the instant application.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. 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 Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-24, 28-31 and 35-39 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 7, 8 and 14 of U.S. Patent No. 11,979,794. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1, 7, 8 and 14 of U.S. Patent No. 11,979,794 cover and encompass the limitations of claims 21-24, 28-31 and 35-39 of the instant application. Moreover, because omission element(s) in the claims would make the claims in the instant application broader, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the claim(s) in the U.S. Patent No. 11,979,794 to as now recited in the instant application since it is just merely an obvious variation of the claims. Furthermore, it is well settled that omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 163 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 184 (CCPA 1969).
Regarding claims 21-23 and 35-39 of the instant application, claim 1 of the U.S. Patent No. 11,979,794 covers and encompasses all subject matter claimed.
Regarding claim 24 of the instant application, claim 7 of the U.S. Patent No. 11,979,794 covers and encompasses all subject matter claimed.
Regarding claims 28-30 of the instant application, claim 8 of the U.S. Patent No. 11,979,794 covers and encompasses all subject matter claimed.
Regarding claim 31 of the instant application, claim 14 of the U.S. Patent No. 11,979,794 covers and encompasses all subject matter claimed.
It is noted that the steps or functions are performed by a base station in the claims of the instant application whereas the steps or functions are performed by a UE in the claims of U.S. Patent No. 11,979,794. However, it would have been obvious to one of ordinary skill in the art to have recognized to modify the claims of U.S. Patent No. 11,979,794 by reversing the steps or functions of receiving or transmitting by UE of U.S. Patent No. 11,979,794’s claims to transmitting or receiving by base station of the instant application’s claims.
In light of the foregoing discussion, the broader claims 21-24, 28-31 and 35-39 of the instant application are rejected as obvious double patenting over the narrower claims 1, 7, 8 and 14 of U.S. Patent No. 11,979,794.
Allowable Subject Matter
Claims 25-27, 32-34 and 40 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.
Conclusion
Examiner's note: Examiner has cited particular columns and line numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Reference Tirronen et al (US 2020/0396772) is cited because it is pertinent to the method and apparatus for determining position of a UE. However, the cited reference fails to teach or suggest the further arrangements as recited in the dependent claims 25-27, 32-34 and 40.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON NGUYEN VO whose telephone number is (571) 272-3018. The examiner can normally be reached on Monday to Friday from 9:00 to 6:30PM.
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/DON N VO/Primary Examiner, Art Unit 2634