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 .
DETAILED ACTION
Claims 1-20 are presented for examination.
Information Disclosure Statement
The IDS filed on 7/8/2024 and 10/21/2024 are considered.
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 1-3, 5-8, 10-13, 15-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,034,537. Although the claims at issue are not identical, they are not patentably distinct from each other because of different claim limitation arrangement and different claim language wording to present the same scopes.
Pending claims
Patented claims
Correspondence
1
1 and 2
Pending claim 1 is of a claim limitation arrangement of patented claim 1 and partial patented claim 2. While pending claim 1 further defines a RRC message to include the configuration information, the use of RRC message for configuration is well-known and obvious in the art.
2
2
Limitation anticipated by patent claim 2
3
4
Same scope with minor difference in wording
4
5
3
Same scope with different wording
6
5 and 6
Pending claim 6 is of a claim limitation arrangement of patented claim 5 and partial patented claim 6. While pending claim 6 further defines a RRC message to include the configuration information, the use of RRC message for configuration is well-known and obvious in the art.
7
6
Limitation anticipated by patent claim 6
8
8
Same scope with minor difference in wording
9
10
7
Same scope with different wording
11
9 and 10
Pending claim 11 is of a claim limitation arrangement of patented claim 9 and partial patented claim 10. While pending claim 11 further defines a RRC message to include the configuration information, the use of RRC message for configuration is well-known and obvious in the art.
12
10
Limitation anticipated by patent claim 10
13
12
Same scope with minor difference in wording
14
15
11
Same scope with different wording
16
13 and 14
Pending claim 16 is of a claim limitation arrangement of patented claim 13 and partial patented claim 14. While pending claim 16 further defines a RRC message to include the configuration information, the use of RRC message for configuration is well-known and obvious in the art.
17
14
Limitation anticipated by patent claim 14
18
16
Same scope with minor difference in wording
19
20
15
Same scope with different wording
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Echigo et al, US 2024/0179688
A shortened statutory period for reply to this Office action is set to expire Three MONTHS from the mailing date of this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNY S LIN whose telephone number is (571) 272-3968.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Noel Beharry can be reached on 571-270-5630. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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KENNY S. LIN
Examiner
Art Unit 2416
/Kenny S Lin/
Primary Examiner, Art Unit 2416
March 24, 2026
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