DETAILED ACTION
Notice of Pre-AIA or AIA Status
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 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, 14, 16, 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13, 14 of U.S. Patent No. 12048041 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because removing inherent and/or unnecessary limitations/step and rearranging the claims would be within the level of one of ordinary skill in the art. It is well settled that the omission of an element, e.g.” removing or adding “ transmitting, to an external apparatus, second capability information indicating that the communication apparatus is able to perform communication according to Dual Connectivity…” in claims 1, 13, 14 of U.S. Patent No. 12048041B2 ….”, and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element or step whose function is not needed would be obvious to one of ordinary skill in the art.
Claims 2-13, 15 are rejected under a similar rationale.
A control method of a communication apparatus capable of communicating with a master base station and a secondary base station, the method comprising: transmitting, to an external apparatus, first capability information indicating that the communication apparatus is unable to perform communication using a Dual Connectivity technology in a case where the communication apparatus is in a predetermined state; and transmitting, to an external apparatus, second capability information indicating that the communication apparatus is able to perform communication according to Dual Connectivity in a case where the communication apparatus is in a second state different from the predetermined state
Conclusion
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MARCEAU MILORD
Examiner
Art Unit 2641
/MARCEAU MILORD/Primary Examiner, Art Unit 2641
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