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 .
Election/Restrictions
Applicant's election with traverse of claims 34-38 and 43-47 in the reply filed on 7/27/2026 is acknowledged. The traversal is not persuasive because the amendments do not limit the subject matter in a coherent way.
For example, claim 34 covers:
A method performed by a User Equipment (UE) supporting dual connectivity with a first network node and a secondary network node, the method comprising:
receiving, from the first network node, a Radio Resource Control (RRC) Reconfiguration message comprising a configuration comprising an execution condition for a subsequent Conditional Primary Secondary (PSCell) Addition or Change(CPAC),
the RRC Reconfiguration message being sent by the first network node based on a Secondary Node (SN) Addition Acknowledge message being received from the secondary network node in response to an SN Addition Request message, comprising candidate Primary Secondary Cell (PSCell) list, sent by the first network node to the secondary network node,
The details of how the first network node interacts with the secondary node do not limit how the UE receives the RRC reconfiguration message. The elected invention is only claimed from the perspective of actions performed by the UE in the preambles of claims 34 and 43.
Claim 39 covers:
A method performed by a first network node providing dual connectivity to a User Equipment (UE) in cooperation with a secondary network node, the method comprising:
receiving, from the UE, a RRC Reconfiguration complete message for a procedure related to the subsequent CPAC for a first candidate PSCell, in a case where a first execution condition of the first candidate PSCell, evaluated based on the execution condition, is satisfied; and
receiving, from the UE, the RRC Reconfiguration complete message for the procedure related to the subsequent CPAC for a second candidate PSCell, in a case where a second execution condition of the second candidate PSCell, evaluated based on the execution condition, is satisfied.
The applicant discloses it is the UE that evaluates the execution conditions. How the UE evaluates execution conditions is irrelevant to how the first network node receives information from the UE.
If the applicant wants to claim the functionality of the UE and the first network node together, they may amend the claims to cover a system comprising both. As it is, the applicant is claiming that the UE and the first network node are patentably distinct. The respective claim amendments to each group, which cover actions performed by devices that are not the subject matter of the claim, do not limit the claim and thus the applicant’s arguments that the amendments cover the same or corresponding technical feature are not persuasive. As it stans, the applicant is claiming the evaluation technique of the UE as one invention and the steps performed by the first network node for creating and sending an RRC Reconfiguration as another invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 39-42 and 48-51 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/27/2026.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claims 37 and 46 recite a scenario “where a candidate cell is not a PSCell”. Such a scenario is not disclosed. What the applicant has actually disclosed is that a candidate cell is not a PSCell of the terminal device.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 34-38 and 43-47 are 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.
The applicant has amended claim 34 as follows:
wherein the method comprises: evaluating a first execution condition of a first candidate PSCell based on the execution condition; sending, to the first network node, an RRC Reconfiguration complete message for a procedure related to the subsequent CPAC for the first candidate PSCell, in a case where the first execution condition of the first candidate PSCell is satisfied;
evaluating a second execution condition of a second candidate PSCell based on the execution condition after completion of the procedure related to the subsequent CPAC for the first candidate PSCell, wherein the method comprises sending, to the first network node, the RRC Reconfiguration complete message for the procedure related to the subsequent CPAC for the second candidate PSCell, in a case where the second execution condition of the second candidate PSCell is satisfied.
The applicant has amended claim 43 as follows:
wherein the processor is configured to: evaluate a first execution condition of a first candidate PSCell based on the execution condition; send, to the first network node, an RRC Reconfiguration complete message for a procedure related to the subsequent CPAC for the first candidate PSCell, in a case where the first execution condition of the first candidate PSCell is satisfied;
evaluate a second execution condition of a second candidate PSCell based on the execution condition after completion of the procedure related to the subsequent CPAC for the first candidate PSCell, wherein the processor is configured to send, to the first network node, the RRC Reconfiguration complete message for the procedure related to the subsequent CPAC for the second candidate PSCell, in a case where the second execution condition of the second candidate PSCell is satisfied.
The applicant did not disclose separate “first” and “second” execution conditions that are “based on the execution condition” that is received as part of the RRC message comprising a configuration. Instead, in paragraphs 50, 82-85, 100-106, and 112-114, the applicant has disclosed that a single execution condition, that is received in the RRC message, is evaluated for each candidate cell.
