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 .
Claim Objections
The current amendments made by Applicant to claims 4-6, 8, 10, and 16 to obviate the claim objections presented in the previous Office Action are proper and have been entered. These objections have been withdrawn.
Claim Rejections - 35 USC § 112
The current amendments made by Applicant to claims 1-20 to obviate the claim rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, presented in the previous Office Action, are proper and have been entered. These particular rejections have been withdrawn.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,035,393. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following correspondences.
Regarding claim 1, “a method performed by a User Equipment (UE) for handling a Secondary Cell Group (SCG) configuration in a wireless communications network, the method comprising: receiving, from a network node, a list of conditional SCG configurations, wherein each conditional SCG configuration comprises a trigger condition based on signal quality measurements and one SCG configuration, wherein the trigger condition is to trigger application of the SCG configuration” corresponds to “a method performed by a User Equipment (UE) for handling a Secondary Cell Group (SCG) configuration in a wireless communications network, the method comprising: receiving from a network node … a Radio Resource Control (RRC) reconfiguration message including a list of conditional SCG configurations comprising trigger conditions based on signal quality measurements to trigger application of a SCG configuration” in claim 1 of the above U.S. Patent.
“Initiating monitoring of the trigger conditions for cells associated with the SCG configuration” as well as “wherein upon reception of the list of SCG configurations the UE starts to perform associated measurements according to the provided triggering conditions” corresponds to “trigger conditions based on signal quality measurements” as well as “upon reception of said RRC reconfiguration message … initiating monitoring of the trigger conditions of cells associated with the SCG configurations” in claim 1 of the above U.S. Patent.
Lastly, “responsive to a trigger condition being fulfilled for a cell according to the received SCG configuration, applying the SCG configuration associated to the cell fulfilling the trigger condition” corresponds to “when the trigger condition for a cell is fulfilled according to the received conditional SCG configuration, applying the SCG configuration associated to the cell fulfilling the trigger condition” in claim 1 of the above U.S. Patent.
Claim 1 of the instant application does not claim “receiving from a network node, while the UE is in RRC_CONNECTED state, a Radio Resource Control (RRC) reconfiguration message” or “upon reception of said RRC reconfiguration message while the UE is in RRC_CONNECTED state”. Therefore, claim 1 merely broadens the scope of claim 1 of the above U.S. Patent.
It has been held that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. See 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 skilled in the art.
Regarding claims 2-6, these claims similarly correspond to claims 2-6 of the above U.S. Patent.
Regarding claim 7, this corresponding “method” claim performed by “a network node” rather than “a User Equipment (UE)” similarly corresponds to claim 7 of the above U.S. Patent for similar reasons as described for claim 1 above.
Regarding claims 8-12, these claims similarly correspond to claims 8-12 of the above U.S. Patent.
Regarding claim 13, this corresponding “User Equipment (UE)” claim similarly corresponds to “User Equipment (UE)” claim 13 of the above U.S. Patent for similar reasons as described for claim 1 above.
Regarding claims 14-18, these claims similarly correspond to claims 14-18 of the above U.S. Patent.
Regarding claim 19, this corresponding “network node” claim similarly corresponds to “network node” claim 19 of the above U.S. Patent for similar reasons as described for claim 1 above.
Regarding claim 20, this claim similarly corresponds to claim 20 of the above U.S. Patent.
Allowable Subject Matter
Claims 1-20 would be allowable upon the above obviousness-type double patenting rejection being overcome.
Response to Arguments
Applicant’s arguments, filed 12/23/25, with respect to amended claims 1-20 in light of the prior art rejections under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 have been fully considered and are persuasive. The prior art rejections of these claims have accordingly been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J. MOORE, JR., whose telephone number is (571)272-3168. The examiner can normally be reached M-F (9am-4pm).
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, Hassan A. Phillips can be reached at (571)272-3940. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL J MOORE JR/Primary Examiner, Art Unit 2467