DETAILED ACTION
NOTED
On April 17, 2026, I reached out, regarding the terminal disclaimer, to Applicant, Daniel P. Homiller, Reg. No. 55,275, who said that he will have to get explicit approval from his client. On April 21, 2026, the Applicant said he still has not heard from his client and suggested to issue an action, which will make it easier to get a decision from his client.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/07/2026 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The instant first office action is in response to communication filed on 04/07/2026.
Claim 20 is pending of which claim 20 is the base independent claim(s).
Response to Arguments
In response to arguments filed on 06/23/2025 with respect to the double patenting, the Applicant said “the Applicant acknowledged the rejections on the ground of nonstatutory double patenting, and will appropriately address this rejection when there are no other obstacles to allowance of the application”. Since the terminal disclaimer is still not filed, another action is issued.
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.
Claim 20 is rejected on the ground of nonstatutory double patenting over claims 1-19 of U.S. Patent No. US 12,041,497.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
Instant Application # 18/747,904
Patent # US 12,041,497
20. (Previously Presented) A method, in a wireless device operating in a wireless communication network, the method comprising:
receiving, from a source node, a conditional handover command, the conditional handover command including or being associated with a triggering condition for execution of handover to a target cell or target beam; and
conditionally sending a conditional handover complete message using a rule according to which the wireless device (a) sends to the source node a conditional handover complete message at completion of a conditional handover configuration procedure according to the conditional handover command, if the triggering condition for the target cell is not met upon completion of the conditional handover configuration procedure and (b) refrains from transmitting the conditional handover complete message to the source node and executing the handover by applying the configuration in the conditional handover command if the triggering condition for the target cell is met upon completion of the conditional handover configuration procedure, wherein, when said handover is triggered prior to a time for sending the message, said refraining from sending the conditional handover complete message is further conditioned upon determining that the conditional handover message includes an indication that skipping the conditional handover complete message is allowed.
1. A method, in a wireless device operating in a wireless communication network, the method comprising:
receiving, from a source node, a conditional handover command, the conditional handover command including or being associated with a triggering condition for execution of handover to a target cell or target beam;
conditionally sending a message confirming completion of conditional handover configuration in response to the conditional handover command, wherein conditionally sending the message comprises (a) sending the message if no handover is triggered prior to a time for sending the message; and
(b) refraining from sending the message and executing handover if handover is triggered prior to the time for sending the message,
5. The method of claim 1, wherein handover is triggered, prior to the time for sending the message, and wherein refraining from sending the message confirming completion of conditional handover configuration is conditioned upon determining that the conditional handover message includes an indication that skipping the message confirming completion of conditional handover condition is allowed.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINNCELAS LOUIS whose telephone number is (571)270-5138. The examiner can normally be reached 8:30-5:00 PM.
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, Michael Thier can be reached on 571-272-2832. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VINNCELAS LOUIS/Primary Examiner, Art Unit 2474
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