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 34-38 and 43-47 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 34 and 43 recite the limitation "the subsequent CPAC for the first candidate PSCell" in the first “sending” limitation of each claim and “the subsequent CPAC for the second candidate PSCell” in the second “sending” limitation of each claim. There is insufficient antecedent basis for these limitations in the claim. The applicant only previously recites in the first limitation that the RRC message comprises a configuration comprising an execution condition for a subsequent CAPC but not any particular “subsequent CPAC” for each of a first candidate PSCell and a second candidate PSCell as claimed.
Claims 34 and 43 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: The applicant refers to a period “after completion of the procedure related to subsequent CPAC for the first candidate PSCell” but does not actually recite any procedure related to subsequent CPAC for the first candidate PSCell. Instead, the applicant recites sending “an RRC Reconfiguration complete message for a procedure related subsequent CPAC for the first candidate PSCell”. Sending an RRC Reconfiguration complete message does not define any “completion of a procedure”. The applicant is missing the step of actually performing and completing a procedure.
Claims 35 and 44 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: in order to remove entries in a “conditional reconfiguration except for entries in which the configuration is supported” the applicant would have to have some step or steps which define both the “conditional reconfiguration” and the “entries in which the configuration is supported”. As such, is not clear what the claimed removal has to do with anything claimed in claims 34 and 43.
Claims 38 and 47 recites the limitation "the dual connectivity". There is insufficient antecedent basis for this limitation in the claim. There reference to “supporting dual connectivity” in the preamble does not establish any specific concept of “dual connectivity” that can be modified.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 34-38 and 43-47 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication Number 2023/0292192 by Eklof et al.
As to claim 34, Eklof teaches a method performed by a User Equipment (UE) (UE in Figures 3 and 4) supporting dual connectivity with a first network node and a secondary network node, the method comprising: receiving, from the first network node, a Radio Resource Control (RRC) Reconfiguration message comprising a configuration comprising an execution condition (paragraphs 226 and 227, ref. no. 206 in Figure 3) for a subsequent Conditional Primary Secondary (PSCell) Addition or Change(CPAC) (paragraph 107) wherein the method comprises: evaluating a first execution condition of a first candidate PSCell based on the execution condition (paragraph 227); sending, to the first network node, an RRC Reconfiguration complete message for a procedure related to the subsequent CPAC for the first candidate PSCell, in a case where the first execution condition of the first candidate PSCell is satisfied (paragraph 228); and keeping the configuration and evaluating a second execution condition of a second candidate PSCell based on the execution condition after completion of the procedure related to the subsequent CPAC for the first candidate PSCell (paragraph 238), wherein the method comprises sending, to the first network node, the RRC Reconfiguration complete message for the procedure related to the subsequent CPAC for the second candidate PSCell, in a case where the second execution condition of the second candidate PSCell is satisfied (paragraph 239, step 209 in Figure 4).
Eklof teaches the following limitation recited with the claim but not performed by the UE:
the RRC Reconfiguration message being sent by the first network node based on a Secondary Node (SN) Addition Acknowledge message being received from the secondary network node (Figure 3, ref. no. 203) in response to an SN Addition Request message, sent by the first network node to the secondary network node (Figure 3, ref. no. 202),
Eklof does not teach that the SN Addition Request comprises a candidate PSCell list. This detail is irrelevant to how the UE receives a RRC reconfiguration message. If the applicant wants to claims the system comprising the UE and the first node and the functionality of the first node then they should explicitly claim such a system instead of trying to claim the invention only from the perspective of the UE. What the first network node does clearly has no bearing on how the UE receives an RRC message.
As to claim 43, it is rejected for the same reasoning as claim 34.
As to claims 35 and 44, see paragraph 108 and Table 2.
As to claims 37 and 46, see paragraphs 16 and 17.
As to claims 38 and 47, see paragraph 45.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS B BLAIR whose telephone number is (571)272-3893. The examiner can normally be reached Monday-Friday 9am-5pm.
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/DOUGLAS B BLAIR/Primary Examiner, Art Unit 2454
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